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: 9/17/2012

 

This Office action is in response to applicant’s communication filed on August 8, 2012.

 

The applicant’s disclaimer has been entered in the record. The amendment to the recitation of goods in Class 10 is not acceptable for the following reasons.

 

1.The wording “leg, body and back wedges” in the identification of goods is indefinite, incorrectly classified in Class 10 and must be clarified. Applicant must further clarify the composition of the goods. For example-  leg, body and back wedges made of polyurethane foam.  See TMEP §1402.01.

 

 

2. Applicant has classified “leg, body and back wedges” in International Class 10; however, the proper classification is International Class 20.  Therefore, applicant must either (1) add International Class 20 to the application and reclassify these goods in the proper international class, or (2) delete the wording  from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

3. In the previous office action, the examining suggested that the wording “bath accessories adapted for medical patients or for use by handicapped persons namely, bathtub grab bars and shower grab bars, shower chairs, shower benches, and shower stools” would be acceptable for Class 10. It appears however that these goods can be used for non-medical purposes and are commonly sold as component parts of showers thus the correct class is 20. See for example “patient care shower chairs- Class 20” – The Acceptable Identification of Goods and Services Manual. In addition, the applicant must amend “bathtub grab bars and shower grab bars” to “metal

bathtub grab bars and metal shower grab bars” in order to place in Class 20. If these goods are made of metal, the correct class is 6. Please see The Acceptable Identification of Goods and Services Manual.

 

 

4. Applicant has classified “bath accessories adapted for medical patients or for use by handicapped persons namely, bathtub grab bars and shower grab bars, shower chairs, shower benches, and shower stools” in International Class 10; however, the proper classification is International Class 20 unless the bathtub and shower grab bars are made of metal in which case the classification would be 6.  Therefore, applicant must either (1) add International Class 20 to the application and reclassify these goods in the proper international class, or (2) delete the wording  from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

ADDING A CLASS

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on use in commerce:

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

(3)        SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods, applicant must also submit the following:

 

(a)        DATES OF USE:  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)        SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  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 goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.

 

(c)        STATEMENT:  The following statement:  “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.”

 

(d)       VERIFICATION:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  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 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods, the specimen of record is acceptable for International Classes 10, 11 and 20.  Applicant must submit additional specimens if different international classes are added to the application.

 

 

 

 

 

/Lesley LaMothe/

Trademark Attorney

Law Office 107

571-272-9184

lesley.lamothe@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 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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 9/17/2012 FOR

SERIAL NO. 85449722

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

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

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 9/17/2012 (or sooner if specified in the office action).

 

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, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

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