UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/504525
APPLICANT: Apothecary Products, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: EZY DOSE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 1993.70US04
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 78/504525
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
“Metal pill fob key chains” in IC 6;
“Medicine dosage and administration apparatus, namely, pill dispensers, containers, cases, pouches and holders; medicine dosage spoons, droppers and oral syringes; infant medicine nursers; pill boxes; drinking cups for dispensing medications; pill and tablet crushers and cutters; nasal aspirators; ear syringes; alcohol applicator bottles for medical use; lances; syringe magnifiers; specimen cups for medical use; pH test papers to measure glucose levels; syringes for medical use” in IC 10;
“Plastic containers for storing and organizing medications and vitamins; non-metal pill fob key chains” in IC 20.
The identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial name of the goods or must specify their exact nature. TMEP section 1402.01.
Although unlikely, the application conceptually entails goods outside the scope of IC 6, IC 10 and IC 20 (which have been validly paid for by the applicant). Therefore, if applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on Section 1(a) In Use application:
(1) Applicant must list the goods and/or services 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 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.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
The new fee requirements will apply to any fees filed on or after January 31, 2005.
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(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); and
(3) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
Please note that the specimen(s) of record are acceptable for class(es) IC 6, IC 10 and IC 20. The ultimate acceptability of the specimens outside the scope of these classes will depend upon the identification that is ultimately adopted by the applicant.
Please note that the identification of goods is acceptable under International Class 6.
Please note, if the applicant’s goods are sold empty and primarily used for the storage of pills and medicines, then they are typically placed in International Class 20 (even if used for medical goods). The applicant must also generally clarify that the container goods are “sold empty” to verify the proper international class placement of the items. If the applicant’s products are used for administering or measuring pills/medicines (i.e., drinking cups for dispensing medications), then they are properly placed in International Class 10.
Please note, the listed “medicine dosage spoons, droppers and oral syringes, infant medical nursers, drinking cups for dispensing medications, pill and tablet crushers and cutters; nasal aspirators; specimen cups for medical use and syringes for medical use” are acceptable in International Class 10.
The remaining goods are ambiguous, construed to be too broad and require greater specificity regarding the exact nature of the goods.
Please note that “lances” has seemingly been misspelled and may be clarified as “lancets” in IC 10.
The applicant is required to specify the exact type/nature of “syringes” (i.e., ear injection syringes in IC 10, disposable ear syringes in IC 10).
The nature of the applicant’s goods may include (but are not limited to):
International Class 20
The listed “non-metal pill fob key chains” are acceptable in IC 20.
The listed “Plastic containers for storing and organizing medications and vitamins” are slightly ambiguous, construed to be too broad and require greater specificity regarding the exact nature of the goods. As noted above, the applicant must also generally clarify that the container goods are “sold empty” to verify the proper international class placement of the items.
The applicant may adopt the following suggested identification of goods (which moves the containers sold empty to IC 20 – which has been paid for by the applicant).
The suggested identification of goods specifies and properly classifies the goods. 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 goods set forth in the present identification.
This is not an exhaustive list of identifications. Please check the Office’s website for additional acceptable identifications of goods and services at the following website:
http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
The applicant must disclaim the descriptive wording “DOSE” (defined as a quantity of medicine) apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The wording is merely descriptive of the characteristic, feature and purpose of the applied for goods, which include “medicine dosage and administration apparatus” and “medicine dosage spoons” (along with other items used to indicate proper medicine/pill dosages) as detailed by the applicant.
Please see the attached definition (defined as “A specified quantity of a therapeutic agent, such as a drug or medicine, prescribed to be taken at one time or at stated intervals”[1]). Please additionally see the attached U.S. Registrations in which the term “DOSE” was disclaimed in relation to dosage oriented products (including the applicant’s own U.S. Registration No. 1313307 for which it has claimed ownership).
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use DOSE apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
A disclaimer does not remove the disclaimed matter from the mark. It is simply a statement that the applicant does not claim exclusive rights in the disclaimed wording or design apart from the mark as shown in the drawing.
The following cases explain the disclaimer requirement more fully: In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Christopher S. Adkins/
christopher.adkins@uspto.gov
Trademark Examining Attorney
Law Office 116
(571) 272-9121
HOW TO RESPOND TO THIS OFFICE ACTION:
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.
Definiton:
dose
dose (dos) noun
Abbr. d., D.
1. Medicine. a. A specified quantity of a therapeutic agent, such as a drug or medicine, prescribed to be taken at one time or at stated intervals. b. The amount of radiation administered as therapy to a given site.
2. An ingredient added, especially to wine, to impart flavor or strength.
3. Informal. An amount, especially of something unpleasant, to which one is subjected: a dose of hard luck.
4. Slang. A venereal infection.
verb, transitive
dosed, dos·ing, dos·es
1. To give (someone) a dose, as of medicine.
2. To give or prescribe (medicine) in specified amounts.
[French, from Late Latin dosis, from Greek dosis, something given,
from didonai, to give.]
— dos¹er noun[2]
[1]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.
[2]The American Heritage® Dictionary of the English Language, Third Edition copyright © 1992 by Houghton Mifflin Company. Electronic version licensed from INSO Corporation; further reproduction and distribution restricted in accordance with the Copyright Law of the United States. All rights reserved.