Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/071011

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following.

PRIOR PENDING APPLICATIONS

Information is enclosed concerning pending Application Serial Nos. 78746530, 78746525 and 77009237.  Although the Office records have been searched and no similar registered mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), there may be a likelihood of confusion under Section 2(d) of the Act between applicant’s mark and the marks in the above noted applications.  The filing dates of the referenced applications precede applicant’s filing date.  If one or more of these earlier-filed applications registers, registration may be refused under Section 2(d).  37 C.F.R. §2.83.  Therefore, upon entry of a response to the Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits applicant’s right to address this issue at a later point.

IDENTIFICATION OF GOODS

 

The identification of goods contains wording which is unacceptable as indefinite and could encompass goods in more than one class.  The applicant must amend the identification to specify the commercial name of the goods and to classify them correctly.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  In particular:

 

1. “Medical supports and bandages” – The purpose of the “supports” must be indicated, e.g., “orthopedic supports,” “ankle supports for medical use,” or “supports for general medical use.”  The nature of the bandages also must be specified, bearing in mind that certain bandages are properly placed in Class 5, e.g., “adhesive bandages,” in Class 5, “bandages for skin wounds,” in Class 5; “surgical bandages,” in Class 5; or “compression bandages,” in Class 10; “orthopedic support bandages,” in Class 10.
2. “Support bandages” – The nature or purpose of the goods must be clarified, e.g., “orthopedic support bandages,” in Class 10;
3. “Material bandages” – The nature of the goods is unclear.  Applicant must clarify the meaning of “material,” as well as the nature and/or purpose of the goods. 
4. “Elastic bandages including those for use in sporting activities” – Although “elastic bandages” is acceptable as written, applicant’s reference to sporting activities suggests a possible non-medical use for the goods, e.g., “hand wraps for athletic use,” in Class 28.  In order to ensure proper classification in Class 10, applicant must clarify the sporting use of the goods as medical in nature.  If the goods are non-medical, they may be clarified as sporting goods in Class 28.
5. “Bandages and material prepared for bandaging” - Applicant must clarify the meaning “material,” as well as the nature and/or purpose of the goods. 
6. “Support garments and pressure garments for medical purposes” – The specific nature of the garments must be specified, e.g., “Medical hosiery, namely, support pantyhose,” or “Post-operative pressure garments,” in Class 10.
7. “Support garments and pressure garments for use in sporting activities” – The nature and use of the goods must be clarified, bearing in mind that sporting goods are properly placed in Class 28, e.g., “Athletic sporting goods, namely, athletic wrist and joint supports” or “Athletic equipment, namely, hand wraps,” in Class 28.

 

For example, the identification may be amended in the following manner, if accurate:

 

“Medical supports and bandages, namely, orthopedic supports and orthopedic support bandages; elastic bandages including those for medical use in connection with sporting activities; medical hosiery, namely, support pantyhose; support garments and pressure garments for medical purposes, namely, post-operative pressure garments,” in Class 10;

 

“Athletic sporting goods in the nature of athletic wrist and joint supports,” in Class 28.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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 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.

 

Advisory: Combined Application

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods/services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

1. Applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and
2. Applicant must submit a filing fee for each international class of goods/services not  covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

The filing fee for adding classes to an application is as follows:

 

1. $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
2. $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.

 

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

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.