UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79166918
MARK: FITEETH
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: MITSUI CHEMICALS, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1251208
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
However, applicant must respond to the requirements set forth below.
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Therefore, applicant must remove the parentheses and brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
Therefore, any modification to this wording must identify goods in the classification specified in the application for these goods.
Applicant may adopt the following identification, if accurate (please note that suggested amendments are in bold italics and suggested deletions are in strikethrough):
International Class 5
“Absorbent cotton for medical purposes; adhesive materials for dental purposes; adhesive plasters for medical purposes; adhesives for dentures; amino acids for medical purposes; bandages for dressings; bone adhesives for surgical use; breast-nursing pads; capsules sold empty for pharmaceuticals; dental materials, namely, __{specify Class 5 type, e.g., dental composite materials, dental porcelain materials, etc.}; denture adhesive; denture base materials, namely, __{specify Class 5 type, e.g., denture adhesives, etc.}; ear bandages; eye patches for medical purposes; gauze for dressings; antiseptic liquid bandages; medical adhesives for binding wounds; medical ointments for allergic substance isolation use; medical tissue adhesives for wound closure; menstruation bandages; menstruation tampons; oiled paper for medical purposes; pharmaceutical preparations for __{indicate purpose or condition to be treated, e.g., treating cancer, etc.}; sanitary napkins; sanitary panties; surgical adhesives for medical use; synthetic taurine for medical purposes in the nature of __{specify Class 5 nature}; drug delivery agents in the form of wrapping wafers for medicine doses; cotton swabs for medical purposes.”
International Class 10
“Thread, surgical; teething rings; ice bag pillows for medical purposes [for
medical purposes]; triangular supportive bandages; supportive bandages; surgical catguts; feeding cups [for medical purposes]; dropping pipettes
for medical purposes [for medical purposes]; teats; medical ice bags; medical ice bag holders; baby bottles; nursing bottles; finger guards for
medical purposes; heating or cooling apparatus for medical purposes, namely, __{specify Class 10 type, e.g., electric heating devices for
curative treatment}; heating or and cooling sheets containing chemical substances ready to react when required for medical purposes; heating
or and cooling sheets applied chemical substances for medical purposes; eye pillows in the nature of eye
protectors for medical purposes; artificial tympanic membranes; prosthetics or and fillings materials,
namely, __{specify Class 10 type, e.g., putty for use in the replacement of bones, etc.} [not for dental use]; bone cements for surgical use; filling materials,
namely, artificial materials for use in the replacement of bones; artificial materials for use in the repair of bones; artificial materials for repair and replacement of bones; artificial bones to fill, repair, and cure original bones; ear plugs for __{specify Class 10 use, e.g., medical purposes, noise reduction, swimming, etc.} [ear protection devices]; ear plugs for sleeping; ear plugs for soundproofing; anesthetic masks;
artificial limbs; artificial eyes; artificial teeth; dentures; dental prostheses; dental bridges; dental implants; artificial bones for implantation;
artificial joints; prosthetic teeth; pins for artificial teeth; dental braces; dental caps; ophthalmoscopes; eye testing machines and apparatus; artificial skin for
surgical purposes; hearing aids for the deaf [acoustic aids]; external nasal dilators for medical purposes; apparatus to assist physically disabled individuals, the sick and the
elderly in holding body in an natural attitude, in transferring from one position to another or in changing body posture, namely, __{specify nature, e.g., an adjustable harness to correct one's posture for medical purposes}; auxiliary medical devices, namely, __{specify type}; medical apparatus, instruments, and structural parts and fittings thereof, namely,
__{specify type, e.g., body rehabilitation apparatus for medical purposes, etc.}; apparatus for assisting physically
disabled individuals, the sick and the elderly, namely, __{specify type, e.g., body
rehabilitation apparatus for medical purposes, etc.} [for medical use]; surgical masks; walking aids [for medical purposes]; crutches; masks for use by medical personnel; medical masks
for use by medical personnel; sanitary masks for prevention of hospital infection for medical purposes; medical nose plugs for allergic substance isolation use; medical nose masks for allergic substance isolation use; therapeutic mouthpieces for medical purposes;
mouth guards for medical purposes; supporters for medical purposes; knee supports for medical purposes; therapeutic mouthpieces for the prevention of snoring; orthodontic instruments; apparatus
in the nature of therapeutic __{indicate type of devices, e.g., nose clips, etc.} for use in the prevention of snoring; sanitary masks
for medical purposes.”
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
RESPONSE GUIDELINES
If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§711, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6(15), 2.66(b)(1).
ASSISTANCE
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm. The USPTO may not assist an applicant in the selection of an attorney. 37 C.F.R. §2.11.
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Kim L. Parks/
Trademark Examining Attorney
Law Office 112
571.272.6129
kimberly.parks@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.