Offc Action Outgoing

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.

 

ISSUE/MAILING DATE: 10/7/2010

 

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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

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).

 

Applicant must respond to the requirement(s) set forth below.

 

 

IDENTIFICATION OF GOODS

 

 

The identification of goods is unacceptable and must be clarified because some of terms are indefinite and/or misclassified.  See TMEP §1402.01.  The indefinite terms and/or misclassified terms are listed below, followed by the changes needed.  Applicant may adopt the following identification, if accurate: 

 

The wording “Acoustic diagnostic apparatus and accessories for medical purposes” is indefinite because it is not clear whether the following wording lists the apparatus or the accessories.  Also, the wording “veterinary imaging apparatus” is indefinite because it may be in more than one class.  The applicant must clarify whether this is “Medical imaging apparatus for small animals, in a research laboratory environment,” which is in Class 9, or “Diagnostic veterinary imaging apparatus,” in Class 10.   The applicant may add “and parts therefor” after listing the common commercial name of each item, which is acceptable language.

 

The wording “Ultrasonic therapy apparatus and accessories” is indefinite because the applicant has not listed the common commercial name of each accessory.  However, instead of listing the common commercial name of each accessory, the applicant may amend “accessories” to “machines,” as the following is acceptable in the Trademark ID Manual:  Ultrasonic therapy apparatus and machines,” in Class 10. 

 

In addition, the following wording is indefinite because it could include goods in more than one class:  Electronic medical apparatus for laboratory analysis, namely, apparatus for blood and other body fluid analysis apparatus.  The wording “medical” indicates a Class 10 good, but the wording “for laboratory analysis” indicates a Class 9 good, since laboratory equipment is in Class 9.  The applicant must list the common commercial name of each good and list the good in the proper class.  While the apparatus for blood analysis may be in Class 9 or 10, depending on its nature, the apparatus for analysis for bodily fluid analysis will be in Class 9, and should be listed as electronic clinical analyzers for measuring, testing, and analyzing blood and other body fluids.  See the exact suggestion below.  The applicant may amend to one or more of the following, if accurate:

 

Electronic clinical analyzers for measuring, testing, and analyzing blood and other bodily fluids, in Class 9;

 

Electronic medical apparatus for blood analysis, in Class 10. 

 

 

Also, the applicant must specify the type of “physiological data” monitored by the “patient monitors.”  For example, the applicant may amend to:

 

Medical monitors, namely, patient monitors for monitoring patient physiological data, namely, for monitoring blood properties and respiratory events, in Class 10.

 

 Also, the wording “equipment” in the wording “Nuclear imaging equipment” is indefinite.  The applicant must specify the exact nature of the nuclear imaging equipment, for example, “nuclear imaging diagnostic apparatus”

 

In addition, the applicant must list the common commercial name of each “dental apparatus” and the common commercial name of all “accessories.”  The applicant may adopt the following, if accurate:  Dental apparatus, namely, intra-oral light systems, prophy angles, dental picks, dental mirrors, and oral irrigators, in Class 10.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

OVERALL SUGGESTED IDENTIFICATION OF GOODS

 

The applicant may adopt the following, if accurate:

 

Electronic clinical analyzers for measuring, testing, and analyzing blood and other bodily fluids, in Class 9;

 

Acoustic diagnostic apparatus for medical purposes, namely, ultrasonic medical imaging apparatus, diagnostic veterinary imaging apparatus, and parts therefor; Ultrasonic therapy apparatus and machines; Ultrasonic transducers for medical diagnostics and treatment; Electronic medical apparatus for blood analysis; Medical monitors, namely, patient monitors for monitoring patient physiological data, namely, for monitoring blood properties and respiratory events; Medical radiology diagnostic apparatus and accessories, namely, X-ray, CT scanners, MRI, and nuclear imaging diagnostic apparatus; dental apparatus, namely, intra-oral light systems, prophy angles, dental picks, dental mirrors, and oral irrigators, in Class 10.

 

 

 

REQUIREMENTS FOR MULTIPLE CLASS APPLICATIONS

 

The applicant has paid the filing fee for one class.  However, the goods are in more than one class, as noted above.

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

a.   Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; and the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

b.   One specimen showing use of the mark for each class of goods and/or services; and the specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen;

 

c.   A statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

d.   Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The specimen(s) of record is acceptable for none of the International Class(es).  See SUBSTITUTE SPECIMEN REQUIRED below.

 

 

SUBSTITUTE  SPECIMEN REQUIRED

 

The specimen is not acceptable because it is merely a photocopy of the drawing or a picture or rendering of the applied-for mark; it does not show the applied-for mark in actual use in commerce on the goods.  See 37 C.F.R. §2.56(c); TMEP §904.04(a).  Trademark Act Section 45 requires use of the mark “on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.”  15 U.S.C. §1127; see 37 C.F.R. §2.56(b)(1); TMEP §904.03. 

 

An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for each class of goods specified in the application; and

 

(2)  The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The substitute specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1).  If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required.  See TMEP §806.03(c).  However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. 

 

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application as of the filing date of the application.”  37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

 

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

 

 

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85073448) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 10/7/2010 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.       

 

 PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification. 

 

2. Respond within 6 months, calculated from 10/7/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, please use the Trademark Electronic Application System Response to Office Action form.