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:

 

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.

 

Identification of Goods

 

The identification of goods in International Class 9 is acceptable.

 

The wording “clothing, namely, pants and leggings for treating cellulite” and “massage pens” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03. 

 

An applicant may amend an identification of goods 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 et seq. 

 

 

 

 

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.

 

The identification of goods should be amended to read as follows, if accurate:

 

Medical, dental and veterinary equipment and devices, namely blood pressure meters, blood pressure cuffs, blood sugar meters, thermometers for medical use, devices for analysis of body fat,  namely, pacemakers, heart rate monitors, pulse meters, cardiac defibrillators; body fat monitors, pulse meters; massage devices, namely, apparatus for shiatsu massage, foot and back massagers, electric foot spa massagers, infrared personal body massagers having two percussive nodes for penetrating deeply into sore, stiff muscles, massagers in the form pens with pressure point massage tip, and a vibrating massage ball for massaging the face, hands, and pressure points; inhalation devices, namely, nebulizers, personal humidifiers for respiratory therapy; anti-allergy devices, namely, allergy nebulizers, photo therapy devices comprising led apparatus used to treat nasal allergies, including hay fever, dust mite, and pet and animal hair allergies; devices for muscle formation for medical purposes, namely, electronic muscle stimulators; devices for hand and foot care for medical purposes, namely, therapeutic foot rollers for medical use; acupuncture devices, devices for pain therapy, namely, transcutaneous electrical nerve stimulation devices;  devices for relieving back pain, namely, heating pads for medical purposes; orthopedic pillows, orthopedic shoes and insoles, belts and suspender belts for medical purposes,  massage gloves and belts for massage of the skin, pillows for medical purposes, electric blankets and electric pillows for medical purposes, ice bags for medical purposes, hot-air devices for therapeutic purposes, namely, humidifiers; medical devices for physical exercise, namely, exercise machines for therapeutic purposes and manually operated exercise equipment for physical therapy purposes, custom-built furniture for medical purposes, namely, examining tables, examination chairs, recliners, devices for rinsing body orifices, namely, ear wash device in the nature of a container to be filled with appropriate fluid by the user for flushing ear wax from the ear, nasal irrigators, oral irrigators, anal irrigators, douche bags, spray nozzles for medical purposes, namely for nebulizers; devices for radiotherapy, devices for magneto therapy, therapeutic foot rollers, devices for electro therapy, namely, transcutaneous electric nerve stimulators, bindings for the feet, bandages, devices for physiotherapy, namely, heating pads, transcutaneous electrical nerve stimulators; infrared lamps, ultraviolet lamps, led lamps all for medical purposes; mechanical and electronic surgical instruments; scrubs, namely, surgical scrub suits, operating tables, operating blankets in the nature of drapes; mats for patients, namely, acupressure mats; walking aids for handicapped persons, namely, walking frames; medical devices for detecting cancer; patient monitoring sensors and alarms with computer software for analyzing obtained medical data and for controlling sensor and alarm function, apparatuses for medical use for monitoring the dispensing and taking of medications which feature patient monitoring sensors and alarms with computer software for analyzing obtained medical data and for controlling sensor and alarm function, data memory, a communicating interface, an input keyboard, and a barcode scanner; apparatuses for medical use for detecting and responding to electrical signals from the human body, namely, patient biofeedback sensors and patient monitoring sensors which include headphones, a microphone for monitoring the electrical signals, and an amplifier for making the electrical signal more audible; apparatuses for medical use for analyzing bodily fluids on a substrate, comprised primarily of an electrical probe for detecting the bodily fluid on the substrate, and a smart phone for communicating a signal from the electrical probe indicating the presence and identity of the bodily fluid; apparatuses for medical use for measuring parameters of human bodily functions comprised of a blood pressure cuff, with a cellular telephone connected to the blood pressure cuff, and a charger for the cell phone in International Class 10.

 

1(b) and 44(d) with Intent to Perfect 44(e)-TEAS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(1), (4); TMEP §§806.02(f), 806.04(b). 

 

Application Not Entitled to Register

 

The filing date of pending Application Serial No. 85-250418 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no similar registered mark that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

Response

 

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. §2.191; TMEP §§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.

 

 

 

 

 

 

/Charles L. Jenkins, Jr./

Trademark Examining Attorney

Law Office 105

charles.jenkins@uspto.gov

571-272-9305

 

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 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 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.