UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

EXAMINER’S AMENDMENT/PRIORITY 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.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. 

 

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.

 

OFFICE RECORDS SEARCH:  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.

 

ADVISORY – AMENDMENTS TO GOODS/SERVICES:  If the identification of goods and/or services has been amended below, any future amendments must be in accordance with 37 C.F.R. §2.71(a) and TMEP §1402.07(e).

 

QUESTIONS:  Please contact the assigned trademark examining attorney with any questions.

 

 

Serial Number 78/675669

 

EXAMINER'S AMENDMENT

 

AMENDMENTS AUTHORIZED:  As authorized by Nina Steinman on February 15, 2006, the application is amended as noted below.  If applicant disagrees with or objects to any of the amendments below, please notify the undersigned trademark examining attorney immediately.  Otherwise, no response is necessary.  TMEP §707.   

 

Claim of Distinctiveness under Section 2(f) Added

 

The following claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on ownership of prior U.S. Registration Nos.  2156153, 2231955 and 2954824 is added to the record.  

 

The mark has become distinctive of the goods as evidenced by ownership of U.S. Registration Nos. 2156153, 2231955 and 2954824 on the Principal Register for the same mark for related goods or services. 

 

37 C.F.R. §2.41(b); TMEP §§1212.04 et seq.

 

Claim of Ownership Added

The following claim of ownership of prior registrations has been added to the record.  37 C.F.R. §2.36; TMEP §812.

            Applicant is the owner of U.S. Registration Nos. 2156153, 2231955, 272954824 and others.

 

PRIORITY ACTION

 

Applicant must respond to each requirement raised below.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling.  TMEP §§708.01 and 708.05.

 

Identification/Classification of Goods Requires Amendment

 

The identification of goods and services in the application must be amended because it is indefinite and overly broad as explained below.  As discussed, the following amendments must be made to the identification in International Class 10 and the indicated goods must be properly classified. 

Please be aware that, while the identification of goods may be amended to clarify or limit the goods or correct the classification of already identified 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 and/or services that are not within the scope 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.

Applicant may adopt one or more of the following identification of goods in the appropriate international class, if accurate.  TMEP §1402.01.  Please be aware that if the applicant elects to adopt identifications of goods that fall into more than one international class, an additional fee will be required.  The section below entitled Requirements for Multiple Class Applications provides further details.

 

For comparison purposes only, please note that the underlining shows additions or changes to the original wording, and the bold font and {} brackets indicate information that the applicant must supply.  The underlining and brackets should not be included in the applicant’s amended identifications.

 

International Class 5

Medical diagnostic test strips for use in the field of {indicate condition being monitored}; adhesive bandages, bandages for skin wounds, tourniquets, dressings for wounds, burns and surgery, medical adhesive tape; odor neutralizing preparations for use on {indicate specific area of use, e.g., carpets, textiles}

International Class 6

Metal safety grab bars for bathtub or shower

International Class 10

House mark for a full line of medical and surgical products, equipment and supplies, namely patient apparel consisting of bibs, gowns, capes, drapes, slippers; examination table sheets; medical staff apparel consisting of shoe covers, head covers and masks; containers for medical waste; diagnostic equipment, namely sphygmomanometers and replacement parts therefor, stethoscopes, blood glucose monitors, lancets, penlights for medical use, thermometers and thermometer sheaths, specula and cervical scrapers, ECG mounts, high frequency desiccators, medical electrodes, surgical cauteries, aspirators and compressors and filters, commodes, IV stands and armboards; operating room and examination room equipment, namely lights, instrument tables and stands, medical patient treatment chairs, equipment covers, medical chart holders, surgical mirrors, medical and surgical examination table and counter paper; gloves for medical use; instruments for medical and surgical use, namely, clamps, forceps, nail nippers, needle holders, percussion hammers, probes and extractors, retractors, scalpel handles, scissors, specula, uterine sounds, ring cutters; medical and surgical kits and trays, namely, catheter trays, syringes, irrigation trays, dressing change trays, IV start kits, laceration trays, suture removal kits, tracheostomy trays, shroud kits; tongue depressors, medicine cups, denture cups; orthopedic patient aids, namely support belts, canes, crutches, walkers and walker accessories; elastic stockings for medical purposes; bedpans; urinals; x-ray film and medical x-ray apparatus; medical sterilization pouches and dust covers; equipment drapes, sterile fields, surgical sponges; pillows for medical use; specimen collection containers

International Class 11

Sitz baths

International Class 12

Wheel chairs; hospital carts

International Class 16

ECG paper

 

International Class 20

Shower chairs and transfer benches for use in using the bathtub or shower; hampers and hamper stands; stools

 

International Class 21

Buckets; trash cans

 

International Class 22

Cadaver bags; bags for medical linen and laundry

 

International Class 24

Towels

 

Requirements for Multiple Class Applications

 

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 based on actual use in commerce under Trademark Act Section 1(a):

 

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

 

(2)   Applicant must submit a filing fee for each international class of goods 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, 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; 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 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 of record is acceptable for class 10 only.

 

 

/Ellen F. Burns/

Trademark Examining Attorney

Law Office 116

Phone: (571) 272-9098

Fax: (571) 273-9098

 

 

 

 

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.htm.  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