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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/1/2017

 

 

THIS IS A FINAL ACTION.

 

 

 

This Office Action is in response to applicant’s communication filed on 04/26/2017.

 

In a previous Office Action mailed on 03/21/2017, applicant was required to respond to a specimen requirement, provide information about the specimen and respond to a requirement for acceptable identification of goods. The information about the specimen requirement has been SATISFIED. Applicant has amended to a 1(b) filing basis for Classes 005, 020, and 021 and thus, the specimen requirement for those classes has been SATISFIED. The specimen requirement for Class 010 and requirement for acceptable identification of goods for Classes 010 and 021 are now made FINAL. See 37 C.F.R. §2.63(b).

 

SPECIMEN NOT ACCEPTABLE

 

THIS PARTIAL REQUIREMENT APPLIES TO CLASS 010 ONLY

 

Registration is refused because the substitute specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 010 in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Graystone Consulting Assocs., Inc. , 115 USPQ2d 2035, 2037-38 (TTAB 2015); In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).

 

Specifically, applicant has applied-for the mark NURSAL in association with the following identified goods in Class 010: Acupressure pillows; Cervical pillows for medical use; Electric massage apparatus for household use; Electric massage appliances, namely, electric vibrating massager; Infrared thermometers for medical purposes; Massage apparatus; Massage apparatus and instruments; Massage apparatus for eyes; Massage mitts; Massaging apparatus for personal use; Medical devices for treating sleep disorders; Medical devices, namely, pulse oximeters; Medical products, namely, therapeutic mattresses, beds, seats and cushions; Nebulizers for respiration therapy; Pregnancy girdles for medical purposes; Soporific pillows for insomnia; Sphygmomanometers; Sterile disposable oxygen humidifiers and nebulizers for respiratory therapy sold pre-filled with water; Stethoscopes and sphygmomanometers; Support belts for use during pregnancy for medical purposes; Medical products, namely, therapeutic mattresses, beds, seats and cushions

 

However, applicant submitted a substitute specimen of the applied-for mark illustrated on a “Blood pressure monitor” and an “Oral irrigator”. To note, applicant amended the identification of goods in Class 010 to add these goods in order to match with the substitute specimen. As explained further below, the amendment to the identification is unacceptable. Thus, the applied-for mark is not shown in use in commerce in connection with any of the identified goods in the application.

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a verified specimen that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application.  A “verified specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application.”  The specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

To submit a verified specimen or verified substitute specimen online using the Trademark Electronic Application System (TEAS) response form, (1) answer “Yes” to form wizard question #2; and then, continuing on to the next portion of the form, under the heading “Classification and Listing of Goods/Services/Collective Membership Organization,” do the following for each relevant class for which a specimen is being submitted: (2) check the box next to the following statement: “Check here to modify the current classification number; listing of goods/services/the nature of the collective membership organization; dates of use; and/or filing basis; or to submit a substitute specimen, a foreign registration certificate, or proof of renewal of a foreign registration. If not checked, the changes will be ignored.”; (3) under “Specimen File,” attach a specimen (attachment may not exceed 5 megabytes); (4) describe in the box below where you attached the file what the specimen consists of; and (5) check the box next to the following statement below the specimen description (to ensure that the declaration language is inserted into the form): “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application” [for an application based on Section 1(a), Use in Commerce] OR “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use” [for an application based on Section 1(b) Intent-to-Use]. Additionally, when submitting a verified specimen, the TEAS online form requires two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

 

REQUIREMENT FOR ACCEPTABLE IDENTIFICATION OF GOODS

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO GOODS SPECIFIED THEREIN FOR CLASSES 10 AND 021

 

Applicant has satisfied the requirement regarding the duplicate entries in the identification. However, particular wording in the proposed amendment to the identification in Classes 010 and 021 are not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods as follows:

 

Class 010: Acupressure pillows; Cervical pillows for medical use; Electric massage apparatus for household use; Electric massage appliances, namely, electric vibrating massager; Infrared thermometers for medical purposes; Massage apparatus; Massage apparatus and instruments; Massage apparatus for eyes; Massage mitts; Massaging apparatus for personal use; Medical devices for treating sleep disorders; Medical devices, namely, pulse oximeters; Medical products, namely, therapeutic mattresses, beds, seats and cushions; Nebulizers for respiration therapy; Pregnancy girdles for medical purposes; Soporific pillows for insomnia; Sphygmomanometers; Sterile disposable oxygen humidifiers and nebulizers for respiratory therapy sold pre-filled with water; Stethoscopes and sphygmomanometers; Support belts for use during pregnancy for medical purposes; Medical products, namely, therapeutic mattresses, beds, seats and cushions

 

Class 021:  Bath brushes; Brush-making materials; Cleaning combs; Dental floss; Electric combs; Electric hot brushes; Electric tooth brushes; Electric toothbrush replacement heads; Hair brushes; Hot air hair brushes; Shaving brushes; Tongue brushes; Tooth brushes; Toothbrushes; Washing brushes; Electric tooth brushes

 

However, the proposed amendment identifies the following goods:

 

Class 010: Blood pressure monitors; Dental instruments, namely, oral irrigators.

 

Class 021: Combs

 

This portion of the proposed amendment is beyond the scope of the original identification.

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or International Class 010 in its entirety and “Combs” in International Class 021 to which the final requirements apply will be deleted from the application by Examiner’s Amendment.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

The application will then proceed with International Classes 005 and 020 in their entireties, as well for the following goods in Class 021: “Bath brushes; Brush-making materials; Cleaning combs; Dental floss; Electric combs; Electric hot brushes; Electric tooth brushes; Electric toothbrush replacement heads; Hair brushes; Hot air hair brushes; Shaving brushes; Tongue brushes; Tooth brushes; Toothbrushes; Washing brushes”

 

 Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

 

 

/Heather A. Sales/

Examining Attorney

Law Office 122

(571) 272-7835

Heather.Sales@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/1/2017 FOR U.S. APPLICATION SERIAL NO. 87284887

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 6/1/2017 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.