Offc Action Outgoing

The examining attorney acknowledges the applicant’s response to the office action. All previous refusals are withdrawn. The application is amended to section 2(f). However, the following issues remain.

Specimens for Added Classes 5, 6, 11

The application is incomplete because it does not include the required specimens showing use of the applied-for mark in commerce for the goods identified in added classes 5, 6 and 11. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1(a)(1) and 45, 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Therefore, applicant must submit the following:

(1) A specimen (i.e., an example of how applicant actually uses its mark in commerce) for each class of goods and/or services based on use in commerce; and

(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

To amend to Section 1(b), 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 and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).

Pending receipt of a proper response, registration is refused because applicant has not provided evidence of the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1(a)(1) and 45, 15 U.S.C. §§1051(a)(1), 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

Dates of Use for Added Use Based Classes

The dates of first use “anywhere” and dates of first use “in commerce” for the added classes based on use are unclear. Applicant must provide the following for each added use based class, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: (1) the “date of first use of the mark anywhere”, and (2) the “date of first use of the mark in commerce.” 15 U.S.C. §1051(a)(2); 37 C.F.R. §2.34(a)(1)(ii)-(iii); TMEP §903; see 37 C.F.R. §2.71(c). These two dates must be provided even if they are the same. See TMEP §903.03.

Identification of Goods

Certain wording used to describe the goods is unacceptable as indefinite. See TMEP §1402.01. Applicant may amend the identification as follows:

Class 5

“Waterless hand sanitizing preparations; wound dressings; medical adhesive tapes; surface disinfectants for sanitary purposes; disinfecting hand wash; cotton swabs for medical purposes; tapes for varicose veins; sterile saline wash for medical purposes;” is acceptable.

“Medical cotton balls;” may be stated “medical cotton balls for use in applying topical medicine.” The proposed amendment to the identification cannot be accepted because the following wording refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing: “Medical cotton balls.” See 37 C.F.R. §2.71(a). This wording is beyond the scope of the original wording because it does not appear in the original description.

Identifications 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. Id.; see TMEP §§1402.06 et seq., 1402.07(a). “Medical cotton balls;” may be amended to read “medical cotton balls for use in applying topical medicine.”

“Cotton tipped applicators;” may be stated “cotton tipped applicators for medical purposes.”

“Medical manicure sticks,” may be stated “hand held medical tools, namely, medical manicure sticks for medical purposes” in class 10.

“Tongue depressor;” is acceptable in class 10.

“First Aid Kit;” is acceptable.

“Pharmaceutical preparations for use in blood coagulation;” is stated twice. One instance must be deleted. Further, the examining attorney was in error in suggesting this language and this wording must be deleted. The original description states “coagulation machine.” “Pharmaceutical preparations” are not machines. The nature of the “coagulation machines” must be defined in more common terms. The goods are likely class 10.

“Pharmaceutical preparations, namely, kits composed of aneroid gauge;” is unacceptable. “Aneroid gauges” are not “pharmaceutical preparations.” Applicant may amend this wording to “medical hand held manual tools in the nature of aneroid gauges” in class 10.

“Single patient cuff,” is unclear. The nature of the goods must be defined further. The goods are likely class 10.

“Inflation bulb with valve disposable single-head stethoscope,” is unclear. The nature of the goods must be defined further. The goods are likely class 10.

“Bio-hazard disposal bag,” may be stated “Class 10—disposable bags for bio hazardous medical waste.

“UMP exclusive,” is unclear. The nature of the goods must be defined further.

“Latex free for use in treating methicillin-resistant Staphylococcus aureus;” is unacceptable. The nature of the goods must be defined further.

“Disinfectants for medical instruments; anti-diabetic pharmaceuticals” is acceptable.

Class 6

Acceptable.

Class 9

Acceptable.

Class 10

“Medical bags sold empty; apparatus for taking blood samples; otoscopes, sphygmomanometers; nursing bags designed to hold specific medical apparatus; apparatus of clinical diagnosis; CPR masks; pulse measuring devices;” is acceptable.

“Oximeter;” may be stated “pulse oximeters for use on the finger.” The proposed amendment to the identification cannot be accepted because the following wording refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing: “oximeter.” See 37 C.F.R. §2.71(a). This wording is beyond the scope of the original wording because the original modified oximeter with the wording “finger.”

Identifications 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. Id.; see TMEP §§1402.06 et seq., 1402.07(a). “Oximeter;” may be amended to “pulse oximeters for use on the finger.”

Stethoscopes; digital thermometers for medical purposes; medical gloves; containers especially adapted for the disposal of medical instruments, syringes, and other contaminated medical waste; devices for measuring wounds; surgical sponges; surgical masks; medical gowns; medical test kits for monitoring diabetes and its effects on the foot;

“Medical test kit containing an otoscope and an ophthalmoscope;” is beyond the scope of the original as “medical test kits” were not included. Applicant may state “otoscopes; ophthalmoscopes.”

“Transilluminator for highlighting the veins which absorb the light;” is acceptable.

“Clinical thermometers;” is acceptable.

“Handheld medical examinations tools including a Wartenberg pinwheel Babinski Hammer, Taylor Hammer Buck Multisensor;” is unacceptable. The wording “including” is too broad. Applicant may state “handheld medical examination tools, namely, pinwheel rolling devices and body hammers for testing muscular and nerve reactions.”

“Surgical scissors; force and motion testing apparatus for physical training; respiratory masks for medical purposes; disposable containers for medical waste, specifically for needles and syringes; small transportable disposable containers for medical waste, specifically for needles and syringes; brushes for cleaning body cavities;” is acceptable.

“Dressing change tray, IV start tray, Staple removal tray, tracheotomy care tray;” is unacceptable. The proposed amendment to the identification cannot be accepted because the following wording refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing: “Dressing change tray, IV start tray, Staple removal tray, tracheotomy care tray.” See 37 C.F.R. §2.71(a). This wording is beyond the scope of the original wording because it is not included in the original.

“Suture removal tray,” is acceptable.

“Wound gauge to monitor ulcer or wound size; wound suction apparatus; medical devices in the nature of hand held lights for use in gauging and stimulating the pupil of the eye; eye charts for medical examination use; cardiopulmonary resuscitation masks; shields for use with cardiopulmonary resuscitation masks. medical devices for patient hygiene, namely, stations for patient personal hygiene composed of hand pumped shampoo bottles sold empty, inflatable sings, shampoo trays, bath thermometers, patient communication board, privacy screen, portable LV pole, and carrying case; lancets;

“Devices for monitoring blood glucose for medical purposes;” may be stated “medical devices for instantly monitoring blood glucose for medical purposes.”

“Blood testing apparatus for testing bilirubin;” is acceptable.

“Suture removal kits and supplies, namely, tweezers, scissors; stethoscopes, speculas;” is acceptable.

“Lancets;” is duplicate wording. One instance must be deleted.

“Rolling lab transport systems comprising foam padded container, front zip compartment, two sided mesh pockets, leak-proof needle disposal container, re-usable ice pack, bio-hazard labeled containers with foam to safely transport filled blood draw tubes; forceps; apparatus of clinical diagnosis; blood pressure cuffs; containers in the nature of carriers for biohazardous medical waste.” Is acceptable.

Class 11

Acceptable.

Class 18

Acceptable.

Class 21

Acceptable.

Class 40

Acceptable.

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.

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.

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

/Daniel Capshaw/

Trademark Attorney

Law Office 110

571.272.9356

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.