| To: | Mandarin Enterprises (yale@clinicalguard.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 85122717 - CLINICAL GUARD - N/A |
| Sent: | 12/22/2010 4:33:17 PM |
| Sent As: | ECOM116@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85122717
MARK: CLINICAL GUARD
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: Mandarin Enterprises
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 12/22/2010
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 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).
Substitute Drawing Required
A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52. Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).
If applicant submits a new drawing in the form of a digitized image, it must be in jpg format. The Office recommends that the digitized image have a length and width no smaller than 250 pixels and no larger than 944 pixels. 37 C.F.R. §2.53(c); TMEP §807.05(c).
Amendments or changes to the applied-for mark in a substitute drawing will not be accepted if the changes would materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14.
(1) The mark should appear in black on a white background, unless the mark is in color. If color is a feature of the mark, applicant must depict the mark in color, and provide both a statement identifying the colors claimed and a statement describing where the colors appear in the mark.;
(2) All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high-quality image when copied.; and
(3) The digitized mark image must be in jpg format, formatted at no less than 300 dots per inch and no more than 350 dots per inch.
37 C.F.R. §§2.52(b), (b)(1), 2.53(b)-(c); TMEP §§807.04(a), 807.05(b)-(c), 807.07(a)(i)-(a)(ii).
In addition to the above, the Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.
The Office strictly enforces the drawing requirements.
Amended Identification of Goods Required
Class 005
Class 010
Applicant must delete the duplicate occurrences of the wording “stethoscopes, blood pressure monitors.”
The wording “medical supplies, namely, infusion pumps, intubation” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must further describe the use of these goods to clarify the particular goods intended (e.g., infusion pumps for delivering measured amounts of solutions into the bloodstream over time, medical intubation equipment, etc.) Applicant may substitute the following wording, if accurate: “medical supplies, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time, medical intubation equipment.”
To summarize, applicant may adopt the following identification of goods, in whole or in part, if accurate:
Class 005 Pregnancy test kits; First aid kits; drug abuse test kits comprising medical diagnostic reagents and assays for testing body fluids; medical kits for infectious disease testing comprising medical diagnostic reagents and assays for testing body fluids; ovulation test kits; fertility test kits comprising medical diagnostic reagents and assays for testing body fluids; blood alcohol test kits consisting of medical diagnostic reagents and assays for testing body fluids
Class 010 Medical supplies, namely, nebulizers for respiration therapy, oximeters, otoscopes, blood pressure monitors, thermometers, stethoscopes, fetal dopplers, heart rate monitors, patient monitors for monitoring and measuring blood properties and respiratory events, electrocardiographs, infusion pumps for delivering measured amounts of solutions into the bloodstream over time, vital signs monitors, peak flow meters, aerosol dispensers for medical use and cups for dispensing medicine, endoscopes, massage machines, hearing aids, oxygen concentrators, bronchoscopes, colonoscopes, cytoscopes, duodenoscopes, gastroscopes, hysteroscopes, medical intubation equipment, rhinolaryngoscopes, sigmoidoscopes, ureteroscopes, defibrillators, blood alcohol testing apparatus in the nature of alcohol breath testing units
If the suggestions offered by the examining attorney are incomplete or are inaccurate, applicant is encouraged to consult the online searchable Manual of Acceptable Identifications of Goods and Services for guidance at http://tess2.gov.uspto.report/netahtml/tidm.html.
Information Regarding Multiclass Applications
The application identifies goods that may be classified in more than the number of international classes covered by the fee paid. Therefore, the applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
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 based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods not covered by the fee already paid; and
(3) For each additional class of goods, 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; 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; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods 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) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: 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, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).
Please note that the specimen(s) of record are acceptable for classes 005 and 010 as set forth above only.
Disclaimer Required
The attached dictionary definition of the word “clinical” indicates that this word is defined as “having to do with the direct treatment and observation of patients, as distinguished from experimental or laboratory study.” Applicant’s goods are medical diagnostic goods, namely, “pregnancy test kits; first aid kits; drug abuse test kits; medical kits for infectious disease testing, ovulation test kits and fertility test kits” in Class 005 and “medical supplies, namely, nebulizers for respiration therapy, oximeters, stethescopes, otoscopes, blood pressure monitors, thermometers, stethoscopes, fetal dopplers, heart rate monitors, blood pressure monitors, patient monitors, electrocardiographs, infusion pumps, vital signs monitors, peak flow meters, medicine dispensers, endoscopes, massage machines, hearing aids, oxygen concentrators, bronchoscopes, colonoscopes, cytoscopes, duodenoscopes, gastroscopes, hysteroscopes, intubation, rhinolaryngoscopes, sigmoidoscopes, ureteroscopes, defibrillators, blood alcohol test” in Class 010. Therefore, because applicant’s goods are for use in connection with “the direct treatment and observation of patients,” the word “clinical” immediately describes the use of applicant’s goods and must be disclaimed.
An accurate pictorial representation of descriptive matter is equivalent to the written expression and is disclaimed pursuant to the same rules applicable to merely descriptive wording. See, e.g., Thistle Class Ass’n v. Douglass & McLeod, Inc., 198 USPQ 504, 511 (TTAB 1978) (finding a thistle design the legal equivalent of the word “thistle,” which is descriptive of a class of sailboats).
Here, the design of the caduceus is merely descriptive in that the attached dictionary evidence shows that this symbol is used to designate the medical profession. Applicant’s goods are medical diagnostic goods. Thus, the caduceus symbol immediately describe the intended users of applicant’s goods and their field of use.
The following is the standard format used by the Office:
No claim is made to the exclusive right to use “CLINICAL” and the design of the caduceus symbol apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Amended Mark Description Required
Therefore, applicant must provide a more detailed description of the applied-for mark. The following is suggested:
The mark consists of the stylized words “Clinical Guard” and a design of a stylized caduceus appearing inside of a shield-like figure to the left of the text
Miscellaneous Information Regarding Responding to this Office Action
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Debra Lee/
Trademark Attorney
Law Office 116
Voice: 571-272-5897
Fax: 571-273-9116
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.
