Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

Serial Number  78/172572

Mark: INVACARE and Design

 

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

Likelihood of Confusion

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

 

Classification and Identification of Goods and Services

The identification of goods in Class 9 and 10 are unacceptable as indefinite.  TMEP § 1401.01. See below for examiner’s suggestions. 

 

Further, the applicant has classified the service of providing an online catalog incorrectly.  The applicant must amend the application to classify this service in International Class 41.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

The identifications in Classes 12, 35 and 40 are acceptable as written.

 

The applicant may adopt the following identifications, if accurate:

 

Class 9:            [The wording “devices” is too vague – the examiner suggests:]Oxygen sensing devices, namely, sensors to measure oxygen output concentration, for concentrators; electric batteries for wheelchairs and battery chargers; electronic components, namely, driving control modules for powered wheelchairs; computer software for designing custom-molded seating.  [“Modem run repair service” is a service in Class 37, not goods in Class 9] 

 

Class 10:          Medical goods, namely, patient care and safety apparatus in the nature of motorized and manually adjustable beds for home and institutional patient care for [the applicant must specify exactly how the beds will be used, otherwise these goods belong in Class 20, e.g., hospital beds used for burn patients is a Class 10 good], overbed tables, patient and invalid lifts, stand-up patient and invalid lifts, full-body slings, bed rails, mattresses for rotation therapy; orthopedic support devices for therapeutic use, namely, hand held shower devices [the wording “devices” is too vague] in the nature of shower heads and sprayers, tub spouts, diverter valves for showers, lumbar cushions, [“home pads” is too vague – examiner suggests:]seating cushions, positioning rolls for patients, invalids, and physically challenged individuals, grab bars, tub safety bars, shower chairs, toilet safety frames adapted for patients and handicapped persons, adjustable toilet seats adapted for patients and handicapped persons, raised toilet seats adapted for patients and handicapped persons, commodes adapted for patients and handicapped persons, bathing seats, bathing benches, tub islands, and tub grips; mobility equipment [must specify for “medical purposes”] for medical purposes, namely, canes, cane tips, [must specify the user of the walker:] patient invalid walkers and accessories therefor, rollators, crutches, crutch pads and tips; respiratory products [must specify “for medical purpose”] for medical purposes, namely, [wording too vague, examiner suggests the following:] aerosol therapy products in the nature of compressors, nebulizers and accessories, aspirators, compressed oxygen systems primarily comprised of oxygen cylinders, regulators, conserving devices, and refilling units, liquid oxygen systems primarily comprised of oxygen dewars and portable oxygen dispensers, oxygen concentrators, oxygen conserving devices in the nature of demand, variable volume, and fixed volume devices, nebulizers, nebulized compressors for respiratory therapy, patient monitoring systems primarily comprised of pulse oximeters and capnometers, sleep therapy products in the nature of positive airway pressure devices and accessories therefor, portable demand oxygen delivery device for respiratory therapy.

 

Class 37:          Modem run repair service for power wheelchair motors.  [Must add class or delete, service, see below]

Class 41:         Providing on-line catalog in the field of durable medical equipment.  [This is a Class 41 service, and examiner suggests deleting the wording “computer services, namely,….”]

The applicant has classified modem run repair services in International Class 9.  The correct classification is International Class 37. The applicant must either delete this service or add International Class 37 to the application.  37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. Section 2.6(a)(1).  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(b); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.

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 or services that are not within the scope of goods and services set forth in the present identification.

Requirements for Combined Application – Use Application

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  The fee for filing a trademark application is $335 for each class.

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

Specimen of Use

The digital pictures of the specimens for Classes 10, 12 and 35 are not clear and thus, the proposed mark cannot be discerned.  The applicant must submit another copy of the specimen for each of these classes.  If the exact same specimen is submitted, a supporting declaration is not necessary.  However, if the applicant submits a different specimen of use, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute 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 §904.09.

 

The statement supporting use of a substitute specimen must read as follows: 

 

The substitute specimen was in use in commerce at least as early as the filing date of the application.

 

The applicant must sign this statement either in affidavit form or with a declaration under 37 C.F.R. Section 2.20; TMEP §904.09.  The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by the applicant.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

                        _____________________________                                  

                                         (Signature)

                        _____________________________

                        (Print or Type Name and Position)

                        _____________________________

                                             (Date)

 

 

In addition, the specimen for Class 40 does not show use of the mark for the services identified in the application.  The specimen is informational material about a wheelchair; but no mention is made of “custom manufacture” of the wheelchairs.  The applicant must submit a specimen showing use of the mark for the goods/services specified.  37 C.F.R. §2.56; TMEP §904.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute 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 §904.09.

See above for declaration.

 

The specimen for the Class 9 goods and the Class 41 services are acceptable.

 

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

 

/Wendy B. Goodman/

Trademark Attorney

Law Office 103

(703) 308-9103, x409

(703) 746-8103 (fax)

ecom103@uspto.gov

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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