Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

PRIORITY ACTION

 

INTERNATIONAL REGISTRATION NO. 1356235

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although the USPTO will not accept a formal response by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

ISSUES APPLICANT MUST ADDRESS:  On February 8, 2018 through February 20, 2018, the trademark examining attorney and Manuel Valcarcel discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

IDENTIFICATION/CLASSIFICATION OF GOODS/SERVICES

 

The identification of goods and/or services is indefinite and must be clarified to further specify the nature, use, or subject matter of certain items, as set out in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The wording “A house mark for a range of veterinary preparations and substances and anaesthetics, diagnostic preparations and substances for veterinary purposes” remains indefinite because the different types of veterinary preparations and substances must be identified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “medicated ointments, creams for animal skin conditions” needs some slight clarification to ensure proper identification and classification.

 

The wording “dental preparations and substances for veterinary purposes, namely rinses, cements, adhesives, polishes, resins, alloys, fillings, medicines, dental mouthwashes, dental chews and dental rawhides;” needs some clarification for proper classification. For example, “dental mouthwashes” must be distinguished as “medicated” for proper Class 005 classification.  Otherwise, if the mouthwash is not for medical purposes is found in Class 003.  Similarly, “dental chews” need more information for proper classification because “chew sticks that are primarily for freshening breath” are found in Class 003.   In addition, “dental rawhides” are misclassified in Class 005.  Proper classification for rawhides is Class 018.  Thus, this wording must be deleted.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “deodorants for animal use” is improperly classified in Class 005 and therefore needs to be removed from the identification or applicant must amend the identification accordingly to properly classify in Class 005.  “Deodorants for animals” are found in Class 003.

 

The wording “Downloadable electronic publications, including in the nature of product data sheets, FAQ (frequent asked questions) sheets and information sheets in the field of pharmaceutical, veterinary and surgical matters and products including apparatus and instruments” needs some slight amendments to ensure definiteness.  Particularly, the wording “including” is considered indefinite so applicant needs to remove that wording.

 

Moreover, the wording “software and applications for computers, mobile phones, handheld computers and tablets, for stock control, stock ordering, data control, provision of information, provision of training and provision of education in the field of pharmaceutical, veterinary and surgical matters and products (including apparatus and instruments)” needs some work because we must delete the remaining parentheses and for clarity purposes add language for proper definiteness.

 

Applicant may substitute the following wording, if accurate:

 

Class 003: Dentifrices; toothpaste, mouthwashes; non-medicated soaps, shampoos; cleaning preparations; wipes impregnated with cleansing compounds for cleaning purposes; skin lotions and non-medicated skin care preparations

 

Class 005: A house mark for a range of veterinary preparations and substances, namely, anaesthetics, diagnostic preparations and substances for veterinary purposes; medicated ointments, creams for treating animal skin conditions; dental preparations and substances for veterinary purposes, namely rinses, cements, adhesives, polishes, resins, alloys, teeth filling materials, medicines, medicated dental mouthwashes, dental chews in particular {specify in Class 005, e.g., medicated chewing gum, Breath-freshening chewing gum for medicinal purposes} and dental rawhides; plasters for veterinary purposes, adhesive bands and tapes for veterinary purposes, dressings for veterinary purposes, lint for veterinary purposes, gauzes, absorbent cotton for veterinary purposes, absorbent wadding and bandages for veterinary purposes; medicated washes for animals; pesticides, parasiticides, insecticides, anti-parasitic collars for animals, insect repellents, anti-horsefly oils, fly destroying preparations; cement for animal hooves; sanitary preparations and substances for veterinary purposes, antiseptics, disinfectants; detergents for veterinary purposes; deodorants for animal use; diagnostic preparations for medical and veterinary purposes; dietetic substances adapted for medical and veterinary use, medicated food additives and supplements, vitamin preparations; medicated animal feed; animal repellents; chemical conductors for electrocardiograph electrodes; gases for medical and veterinary purposes; petroleum jelly and greases for medical and veterinary purposes; solvents for removing adhesive plasters for veterinary purposes; vaccines; medicated pre-moistened wipes for dental purposes; ear cleaners and ear drops for animal use; wipes impregnated with disinfecting chemicals or compounds thereof for medical and veterinary purposes

 

Class 009: Downloadable electronic publications, including in the nature of product data sheets, FAQ (frequent asked questions) sheets and information sheets in the field of pharmaceutical, veterinary and surgical matters and products including apparatus and instruments; computer software and applications for computers, mobile phones, handheld computers and tablets, namely, software for stock control, stock ordering, data control, provision of information, provision of training and provision of education in the field of pharmaceutical, veterinary and surgical matters and products (including apparatus and instruments)

 

Class 039: Transport, delivery, packaging and storage of pharmaceutical, veterinary and surgical preparations, products, apparatus and instruments; provision of information relating to transport, delivery, packaging and storage of pharmaceutical, veterinary and surgical preparations, products, apparatus and instruments

 

Class 040: Custom manufacture of pharmaceutical and veterinary products, preparations and substances, and animal care products

 

Class 041: Provision of education and training, namely, provision of classes, workshops, seminars, webinars and online learning resources in the field of relating to pharmaceutical, veterinary and surgical preparations, products, apparatus and instruments; provision of education and training, namely, provision of classes, workshops, seminars, webinars and online learning resources in the field of relating to veterinary services, veterinary techniques, veterinary treatments and animal healthcare.

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e). 

Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). 

Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

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.  See TMEP §1402.04.

RESPONSE GUIDELINES

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action. 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Bridget A. McCarthy/

Bridget A. McCarthy

Trademark Examining Attorney

Law Office 125

(571)272-3223

bridget.sarpu@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/20/2018 FOR U.S. APPLICATION SERIAL NO. 79212619

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/20/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.