UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  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.

 

 

ISSUE/MAILING DATE: 6/1/2018

 

 

THIS IS A FINAL ACTION.

 

INTERNATIONAL REGISTRATION NO. 1379459

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 2, 2018.

 

In a previous Office action dated March 7, 2018, the applicant was required to amend the identification of goods and services and provide the entity and country of incorporation/organization.

 

Based on applicant’s response, the trademark examining attorney notes that the requirement to provide the entity and country of incorporation/organization has been satisfied.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• PARTIAL IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

PARTIAL IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

THE FOLLOWING REQUIREMENT APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN

 

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name for the goods and services.  For goods, if there is no common commercial name, applicant must describe the product and its intended uses.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).

 

Specifically, applicant must amend the following language in the identification of goods and services.

 

The wording “apparatus for diagnoses of the eye” and “optical coherence tomography systems and optical imaging biometers” in the identification of services for International Class 9 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass medical devices in International Class 10.

 

The wording “optical coherence tomography systems and optical imaging biometers” in the identification of services for International Class 10 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass scientific devices in International Class 9.

 

The wording “light emitting apparatus” in the identification of services for International Class 9 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass light emitting diodes in International Class 9, light emitting devices for medical purposes in International Class 10, and light emitting diode lighting fixtures in International Class 11.

 

The wording “scientific and technological services, namely, research and design in the field of eye diagnostics, and measurement, recording, and examination of the anterior and posterior segment of the eye” in the identification of goods and services is indefinite and must be clarified because applicant must indicate the tangible goods that are to be designed.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, if accurate: 

 

International Class 9: Scientific, surveying, photographic, cinematographic, optical, measuring, signaling, checking, and supervision apparatus and instruments, namely apparatus in the nature of computer hardware and software for diagnoses of the eye; computer software for operating an optical eye diagnosis apparatus and for recording, for maintaining images, photos and pictures, and for controlling medical devices; optical measuring, signaling and checking and supervision apparatus, namely light emitting apparatus in the nature of {indicate common commercial name, e.g., light emitting diode displays}; optical measuring, signaling, checking, and supervision instruments for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems comprising {indicate the primary components of the systems, e.g., computer hardware and software for ocular diagnosis} and optical imaging biometers for scientific purposes

 

International Class 10: Surgical and medical apparatus and instruments, namely, optical coherence tomography systems comprising {indicate the primary components of the systems, e.g., lasers for medical purposes} and optical imaging intraocular lens biometers; Surgical and medical instruments and apparatus for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems comprising {indicate the primary components of the systems, e.g., lasers for medical purposes} and optical imaging intraocular lens biometers

 

International Class 42: Scientific and technological services, namely, research and design of {indicate the tangible goods that are to be design, e.g., ophthalmology instruments} in the field of eye diagnostics, and measurement, recording, and examination of the anterior and posterior segment of the eye; industrial analysis of data related to the eye, and industrial research services in the field of functionality of the eye; design and development of computer hardware and software; scientific and technological services, namely, scientific research for doctors and diagnosticians in the field of ophthalmology or ocular diagnosis

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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 must respond within six months of the date of issuance of this final Office action or the following goods and services to which the final requirement(s) apply will be deleted from the application by Examiner’s Amendment: 

 

International Class 9: Scientific, surveying, photographic, cinematographic, optical, measuring, signaling, checking, and supervision apparatus and instruments, namely apparatus for diagnoses of the eye; optical measuring, signaling and checking and supervision apparatus, namely light emitting apparatus; optical measuring, signaling, checking, and supervision instruments for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems and optical imaging biometers

 

International Class 10: Surgical and medical apparatus and instruments, namely, optical coherence tomography systems and optical imaging biometers; Surgical and medical instruments and apparatus for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems and optical imaging biometers

 

International Class 42: Scientific and technological services, namely, research and design in the field of eye diagnostics, and measurement, recording, and examination of the anterior and posterior segment of the eye.

 

37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed for the following goods and services:    

 

International Class 9: Computer software for operating an optical eye diagnosis apparatus and for recording, for maintaining images, photos and pictures, and for controlling medical devices

 

International Class 42: Industrial analysis of data related to the eye, and industrial research services in the field of functionality of the eye; design and development of computer hardware and software; scientific and technological services, namely, scientific research for doctors and diagnosticians in the field of ophthalmology or ocular diagnosis.

 

Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

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.

 

 

 

 

/Joanna E. H. Fiorelli/

Examining Attorney

Law Office 105

571-272-4245

joanna.fiorelli@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 6/1/2018 FOR U.S. APPLICATION SERIAL NO. 79222790

 

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 6/1/2018 (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.