Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 3/15/2010

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on February 8, 2010.

 

FINAL REQUIREMENT- AMENDED IDENTIFICATION OF GOODS

 

In the first Office action, the examining attorney required the applicant to submit an amended identification of goods because the wording identification was indefinite. The applicant replied with an incomplete identification of goods.

 

The wording in the identification of goods and/or services is indefinite and must be clarified because it does not specify applicant’s goods. TMEP §§1402.01 and 1402.03. 

 

The wording “Class 10- tubes for medical purposes, pressure connectors for medical purposes, neck valves for medical purposes, pressure valves for medical purposes, screw-cap pressure valves for medical purposes, stone baskets, dilators for medical purposes, percutaneous introducers sets consisting of sheaths, stopcocks, dilators, guide wires and needles; introduction locks for medical purposes, namely, sheaths with valves used for percutaneous introduction; sterile cloths, namely, covering cloths for medical purposes” in the identification of goods and/or services is indefinite and must be clarified because they fail to specify the applicant’s goods and/or their purpose.  See TMEP §§1402.01, 1402.03.

 

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).

 

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and/or services in the corresponding international registration.  TMEP §§1401.03(d) and 1904.02(b). 

 

Therefore, any modification to this wording must identify goods and/or services in International Class 10, the classifications specified in the application for these goods and/or services. 

 

 

The following substitute wording is suggested, if appropriate: 

 

1. Class 10- Surgical and medical instruments and apparatus, namely, syringes for medical purposes, needles for medical purposes, guide wires for medical purposes, probes for medical purposes, {SPECIFY TYPE OF TUBE e.g. x-ray} tubes for medical purposes, pressure connectors for medical purposes NAMELY {SPECIFY GOODS}, neck valves for medical purposes NAMELY FOR THE TREATMENT OF {SPECIFY CONDITION BEING TREATED OR TYPE OF NECK VALVE}, pressure valves for medical purposes NAMELY FOR THE TREATMENT OF {SPECIFY CONDITION BEING TREATED},  screw-cap pressure valves for medical purposes NAMELY FOR THE TREATMENT OF {SPECIFY CONDITION BEING TREATED}, drainage tubes for medical purposes, secretion bags for medical purposes, surgical instrument for use in spreading vertebral bodies, stone baskets NAMELY {SPECIFY GOODS}, surgical instrument for use in delivering stents, disposable medical products, namely, stents, catheters, balloon catheters, surgical implants made of artificial materials, namely, vessel implants, namely, stents for medical purposes and markers for indicating parts of tissue and tumors for medical purposes, SPECIFY TYPE OF TUBE e.g. external nasal}dilators for medical purposes, application instruments for medical purposes, namely, biopsy punction apparatus, apparatus for introducing bone cement, MEDICAL INSTRUMENTS FOR PERCUTANEOUS TRACHEOSTOMY NAMELY percutaneous introducers sets consisting of sheaths, stopcocks, dilators, guide wires and needles; MEDICAL INSTRUMENTS FOR PERCUTANEOUS TRACHEOSTOMY NAMELY introduction locks for medical purposes, namely, sheaths with valves used for percutaneous introduction, medical apparatus for breaking up kidney stones, COVERINGS FOR MEDICAL EXAM TABLES NAMELY sterile cloths, namely, covering cloths for medical purposes, sutures, instruments for the insertion of implants for medical purposes

 

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.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.

 

PROPER RESPONSE TO FINAL ACTION

 

If applicant does not respond within six months of the date of issuance of this final Office action, the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  Class 10- tubes for medical purposes, pressure connectors for medical purposes, neck valves for medical purposes, pressure valves for medical purposes, screw-cap pressure valves for medical purposes, stone baskets, dilators for medical purposes, percutaneous introducers sets consisting of sheaths, stopcocks, dilators, guide wires and needles; introduction locks for medical purposes, namely, sheaths with valves used for percutaneous introduction; sterile cloths, namely, covering cloths for medical purposes. 

 

The application will then proceed for the following goods.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/ScottBibb/

Scott K. Bibb

Trademark Examining Attorney

Law Office 109

Ph- (571) 272-5669

F-   (571) 273-9109

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 79072763) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 3/15/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=79072763&doc_type=OOA&mail_date=20100315 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 3/15/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

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.