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: 6/20/2007

 

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

 

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Section 1(b) and 44(d) Filing Bases:

 

The application specifies both intent to use under Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  15 U.S.C. §§1051(b) and 1126(d).  When an application is filed pursuant to Section 44(d), the USPTO presumes, unless otherwise indicated, that applicant intends to rely upon the resulting foreign registration as a basis for registration in the U.S.  TMEP §§806.02(f) and 1003.03. 

 

However, applicant may rely solely on intent to use as the basis for registration, and still claim the benefit of the priority filing date.  If applicant wants to rely on intent to use as the sole basis for registration, with the claim of priority, applicant should submit an amendment so advising the undersigned.  Once all other outstanding issues are resolved, the mark would be approved for publication without requiring a copy of the foreign registration.  TMEP §§806.02(f) and 806.04(b).  However, while the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed.

 

If applicant does not indicate otherwise, the USPTO will presume that applicant is relying on the foreign registration as an additional basis for registration.  Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

Certificate of Foreign Registration Required:

 

If applicant is asserting §44(e) as a basis for registration (based on the foreign registration that will issue from the application that the applicant relied on for priority), then applicant must submit a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  Applicant’s country of origin must either 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.  See TMEP §§1002.01, 1003.03 and 1004.

 

If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

Identification of Goods:

 

The wording “plasters,”  “pumps,” “medical injectors without needles, and medical self-injectors,” “all the surgical and medical apparatus and medical instruments,”  and “all of the dental and veterinary apparatus and instruments,” in the identification of goods is unacceptable as indefinite and too broad.  The applicant may amend to adopt the following:

 

Class 005:

 

Pharmaceutical products for the treatment of affectations, namely, diabetes, viral infections and vaccines, hormonal disorders, chronic pain, acute pain, cancers, neurological affections, migraine, heart trouble, affections of genetic origin; veterinary products, namely, vaccines for domestic animals such as dogs, cats and cattle including ovines, bovines and caprines; medical plaster, material for wound dressing; teeth filling materials and dental impression materials.

 

Class 010:

 

Surgical and medical apparatus, namely, _____________ [indicate specific type of pump, i.e., medical infusion pumps, breast pumps, enteral feeding pumps, etc.] pumps; medical instruments, namely, medical syringes without needles, insulin injectors sold empty, surgical and medical apparatus and medical instruments used for the injection of medicines parenterally such as subcutaneous, intramuscular, intradermal and intravenous, namely, _____________[indicate specific type of apparatus and instruments]; dental and veterinary apparatus, namely, _____________ [indicate specific type of pump, i.e., medical infusion pumps, breast pumps, enteral feeding pumps, etc.]; dental and veterinary instruments, namely, medical syringes without needles, insulin injectors sold empty; dental and veterinary apparatus and instruments used for the injection of medicines parenterally such as subcutaneous, intramuscular, intradermal and intravenous namely, _____________[indicate specific type of apparatus and instruments].

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the goods recited 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.

 

Claim of Ownership of Prior Registration:

 

If applicant is the owner of U.S. Registration No. 2558125, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 2558125.

 

 

/Anne Gustason/

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 117

(571) 272-9722

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm.  If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification.  Do not attempt to respond by e-mail as 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 6/20/2007 FOR

APPLICATION SERIAL NO. 77123402

 

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

  

VIEW OFFICE ACTION: Click on this link http://portal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77123402&doc_type=OOA&mail_date=20070620 (or copy and paste this URL into the address field of your browser), or visit http://portal.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 6/20/2007.

 

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.