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: 3/8/2012

 

 

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, 2.65(a); TMEP §§711, 718.03.

 

 

Identification of Goods – Amendment Required re Class 5

 

The applicant has identified goods in Classes 5 and 10.  The Class 10 portion of the identification is acceptable in its entirety.  In Class 5, most of the wording is acceptable as written.  However, the following specific items require further clarification:

 

(1) The item “bone adhesives” must be amended to “bone adhesives for medical use” or “bone adhesives for surgical and orthopedic purposes”, as is required for the similar product “bone cement” in this Office’s identification manual.

 

(2) The section “and surgical implants for guided tissue regeneration in bone surgery and grafting and material for use in setting bone fractures” must be clarified by stating that the surgical implants comprise living tissue.  It is also unclear as to whether this section is identifying one type of product with multiple uses (i.e., surgical implants that are used for tissue regeneration and as material that is used in setting bone fractures), or whether the section is referring to separate products (i.e., surgical implants for tissue regeneration in surgery and grafting; and, as a separate product, material that is used in setting fractures).  The applicant must clarify this section and, if the “material for use in setting bone fractures” is separate from the preceding phrase, then the applicant must also specify the type(s) of “material”.  Amending to either of the following would be acceptable to resolve this issue:

 

[and] surgical implants comprising living tissue for guided tissue regeneration in bone surgery and grafting and for use in setting bone fractures

 

[and] surgical implants comprising living tissue for guided tissue regeneration in bone surgery and grafting, and material for use in setting bone fractures comprising [specify, e.g., “bone fillers consisting of biological materials,” “bone growth media consisting of biological materials,” “bone repair paste”]

 

In the above two suggestions, the first option identifies a single product (the surgical implants comprised of living tissue) that are used for tissue regeneration and in connection with setting fractures.  In the second option, the surgical implants are separate products from the material for setting fractures, such that the “material” must be identified with further specificity.  The examples of types of material were taken directly from this Office’s identification manual.

 

(3) Finally, the item listed as “dietetic foods adapted for medical use” is no longer considered acceptable by this Office, in keeping with changes to the identification manual incorporated by the Tenth Edition of the Nice Agreement, which took effect on January 1, 2012.  See this Office’s identification manual, with the specific entry used by the applicant having been deleted, and with the explanatory note indicating that the particular food items must be identified by their common commercial names.  For example, “low-salt bread adapted for medical use” or “low-salt bread for treating hypertension” would be acceptable in Class 5 (with both identifying the specific food item, and with the first of the examples using the phrase “adapted for medical use” while the second example substitutes a phrase identifying the particular medical condition that the food is used to treat).

 

In making all of the above amendments, the applicant is also advised that identifications of goods may 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.

 

Finally, please note that while it appears that the applicant used, in its entirety, the identification of goods in a third-party registration, as a model for the identification in this case, the examining attorney cannot rely on that single registration in determining whether the wording is considered acceptably definite.  With the three above amendments, the Class 5 identification will be acceptable in its entirety.

 

 

 

Search of Office Database – No Conflicting Marks Noted

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

 

Partial Abandonment If No Response Filed

 

The above identification issue applies only to specific items in Class 5.  Accordingly, if applicant does not respond to this Office action within the six-month period for response, the above-discussed items in Class 5 will be deleted from the application.  The application will then proceed with the remaining goods in Class 5, as well as with the Class 10 identification in its entirety.  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

 

 

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 §§304.01-.02, 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.

 

Please note:  The above issue may be resolved by an Examiner’s Amendment, and the applicant is encouraged to telephone the examining attorney to expedite processing of this application.

 

           /Elizabeth A. Hughitt/

 

Elizabeth A. Hughitt

Examining Attorney

Law Office 111

U.S. Patent and Trademark Office

(571) 272-9384

beth.hughitt@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 3/8/2012 FOR

SERIAL NO. 85524012

 

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 3/8/2012 (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.