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: 7/23/2018

 

 

INTERNATIONAL REGISTRATION NO. 1379459

 

STRICT DEADLINE TO RESPOND TO THIS LETTER:  To avoid abandonment of applicant’s trademark application, the USPTO must receive a complete response within (1) thirty (30) days of the date of issuance of this letter, or (2) the time remaining in the six-month period for responding to the previous Office action, whichever is longer.

 

Applicant filed a timely request for reconsideration on July 10, 2018, responding to the final Office action that issued on June 1, 2018.  Although the request does not resolve all outstanding issues, applicant’s response was filed within the six-month response period and otherwise complies with 37 C.F.R. §2.65(a)(2).  Thus, applicant is being granted thirty (30) days from the date of issuance of this letter or the remainder of the sixth-month response period, whichever is longer, to resolve all outstanding issues.  See 37 C.F.R. §2.65(a)(2); TMEP §§715.03(a)(ii)(C), 718.03(b). 

 

In the present case, applicant did not consider or fully comply with the following refusals and/or requirements raised in the previous final Office action:  PARTIAL IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT.  All other issues have been satisfied.

 

If applicant does not resolve these outstanding issues within the thirty-day time period or the time remaining in the response period, and/or file a timely notice of appeal, the application will be held partially abandoned.  See TMEP §715.03(a)(ii)(C).

 

PARTIAL FINAL IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT CONTINUED AND MAINTAINED

 

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 “optical measuring, signaling and checking and supervision apparatus, namely light emitting apparatus in the nature of laser light emitting sources” 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 laser light projectors in International Class 11.

 

Furthermore, the wording in International Class 10 appears to be missing a semi-colon (;). Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

 

 

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 laser light emitting sources being {indicate the common commercial name of the goods, e.g., laser diodes}; optical measuring, signaling, checking, and supervision instruments for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems comprising 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 lasers for medical purposes and optical imaging Intraocular lens and eye fundus biometers; Surgical and medical instruments and apparatus for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems comprising lasers for medical purposes and optical imaging intraocular lens biometers

 

International Class 42 [no changes]: Scientific and technological services, namely, research and design of ophthalmology instruments in the field of eye diagnostics, 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 amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  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 amended.  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).

 

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.

 

ADVISORY: PARTIAL ABANDONMENT

 

If applicant does not respond to this Office action within the six-month period for response, the following goods in International Classes 9 and 10 will be deleted from the application:  “optical measuring, signaling and checking and supervision apparatus, namely light emitting apparatus in the nature of laser light emitting sources” in International Class 9 and “Surgical and medical apparatus and instruments, namely, optical coherence tomography systems comprising lasers for medical purposes and optical imaging Intraocular lens and eye fundus biometers Surgical and medical instruments and apparatus for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems comprising lasers for medical purposes and optical imaging intraocular lens biometers” in International Class 10. 

 

The application will then proceed with the following goods and services in International Classes 9 and 42 only:  “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, checking, and supervision instruments for ophthalmology or ocular diagnosis, namely, optical coherence tomography systems comprising computer hardware and software for ocular diagnosis and optical imaging biometers for scientific purposes” in International Class 9 and “Scientific and technological services, namely, research and design of ophthalmology instruments in the field of eye diagnostics, 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” in International Class 42.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

This letter does not extend the time for filing an appeal with the Trademark Trial and Appeal Board.  TMEP §§715.03(a)(ii)(C), 718.03(b).  An applicant must file a notice of appeal online using the Electronic System for Trademark Trials and Appeals (ESTTA) within six months of the issuance date of the final Office action.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.63(b)(3), 2.142(a); TMEP §§715.03(c), 718.03(b).  The fee for filing an appeal through ESTTA is $200 per class.  37 C.F.R. §2.6(a)(18)(ii).

 

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 7/23/2018 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 7/23/2018 (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.