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Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).

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

SUMMARY OF ISSUES:

English Translation Required
Identifications of Goods Requires Amendment
Email Address Required
U.S. Counsel Required

ENGLISH TRANSLATION REQUIRED

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark. 37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809. The following English translation is suggested: The English translation of “ONKYO” in the mark is “ACOUSTIC”. TMEP §809.03. See attached translation evidence.

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

The wording listed below from the identification of goods and/or services is indefinite and must be clarified for the reasons stated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

The wording “ear molds specially adapted for hearing aids;” “ear wax guards specially adapted for hearing aids;” and “ear wax guard filters specially adapted for hearing aids” in the identification of goods in International Class 10 is indefinite. Applicant must specify the purpose of function of the ear guards/molds.

The wording “diagnostic apparatus for medical purposes” in the identification of goods in International Class(es) 10 is indefinite and too broad. This wording must be clarified because it is not clear what the goods are and could identify goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, “calibration devices for calibrating X-ray diagnostic apparatus other than for medical use” are in International Class 09 and “Medical diagnostic apparatus for testing {specify condition or subject matter tested, e.g., blood sugar levels, cancer cells, DNA, etc.} incorporating recorded software for {indicate function or purpose of software}” are in International Class 10.

The wording “sensors for medical use to gather biometric data” and “sensors, monitors and displays, for medical use, sold as a unit in the form of a computerized device for measuring, displaying, tracking, monitoring, storing, recording, and transmitting biometric data, heart rate, body movement, and calories burned” in the identification of goods in International Class 10 is indefinite. Applicant must further specify the medical purpose of the sensors and indicate whether they gather animal or human biometrics.

The wording “medical apparatus and instruments for measuring, displaying, tracking, monitoring, storing, recording, and transmitting biometric data, heart rate, body movement, and calories burned” in the identification of goods in International Class 10 is indefinite. Applicant must further specify the type of medical apparatus.

The wording “auxiliary medical devices and orthodontic apparatus” and “medical apparatus and instruments” in the identification of goods in International Class 10 is indefinite. Applicant must further specify the type and/or function of the apparatus/device.

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 of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Class 10 only, the class specified in the application for these goods. See TMEP §1904.02(c), (c)(ii).

Applicant may adopt any or all of the following identifications, if accurate (changes shown in bold typeface):

International Class 10: Hearing aids; analog hearing aids; digital hearing aids; programmable hearing aids; electronic hearing aids; electric hearing aids; medical hearing instruments; Ear plugs for medical purposes, namely, ear molds specially adapted for hearing aids; Ear plugs for medical purposes, namely, ear wax guards specially adapted for hearing aids; Ear plugs for medical purposes, namely, ear wax guard filters specially adapted for hearing aids; Audiometers for medical purposes; stethoscopes; analog stethoscopes; digital stethoscopes; heartbeat measuring apparatus; analog heartbeat measuring apparatus; digital heartbeat measuring apparatus; pulse meters; analog pulse meters; digital pulse meters; sphygmomanometers; analog sphygmomanometers; digital sphygmomanometers; electrocardiographs; analog electrocardiographs; digital electrocardiographs; clinical thermometers; analog clinical thermometers; digital clinical thermometers; Medical diagnostic apparatus for testing {specify condition or subject matter tested, e.g., blood sugar levels, cancer cells, DNA, etc.} incorporating recorded software for {indicate function or purpose of software}; 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; wearable monitors used to measure biometric data for medical use; Sensors for medical use to be worn by a human to gather human biometric data, namely, heart rate, body movement, and calories burned and also including monitors and displays sold as a unit; Sensors for medical use to be worn by a human to gather, measure, display, track, monitor, store, record, and transmit human biometric data, namely, heart rate, body movement, and calories burned and also including monitors and displays sold as a unit; auxiliary medical devices for use in treating or diagnosing {specify disease or condition} with integrated recorded operating system software, sold as a unit and orthodontic machines and instruments; Medical apparatus and instruments for use in surgery; parts, fittings and accessories for all the aforesaid goods

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.

EMAIL ADDRESS REQUIRED

Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).

U.S. COUNSEL REQUIRED

Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §2.11(a); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as Japan. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.

To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.

RESPONSE GUIDELINES

How to respond. Click to file a response to this nonfinal Office action.

/Catherine E. Sutton/

Catherine E. Sutton

Examining Attorney

Law Office 103

(571) 272-4136

catherine.sutton@uspto.gov

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.

Offc Action Outgoing

ONKYO

ONKYO CORPORATION

Offc Action Outgoing

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