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: 6/17/2017

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Search of the Trademark Office Database of Marks

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).

 

Summary of Issues to Which Applicant Must Respond (and Advisories):

·         Identification of Goods Requires Amendment

·         Multiple Class Requirements (Advisory)

 

 

Identification of Goods Requires Amendment

 

The present identification of goods is indefinite and/or overly broad and must be amended.  See TMEP §1402.01 et. seq.  Below, the examining attorney presents suggested language for the applicant’s consideration.

 

Specific Issues to be Addressed

 

“Radiological apparatus for industrial purposes” and “Computed tomography (CT) instrument for industrial use” must be amended because the listings are indefinite and may include goods in multiple classes.  The applicant has not specified the “industry” in which its goods are used, and while all “radiological apparati” and CT scanners used in the medical industry are classified in Class 10, if the applicant’s goods are not intended for use in the medical industry, the applicant must so note and must also specify the common commercial or generic name for its “radiological apparatus” (e.g. ultrasound flaw detectors not for medical purposes, port security x-ray scanners for scanning shipping containers, etc.).  In the case of the applicant’s computer tomography, the applicant must also clarify the nature of the “instrument,” and may substitute the word “scanner,” if accurate.  See TMEP §1402.01.

 

The wording “apparatus and installations for the production of X-rays not for medical purposes” is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Wording such as “apparatus” and “installations” must generally be followed by “namely” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).  If the goods have no common commercial or generic name, the applicant must describe the product, its main purpose, and its intended uses.  See id. 

 

“Material testing instruments and machines” is indefinite because the nature and purpose of the goods are unclear from the present listing.  The applicant must specify the nature of the materials being tested (e.g. textile, plastics, concrete, lumber, asphalt, etc.).  In the case of “metal,” the applicant must also specify what aspect of the metal is being tested (e.g. “metal strength,” “metal hardness,” “metal compression,” etc.).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The nature and purpose of the applicant’s “testing apparatus not for medical purposes” is unclear, and the identification is therefore indefinite and must be amended.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  As noted above, where an applicant identifies an “apparatus,” this wording is generally not specific enough to identify goods with particularity.  In this case, the applicant must specify either the common commercial name for its testing goods, or provide an explanation of the nature and purpose of the goods.  Below, the examining attorney includes several possibilities which the applicant may use as a guide for further defining its goods.

 

The listing “computer software for image process and display” is indefinite and must be amended.  Identifications for software in International Class 9 must specify the features or function of the software such that the purpose is clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(d).  If the software is content- or field-specific, applicant must also specify its content or field of use.  See TMEP §1402.03(d).  The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).   In this case, while the Trademark Office permits recognizes “image processing” as an acceptable software function, “software for image . . . display” is too vague as most software is capable of outputting data onto some kind of display.  If the applicant’s software is specially adapted to display particular data onto certain kinds of machines, the applicant must so specify.

 

The wording “mesh nebulizer” in the identification is indefinite; the applicant must specify the field of use or the specific purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The identification of “inhalers” is indefinite and overly broad and must be amended.  “Inhalers” are classified differently depending on whether they are sold filled or empty, and further by their primary purpose or use.  Inhalers sold pre-filled with non-pharmaceutical preparations are classified appropriately in Class 3, while those sold pre-filled with pharmaceutical preparations are classified in Class 5.  In either case, the applicant must further specify the nature of the preparations.  If sold empty, “inhalers” are classified in Class 10, if specially adapted for a medical purpose, or otherwise in Class 21.  Below, the examining attorney suggests various entries to further clarify the nature and purpose of the goods.

 

“Image process and display instrument for medical use” is unacceptably ambiguous and indefinite, and may include goods in multiple classes; more specificity it required.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  The present identification broadly encompasses both devices for medical image processing, and devices for displaying medical information.  The former includes “medical image processors” in Class 10, while the latter includes “electronic apparatus being stand alone displays for medical images” in Class 9.  If the primary use of the applicant’s “instrument” is use in direct association with a medical imaging apparatus, the applicant may classify the goods in Class 10 by clarifying this association, as demonstrated in the suggestions below.

 

Suggested Identifications

 

The applicant may adopt the following, if accurate, filling in more information where indicated:

 

• International Class 3:  Inhalers sold filled with essential oils, not for medical or therapeutic use
• International Class 5:  Inhalers filled with {indicate specific pharmaceutical preparations, e.g., pharmaceutical preparations for the treatment of respiratory diseases and disorders}
• International Class 9:  X-ray apparatus not for medical purposes; X-ray tubes not for medical purposes; Radiological apparatus for industrial purposes, namely, {specify common commercial name and indicate particular purpose (or indicate “not for medical purposes”), e.g., ultrasound flaw detectors not for medical purposes, port security x-ray scanners for scanning shipping containers, etc.}; Apparatus and installations for the production of X-rays, namely, {specify common commercial name for goods, e.g., X-ray full body security scanners} not for medical purposes; {Specify type of “material” being tested, and if metal, the quality being tested, e.g., Asphalt, Plastic, Concrete, Metal hardness, Metal compression, Textile, etc.} testing instruments and machines; Testing apparatus not for medical purposes, namely, {specify common commercial name for goods or provide the nature and purpose of the goods, e.g., pulse generators for testing electric current, device for testing the function and effectiveness of smoke detectors, ultrasound inspection devices for non-destructive testing, crash test dummies, etc.}; Computed tomography (CT) scanners not for medical use; Computer software for image process and display, namely, {clarify the features of the software, and if field-specific, the field of use, e.g., medical software for processing and displaying radiologic images of the human body on medical imaging machines}; Image display instruments for medical use, namely, stand alone displays for medical images
• International Class 10:  Apparatus and installations for the production of X-rays for medical purposes; Tomographs for medical purposes; Micro computed tomography (CT) scanning instrument for medical use; X-ray tubes for medical purposes; Mesh nebulizer for {specify purpose or field of use with particularity, e.g., respiration therapy}; Aerosol dispensers for medical purposes; Inhalers, namely, {specify purpose/use in Class 10, e.g., oxygen inhalers, medical apparatus for facilitating inhalation of pharmaceutical preparations, etc.}; Radiological apparatus for medical purposes; Medical image processors; Computer image displays and image processors being devices used in direct association with medical radiological apparatus during diagnosis and treatment; Computed tomography (CT) scanners for medical industry use
• International Class 21:  Inhalers, sold empty, not for medical or therapeutic use

 

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.  Alternatively, the applicant may delete any of the goods listed in the present identification.

 

Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

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.

 

If the applicant adopts the examining attorney’s suggested identification, the following advisory applies.

 

Multiple Class Requirements (Advisory)

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).  The application identifies goods that are classified in at least 5 classes; however, applicant submitted a fee sufficient for only 2 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

 

Response Guidelines

 

For this application to proceed toward registration, the applicant must explicitly address each refusal and requirement raised in this Office action.  The applicant may provide arguments and/or evidence as to why any refusal should be withdrawn.  To respond to requirements, the applicant should set forth in writing the required changes or statements.  If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney and refer to the serial number of the application.  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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  However, although the trademark examining attorney may provide additional explanation pertaining to the refusal 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.

 

Notice for Attorneys: Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). 

 

The only attorneys who may practice before the USPTO in trademark matters are as follows:

 

(1)        Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories; and

 

(2)        Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.  In any response filed on behalf of the applicant, the attorney must indicate his/her full name and indicate of which bar he/she is a member.

 

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 and/or services.  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.  

 

 

 

/David C. Mayer/

Examining Attorney

Law Office 121

david.mayer@uspto.gov

(571) 270-3773

 

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 6/17/2017 FOR U.S. APPLICATION SERIAL NO. 87385181

 

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 6/17/2017 (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.