UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 79/039318
MARK: TRULIFE
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: TRULIFE LIMITED
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0926201.
This is a PROVISIONAL FULL REFUSAL of the trademark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). Canadian attorneys can only represent Canadian applicants.
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
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.
If applicant is the owner of U.S. Registration No. 0723156, 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. 0723156.
Applicant has submitted a color drawing, but has not provided the required color claim and color location statement. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq. Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(ii).
Applicant must submit both a color claim and color location statement using the following format:
(1) Color claim: “The colors [specify] are claimed as a feature of the mark”; and
(2) Color location statement: “The color [name of color] appears in the wording [indicate wording, as appropriate] and in the design [identify design element, as appropriate].”
Applicant may adopt the following, if accurate:
The colors dark grey, light grey and green are claimed as a feature of the mark.
The mark consists of a design of two semi-circles and one full circle. From left to right, the first semi-circle appears in a dark grey color, the second semi-circle appears in a light grey color and the full circle appears in the color green. The term “tru’” appears in a dark grey color and the term “life” appears in a light grey color.
The wording, “surgical and medical apparatus and instruments including silicone gel pads and positioners providing effective pressure relief for humans during all surgical procedures,” “lightweight and superior pressure relieving gel and foam combination pads and positioners for use in the operating room,” “silicone materials for positioning and pressure relief offering maximum weight distribution, safe positioning and maximum comfort to the patient in the surgical environment,” “gel bodies and gel products encased in stretchy material to combat pressure relief for humans for use in hospitals, nursing homes and the home care markets,” “gel protection products,” “silicone and non-silicone breast forms, bras, silicone material, gel material for prosthesis for post-mastectomy wear,” “prosthetic interfaces including prosthetic socks and sheaths,” “orthotic bracing,” “prosthetic componentry for lower limb amputee,” “endoskeletal components,” “exoskeletal components,” “friction pylons,” “sockets,” “children's prosthetic components,” “lower extremity,” “cold therapy pump units and products,” “upper extremity fracture and metal orthotics,” “prosthetic tools, callipers, clamps and drilling fixtures for carbon composites,” “respiratory helmets for artificial respiration” and “braces,” used to describe the applicant’s goods is indefinite and requires clarification. Applicant must clarify the identification of goods to specify the common commercial or generic name for the goods. If there is no common commercial or generic name, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP § 1402.01.
Additionally, the identification of services is indefinite and must be clarified because it includes the open-ended wording “including.” The identification must be specific and all-inclusive. Therefore, this wording should be deleted and replaced with “namely.”
Finally, the wording “bras and cotton bag carriers/covers for prosthesis for post-mastectomy wear,” “cold therapy, pressure care,” “leather components” and “soft goods,” in the identification of goods is indefinite and must be clarified because it is too broad and includes goods in other international classes. TMEP §§1402.01 and 1402.03. However, any modification to this wording must identify goods in International Class 010 the classification specified in the application for these goods. In this case, the examining attorney is unable to suggest wording that is both sufficiently definite and properly classified. Therefore, applicant is advised to 1) substitute its own definite wording in the proper class or 2) delete this language from the identification.
Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
Recommended changes have been highlighted in bold and suggestions for amending applicant’s identification of goods are in brackets.
PLEASE NOTE: If applicant adopts the recommended identification of goods, applicant must remove any brackets from the identification of goods and incorporate the bracketed information into the amended description. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is only permitted in identifications if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Applicant may adopt the following identification of goods, if accurate:
International Class 010: Surgical and medical apparatus and instruments, namely, silicone gel sheeting for the treatment of scars providing effective pressure relief for humans during all surgical procedures; lightweight and superior pressure relieving gel, foam combination pads and positioners, namely, chemically activated hot and cold gel packs for use in the operating room; pressure relieving wheelchair cushions manufactured from various combinations of silicone gel, air and foam; silicone materials, namely, ________ [applicant to specify the generic or common commercial name for the silicone materials] for positioning and pressure relief offering maximum weight distribution, safe positioning and maximum comfort to the patient in the surgical environment; gel bodies and gel products, namely, ________ [applicant to specify the generic or common commercial name for the gel bodies and gel products] encased in stretchy material to combat pressure relief for humans for use in hospitals, nursing homes and the home care markets; gel protection products, namely, ________ [applicant to specify the generic or common commercial name for the gel protection products, e.g., medical implants of artificial material in particular for anchoring joint capsule components and ligament tendon structures, etc.]; silicone and non-silicone breast forms, silicone material and gel material, namely, ________ [applicant to specify the generic or common commercial name for the silicone and non-silicone breast forms, silicone material and gel material, e.g., artificial breasts, breast prostheses, breast shields, etc.] for post-mastectomy; prosthetic interfaces, namely, ________ [applicant to specify the generic or common commercial name for the prosthetic socks and sheaths, e.g., prosthetic ligaments, prosthetic sockets used to fasten prosthetic limbs to the body, etc.]; orthotic braces and prosthetic componentry, namely, prosthetic ligaments for lower limb amputees; prosthetic feet and knees; endoskeletal and exoskeletal components, namely, ________ [applicant to specify the generic or common commercial name for the endoskeletal and exoskeletal components, e.g., artificial materials for use in the replacement of bones, etc.]; friction pylons, namely, ________ [applicant to specify the generic or common commercial name for the friction pylons], prosthetic sockets used to fasten prosthetic limbs to the body, children's prosthetic components, namely, ________ [applicant to specify the generic or common commercial name for the children's prosthetic components, e.g., prosthetic ligaments, etc.]; spinal orthotics, lower extremity orthotics, namely, ________ [applicant to specify the generic or common commercial name for the lower extremity, e.g., orthotics for the foot, etc.], knee orthotics; cold therapy pump units and products, namely, orthopedic cast cooling system comprised of a membrane wrapped around the cast, a vacuum pump and hoses to facilitate air flow to facilitate healing and comfort; upper extremity fracture and metal orthotics, namely, ________ [applicant to specify the generic or common commercial name for the upper extremity fracture and metal orthotics, e.g., orthotics for the hand, etc.]; prosthetic tools, namely, ________ [applicant to specify the generic or common commercial name for the prosthetic tools, e.g., scalpels, blades, staplers, etc.] callipers, clamps and drilling fixtures, namely, ________ [applicant to specify the generic or common commercial name for the callipers, clamps and drilling fixtures] for carbon composites, respirators for artificial respiration in the nature of respiratory helmets for artificial respiration, braces, namely, medical braces for ________ [applicant to indicate use, e.g., knee, ankle, elbow, etc.]; post operation shoes, walking aids, crutches, walking frames and rollators.
TMEP §1402.01.
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.
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.
ADVISORY – 66(a) APPLICATIONS – CLASSIFICATION FOR GOODS CANNOT BE CHANGED
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).
RESPONSE GUIDELINES
To expedite prosecution of this application, applicant is encouraged to file its response to this Office action through the Trademark Electronic Application System (TEAS), available at http://www.gov.uspto.report/teas/index.html.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Charisma Hampton/
Charisma Hampton
Trademark Examining Attorney
Law Office 112
Phone: 571-270-1522
Fax: 571-270-2522
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.