UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 8/12/2008

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Search Results

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.  However, the applicant must comply with the following requirements.

 

Statement of Bona Fide Intent to Use the Mark and Signed Verification Required

 

The application was filed under Trademark Act Section 44; however, it does not include the required verified statement of applicant’s “bona fide intention to use the mark in commerce.”  15 U.S.C. §1126(d)-(e); 37 C.F.R. §2.34(a)(3)(i), (a)(4)(ii); TMEP §1008.  Additionally, the application was not signed and verified, which are application requirements.  15 U.S.C. §1051(a); 37 C.F.R. §§2.33, 2.34(a)(1).  Therefore, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.

 

A sample declaration that incorporates this statement is attached. 

 

Section 44(d) Presumed to be Sole Basis – Certificate of Registration Required

 

Applicant appears to assert Trademark Act Section 44(d) as the sole basis for the application.  See 15 U.S.C. §1126(d).  However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as a basis for registration.

 

The Office presumes that an applicant is asserting Section 44(e) as a basis for registration when Section 44(d) is the sole basis in the application, as in the present case.  TMEP §§806.01(c), 1003.03.

 

An application filed under Section 44(e) must include a true copy, photocopy, certification or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must submit a copy of the foreign registration from applicant’s country of origin.  If the foreign certificate of registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

A copy of foreign registration must consist of a document issued to an applicant by or certified by the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

ADVISORY – Standard Character Claim

 

The U.S. application, which is based on a foreign registration pursuant to Trademark Act Section 44, contains a standard character claim.  However, because the foreign registration has not yet been submitted, the record is unclear as to whether the foreign registration includes a standard character claim.  The mark in the U.S. application must be a substantially exact representation of the mark that appears in the foreign registration; thus, they must both include a standard character claim.  37 C.F.R. §2.51(c); TMEP §§807.12(b), 1011.01.

 

Upon receipt of the foreign registration, if it does not indicate that the mark is in standard characters, applicant will be required to either (1) submit the following statement in the U.S. application:  “Under the law of the country of origin, the foreign application or registration includes a standard character claim or the legal equivalent;” or (2) delete the standard character claim from the U.S. application.  TMEP §§807.03(f), 1011.01.

 

If the standard character claim is deleted from the U.S. application, the drawing of the mark will be considered a special form drawing.  See 37 C.F.R. §2.52(b); TMEP §807.04(a).

 

Identification of Goods and Services

 

Applicant’s goods and services are identified as:

 

Surgical, medical, dental, and veterinary instruments and apparatus, surgical suture material, in Class 10.

 

Education, training, entertainment, in Class 41.

 

Medical services, veterinary services; health and beauty care for humans and animals, in Class 44.

 

Normally, commas are used to separate related items in a list of goods and/or services, whereas semicolons are used to separate distinct items within the same class.  Applicant’s identification of goods uses commas to separate items within lists and to separate distinct items.  Therefore, applicant should amend the identification of goods to substitute semi-colons for commas where appropriate.

 

Class 10

 

The wording “Surgical, medical, dental, and veterinary instruments and apparatus” in the identification of goods is indefinite and must be clarified because the wording “dental instruments and apparatus” is too broad.  See TMEP §1402.01.  Applicant may amend this wording to “Surgical apparatus and instruments for medical, dental or veterinary use,” or add the term “namely” followed by a list of specific medical, dental, and veterinary instruments and apparatus identified by their common commercial name or a description of their use.  The wording “surgical instruments and apparatus” is acceptable so this can be separated from the “medical, dental, and veterinary instruments and apparatus” using a semicolon.

 

Class 41

 

The wording “Education, training” in the identification of services is indefinite and must be clarified to specify the mode and field of instruction.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Educational services, namely, conducting {indicate specific mode of instructions, e.g., classes, seminars, conferences, workshops} in the field of {indicate specific field, e.g., pet care, math} and distribution of training material in connection therewith.”  See TMEP §§1402.01, 1402.03.

 

Similarly, the wording “entertainment” is indefinite and should be followed by the wording “in the nature of” or “services, namely,” with a description of the specific the field of or type of entertainment.  See TMEP §1402.01. 

 

To summarize, applicant may adopt any or all of the following identifications of, if accurate:

 

Surgical apparatus and instruments for medical, dental or veterinary use; surgical apparatus and instruments; medical, dental, and veterinary instruments and apparatus, namely, _______ {list specific goods or a description of their use, for example, picks, burrs, and mirrors }; suture material, in Class 10.

 

Educational services, namely, conducting {indicate specific mode of instructions, e.g., classes, seminars, conferences, workshops} in the field of {indicate specific field, e.g., pet care, math} and distribution of training material in connection therewith; entertainment in the nature of {provide specific type of entertainment, for example, automobile races, circuses, or football games}; entertainment services, namely {provide specific type of entertainment, for example, conducting contests, wine tastings, or fireworks displays}, in Class 41.

 

Medical services; veterinary services; health and beauty care for humans and animals, in Class 44.

 

See TMEP §1402.01.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

Multiple-Class Application Requirements

 

Applicant has paid for only one class of goods/services.  If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

 

(1)     Applicant must list the goods by international class; and

 

(2)     Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Response Guidelines

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

 

 

/Kim T. Moninghoff/

Trademark Examining Attorney

Law Office 113

Phone:  571-272-4738

Fax: 571-273-9113

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 8/12/2008 FOR

APPLICATION SERIAL NO. 76690652

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76690652&doc_type=OOA&mail_date=20080812 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 8/12/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.