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  77/175523

 

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

 

Search Results

 

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.

 

Identification of Goods

 

The wording “probe covers…video imaging paper, video print packs…i.d. bracelets (medical), OR towels and lap sponges…replacement bulbs…X-Ray detecable [sic] towels” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03. 

 

“Probe covers” is indefinite because applicant must indicate the type of probe for which the covers are used.  Applicant may substitute the following wording, if accurate: 

 

“Covers for cardiac probes” in International Class 10.

 

“Video imaging paper” is indefinite because applicant must indicate the particular type of paper.  Applicant may substitute the following wording, if accurate:

 

“Video imaging paper, namely photosensitive paper for use in medical imagery” in International Class 1; and/or

 

“Video imaging paper, namely medical x-ray film” in International Class 10.

 

“Video print packs” is indefinite because applicant must indicate what the packs contain.  Applicant may substitute the following wording, if accurate:

 

“Video print packs consisting primarily of digital color printers” in International Class 9.

 

“I.d. bracelets (medical)” is indefinite because applicant must indicate whether the bracelets are made of metal and that they are for hospital use.  Also, parentheses are generally not appropriate in identifications.  Applicant may substitute the following wording, if accurate:

 

“Non-metal identification bracelets for hospital use” in International Class 20.

 

“OR towels” is indefinite because applicant must indicate the material composition of the towels.  Applicant should also indicate that “OR” stands for “operating room.”  Applicant may substitute the following wording, if accurate:

 

“Operating room towels made of paper” in International Class 16;

 

“Operating room towels made of textile” in International Class 24.

 

“Lap sponges” is indefinite because applicant must indicate the purpose of the sponges.  Applicant may substitute the following wording, if accurate:

 

“Surgical lap sponges” in International Class 10.

 

“Replacement bulbs” is indefinite because applicant must indicate the type of bulbs.  Applicant may substitute the following wording, if accurate:

 

“Replacement light bulbs” in International Class 11.

 

“X-Ray detecable [sic] towels” is indefinite because applicant must indicate the material composition of the towels.  Applicant may substitute the following wording, if accurate:

 

“X-ray detectable towels made of paper” in International Class 16;

 

“X-ray detectable towels made of textile” in International Class 24.

 

Finally, a number of the goods are classified incorrectly.  Specifically, “room deoderizers [sic] for medical and dental usage and antiseptic surgical solution” are properly classified in International Class 5; “batteries” are properly classified in International Class 9; and “recording chart paper and facial tissues” are properly classified in International Class 16.

 

Therefore, the identification may be amended to read as follows:

 

“Video imaging paper, namely photosensitive paper for use in medical imagery” in International Class 1; and/or

 

“Room deodorizers for medical and dental usage; antiseptic surgical solution” in International Class 5; and/or

 

“Video print packs consisting primarily of digital color printers; batteries” in International Class 9; and/or

 

“Stethoscopes; covers for cardiac probes; ECG monitoring electrodes; video imaging paper, namely medical x-ray film; surgical lap sponges; urine meter with collection bag; mobile clock aneroid sphygmomanometer; replacement parts, namely, blood pressure cuffs and aneroid gauges; bariatric crutches” in International Class 10; and/or

 

“Replacement light bulbs” in International Class 11; and/or

 

“Recording chart paper; operating room towels made of paper; facial tissues; X-ray detectable towels made of paper” in International Class 16; and/or

 

“Non-metal identification bracelets for hospital use” in International Class 20; and/or

 

“Operating room towels made of textile; X-ray detectable towels made of textile” in International Class 24.

 

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.

 

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.

 

Combined Applications

 

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

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and

 

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

 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

 

Claim of Ownership of Prior Registrations

 

Applicant claims ownership of U.S. Registration No. 2607732.  However, if applicant is also the owner of U.S. Registration Nos. 2598178 and 2631989, 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 Nos. 2598178, 2607732 and 2631989.

 

 

A prompt response to this Office Action will expedite prosecution.

 

 

/Aisha Y. Salem/

Aisha Y. Salem

Trademark Examining Attorney

Law Office 113

Phone: (571) 272-8242

Fax: (571) 273-9113

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 6/12/2007 FOR

APPLICATION SERIAL NO. 77175523

 

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=77175523&doc_type=OOA&mail_date=20070612 (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 6/12/2007.

 

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.