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

 

 

INTERNATIONAL REGISTRATION NO. 1449910

 

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.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search Results

 

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).

 

 

SUMMARY OF ISSUES that applicant must address:

• Requirement – Entity Information
• Requirement – Amend Identification of Goods and Services
• Requirement – Translation

 

REQUIREMENT – ENTITY INFORMATION

 

Applicant must specify its legal entity and national citizenship or foreign country of organization or incorporation, as this required information is not included in the application.  See 37 C.F.R. §§2.32(a)(3)(i)-(ii), 2.61(b); TMEP §§803.03, 803.04.  This information is required for all U.S. trademark applications, including those filed under Trademark Act Section 66(a).  See 37 C.F.R. §7.25(a)-(b); TMEP §1904.02(a). 

 

Acceptable legal entities include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent.  See TMEP §§803.03 et seq.  If applicant’s legal entity is an individual, applicant must so specify and provide his or her national citizenship.  TMEP §803.03(a).  If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated.  TMEP §803.03(b)-(c).  For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP).  TMEP §803.03(c).  If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located.  See TMEP §803.04. 

 

To provide this entity information using the Trademark Electronic Application System (TEAS) Response to Office Action form, applicant must open the response form, answer “Yes” to wizard question number 5, find the “Owner Information” page, and do the following:  (1) locate the “Entity Type” heading on that page and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option.

 

 

REQUIREMENT – AMEND IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods contains brackets.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods that have been deleted from registrations or in an affidavit of incontestability to indicate goods not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  Id.

 

Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods.

 

In Class 5, the wording “biopharmaceuticals,” “pharmaceuticals, biosimilars and biological preparations for medical purposes,” “pharmaceutical drug for the treatment of anemia,” “biochemical preparations for medical purposes,” and “nutraceutical preparations for therapeutic or medical purposes” in the identification of goods is indefinite and must be clarified because the specific nature/type and/or purpose of the goods, such as “biopharmaceuticals for the treatment of cancer,” etc., must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In Class 10, the wording “apparatus for monitoring patients and analysing arrhythmias,” “apparatus for the treatment of deafness for hearing-impaired children,” “medical hearing and speaking equipment for the hearing-impaired children,” “medical equipment for the hard of hearing, for diagnosis and therapy purposes,” “equipment for the localization of tumours,” “apparatus for dosage planning and the documentation of tumour radiotherapy,” “linear accelerators for tumour radiotherapy,” “medical apparatus and equipment for recording, processing, storing and reproducing medical images,” “point-of-care diagnostic apparatus, equipment and instruments for medical purposes,” “protective devices and protective screens for protecting against exposure to x-rays, for medical purposes,” “apparatus for ECG long-term storage and computerized ECG evaluation electroencephalography,” “medical equipment for digital image recording, for contrast medium analysis with real time image reproduction,” “urine analysis apparatus,” “measuring apparatus for cardiac catheterization,” “medical CT scanners,” “peripheral devices of medical CT scanners,” “dental CT scanners,” “parts and fittings of dental CT scanners,” “magnetic resonance imaging [MRI] apparatus,” “biometric medical scanners for health check and diagnosis,” and “biometric identification medical apparatus for health check and diagnosis” in the identification of goods is indefinite and must be clarified because the specific nature/type and/or purpose of the goods, such as “apparatus for the treatment of deafness for hearing-impaired children, namely, hearing aids for the deaf,” etc., must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In Classes 11 and 12, the wording “Sterilizing device for hospitals,” “connected vehicles,” “parts and fittings for autonomous vehicles,” and “electric reversing alarms for vehicle incorporating parking assistance apparatus for foreview and rearview sensors” in the identification of goods is indefinite and must be clarified because the specific nature/type of the goods, such as “connected land vehicles,” etc., must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In Class 44, the wording “dentistry” and “hospitals” in the identification of services is indefinite and must be clarified because the nature/type of the services, such as “cosmetic dentistry,” etc., must be provided.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  

 

Class 5: Pharmaceutical products for the treatment of colorectal cancer; biopharmaceuticals for the treatment of cancer; antibodies for medical purposes; pharmaceutical preparations for the treatment of autoimmune diseases; pharmaceutical preparations for the treatment of arthritis; pharmaceutical preparations for the treatment of diseases of the metabolic system; pharmaceutical preparations for the treatment of cancer; pharmaceutical preparations for the treatment of inflammatory diseases; biopharmaceuticals [specify type, such as for the treatment of cancer]; pharmaceuticals, biosimilars and biological preparations, all [specify purpose, such as for the treatment of cancer] for medical purposes; pharmaceutical preparations for the treatment of leukemia; vaccines against pneumococcal infections; pharmaceutical preparations for ocular use; pharmaceutical drug, namely, pharmaceutical preparations for the treatment of anemia; biochemical preparations [specify purpose, such as for the treatment of cancer] for medical purposes; nutraceutical preparations for therapeutic or medical purposes, namely, [specify type and purpose, such as nutraceuticals for the treatment of cancer]; nutraceuticals for use as dietary supplements

 

Class 10: Respiration monitors; apparatus for monitoring patients and analysing arrhythmias, namely, [specify type, such as medical apparatus for monitoring vital signs of patients]; equipment for respiratory technology, namely, respiratory masks for medical purposes; apparatus for the treatment of deafness for hearing-impaired children, namely, [specify type, such as hearing aids for the deaf]; medical hearing and speaking equipment for the hearing-impaired children, namely, [specify type, such as hearing aids for the deaf]; medical equipment for the hard of hearing, for diagnosis and therapy purposes, namely, [specify type, such as hearing aids for the deaf]; equipment, namely, [specify type, such as surgical devices in the nature of wires] for the localization of tumours; apparatus for dosage planning and the documentation of tumour radiotherapy, namely, [specify type, such as drug delivery devices and systems for medical purposes]; radiotherapy apparatus, namely, linear accelerators for tumour radiotherapy; medical apparatus and equipment for recording, processing, storing and reproducing medical images, namely, [specify type appropriate for Class 10, such as medical x-ray apparatus]; point-of-care diagnostic apparatus, equipment and instruments for medical purposes, namely, [specify type appropriate for Class 10, such as ultrasonic medical diagnostic apparatus]; protective devices and protective screens for protecting against exposure to x-rays, for medical purposes, namely, [specify type, such as lead aprons for medical use]; apparatus for ECG long-term storage and computerized ECG evaluation electroencephalography, namely, [specify type, such as electrocardiographic (ECG) recorders and electrocardiographic (ECG) digital plasters sold as a unit]; electro-medical apparatus and equipment for x-ray diagnostics and x-ray therapy, namely, [specify type appropriate for Class 10, such as medical x-ray apparatus]; medical equipment for digital image recording, for contrast medium analysis with real time image reproduction, namely, [specify type appropriate for Class 10, such as medical x-ray apparatus]; urine analysis apparatus for medical purposes; measuring apparatus for cardiac catheterization for medical purposes; medical x-ray CT scanners; peripheral devices of medical CT scanners, namely, [specify type, such as integral component of the image chain of a CT scanner for capturing X-rays and converting them to information that creates the image]; dental x-ray CT scanners; structural parts and fittings of dental x-ray CT scanners; magnetic resonance imaging (MRI) apparatus for medical purposes; gloves for medical purposes; patient monitoring sensors and alarms; biometric medical scanners for health check and diagnosis, namely, [specify type, such as sensors for medical use to be worn by a human to gather human biometric data and also including {indicate other goods sold as a unit with the sensors, e.g., an accelerometer, a gyroscope, etc.} sold as a unit]; biometric identification medical apparatus for health check and diagnosis, namely, [specify type, such as sensors for medical use to be worn by a human to gather human biometric data and also including {indicate other goods sold as a unit with the sensors, e.g., an accelerometer, a gyroscope, etc.} sold as a unit]

 

Class 11: Sterilizing device for hospitals, namely, [specify type, such as air and water sterilizers]

 

Class 12: Connected [specify type, such as land] vehicles; driverless cars being autonomous cars; structural parts and fittings for autonomous vehicles; electric reversing alarms for vehicle incorporating parking assistance apparatus with foreview and rearview sensors, namely, back-up warning alarms for vehicles; anti-theft warning apparatus for motor cars with software and hardware for internet of things

 

Class 44: Medical information services provided via the internet; medical and pharmaceutical consultation; hygienic and beauty care for humans and animals; cosmetic and medical services for the care of the skin; [specify type, such as cosmetic] dentistry; conducting physical examination for medical purposes; hospital services; medical clinics; telemedicine services; providing health information; medical equipment rental; conducting physical examination for medical purposes via the internet

 

Applicant’s goods and 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 services or add goods and 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 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 services will further limit scope, and once goods and 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 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 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.

 

REQUIREMENT – TRANSLATION

 

To permit proper examination of the application, applicant must submit an English translation of all wording in the mark that appears to be foreign.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  The following English translation is suggested:  The English translation of “SAMSUNG” is “THREE STARS”.  TMEP §809.03.  See attached translation evidence via U.S. Registration No. 4779715.

 

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 U.S. commonwealths or U.S. territories.  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. 

 

Assistance

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the requirements in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Joan Blazich/

Examining Attorney

Law Office 122

571-272-7810

joan.blazich@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.