To: | Varian Medical Systems, Inc. (trademarkgroup@sideman.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87438439 - HALCYON - 5344-4 |
Sent: | 3/1/2018 3:05:41 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87438439
MARK: HALCYON
|
|
CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
|
APPLICANT: Varian Medical Systems, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 3/1/2018
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 87273846
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained:
IDENTIFICATION OF GOODS
The identification of goods is indefinite and must be clarified because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically in class 9 the term “delivering radiotherapy” does not clearly identify a function of computer software and the applicant must clarify what the software does. In class 10 the terms “medical apparatus and systems,” and “medical apparatuses, systems and processes” are indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems. See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).
Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Additionally, this wording should be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d).
Applicant may substitute the following wording, if accurate:
Class 9: Downloadable computer software for use in developing treatment plans, monitoring, controlling and simulating patient treatment, managing and transmitting patient data, information and radiographic images, delivering radiotherapy treatment information, and controlling medical apparatus
Class 10: Medical linear accelerators used in radiotherapy and computer software embedded therein for use in the field of radiotherapy, sold as a unit; Medical apparatus and systems for patient positioning in connection with radiotherapy treatment, patient imaging and diagnosis using scanning devices, and treatment simulation, comprised of (specify common commercial name for the apparatus and components of the systems, e.g. patient positioning pads for cushioning and support of body parts); medical apparatuses, systems and processes for locating and targeting volumes in a body, namely, (specify common commercial name); medical apparatuses, systems and processes for maintaining patient positioning between or among treatment, imaging, diagnostic and simulation systems, namely, (specify common commercial name for the apparatus and components of the systems, e.g. patient positioning pads for cushioning and support of body parts); Radiation beam collimation apparatus for conformal beam radiotherapy
RECITATION OF SERVICES
Applicant may substitute the following wording, if accurate:
Class 37: Consultation and technical support services namely, troubleshooting in the nature of repair of computer hardware used to maintain patient treatment information and develop plans of medical treatment; Consultation and technical support services namely, troubleshooting in the nature of repair of medical equipment
Class 42: Consultation and technical support services namely, troubleshooting in the nature of diagnosing computer hardware and software problems in the field of computer systems used to maintain patient treatment information and develop plans of medical treatment; consultation and technical support services namely, troubleshooting in the nature of diagnosing computer hardware and software problems in the fields of medical apparatus and medical systems; Cloud-based computer software for use in forming medical diagnoses, developing treatment plans, monitoring, controlling and simulating patient treatment, managing and transmitting patient data, information and radiographic images, delivering radiotherapy treatment information, and controlling medical apparatus
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.
The application identifies goods and/or services 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 and/or services 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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es). 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).
See 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.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
/Jennifer M. Martin/
Examining Attorney
Law Office 116
(571) 272-9193
Jennifer.Martin@uspto.gov
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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.