NOTE TO THE FILE
SERIAL NUMBER: 87980472
DATE: 02/06/2020
NAME: mribaudo
NOTE:
Searched:
Lexis/Nexis
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Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Kenny, Timothy M. <tim.kenny@nortonrosefulbright.com>
Sent: Tuesday, February 4, 2020 5:58 PM
To: Ribaudo, Michelle <Michelle.Ribaudo@USPTO.GOV>
Cc: NRFUS MPLS Brands Team 01 <mplsbrandsteam01@nortonrosefulbright.com>
Subject: RESPONSE TO EXAMINER'S REQUEST - RE: Trademark Application Serial No. 87980472 DEALMED
Importance: High
Ms. Ribaudo,
Thank you for your email. Our client, Dealmed Medical Supplies, LLC, accepts your proposed amendments to the goods and services descriptions and appreciates the refund for Class 9. Please let us know if you need anything else from us for the application to proceed to publication. Have a great day.
Best,
Tim
Timothy M. Kenny
Partner | Head of IP Brands, United States | Partner-in-Charge, Minneapolis Office
Norton Rose Fulbright US LLP
RBC Plaza, 60 South Sixth Street, Suite 3100, Minneapolis, Minnesota 55402, United States
Tel +1 612 321 2805 | Fax +1 612 321 2288
tim.kenny@nortonrosefulbright.com
NORTON ROSE FULBRIGHT
Law around the world
nortonrosefulbright.com
From: Ribaudo, Michelle [mailto:Michelle.Ribaudo@USPTO.GOV]
Sent: Friday, January 31, 2020 3:09 PM
To: MNIPDOCKET <mnipdocket@nortonrosefulbright.com>; NRFUS MPLS Brands Team 01 <mplsbrandsteam01@nortonrosefulbright.com>
Subject: Trademark Application Serial No. 87980472 DEALMED
Importance: High
Mr. Kenny,
I am the examining attorney assigned to trademark application Serial No. 87980472 DEALMED. I received your December 30, 2019 Request for Reconsideration.
Upon further review, it appears that the laboratory supplies and equipment in Class 9 are outside the scope of the original identification of goods for “surgical and medical apparatus, instruments, supplies and consumables”, and must be removed from the application. Several of the goods listed in Class 9 can be added to Class 10, as highlighted in red below. As applicant added this class based on the Office’s suggestion, we can refund the amount for Class 9.
In addition, the wording “medical furniture” is featured in Class 5, but the appropriate class is Class 10, where these goods are already featured, thus it must be removed from Class 5. Further, the following amendments are required prior to moving the application forward, with suggested wording in bold:
International Class 5: Wound dressing and island wound dressing; infection control supplies, namely, alcohol and bleach based disinfectants including disinfectant wipes and high level disinfectants; Glutaraldehyde-based products, namely, peroxide for medical purposes, and preparation pads impregnated with alcohol for medical purposes; medical diagnostic test strips for strep throat analysis, pregnancy analysis, influenza analysis, and urine analysis; emergency medical supplies, namely, gauze;
medical furniture,exam room accessories, namely, gauze, wound dressing, island wound dressing; medical surgery supplies, namely, gauze, surgical bandages, wound dressing, and island wound dressing; first-aid supply kit comprised of gauze, bandages, hydrogen peroxide, isopropyl alcohol, wound dressing, island wound dressing, medical gloves, and medical ice packs
International Class 10: Surgical and medical apparatus, instruments, supplies and consumables, namely, procedure trays for surgical instruments; surgical packs, namely, medical ice and heat packs; custom surgical kits comprised of medical gowns and surgical sterile drape sheets; skin closure suture materials, namely, surgical adhesives and glues including nylon sutures, polypropylene sutures, suture and laceration medical kits comprised of scissors, forceps, and gauze sponges; sutures; surgical preparation supplies, namely, face masks, gowns, gloves, scalpels, scissors; emergency medical supplies, namely, resuscitators, backboards, nebulizers, gloves, face masks, bandages, gloves, stretchers; intravenous supplies, namely, catheters, tubing, intravenous administration and extension sets, namely, fluid warmers, medical syringes, starter kits comprised of tourniquets, gauze; orthopedic supplies, namely, splints and plaster casts for medical purposes; medical furniture, medical exam room accessories, namely, electronic blood pressure mounts, carts, trays for surgical instruments, specimen cup holders, tongue depressors, gowns, medical drapes of non-woven textile materials, medical pillowcases and pads for use with examination tables, support bandages, gloves, and organizers for medical and surgical suites specifically adapted for holding medical instruments; medical respiratory supplies, namely, oxygen masks, nasal cannulas, aerosol masks, endotracheal tubes; medical equipment, namely, electrocardiographic (ECG) recorders and electrocardiographic (ECG) digital plasters sold as a unit, medical apparatus for monitoring vital signs of patients, patient examination tables, light emitting diode (LED) apparatus for lighting, incorporated into medical instruments, and spirometers; medical instruments, namely, scalpels, scissors, and forceps; medical surgery supplies, namely, operating room abdominal towels, medical pain procedure kits consisting of oral extension tubes, sample preparation device for medical diagnostic uses, iodine packets, plastic syringes, drapes and sterile needles, surgical lap sponges, surgical staple and suture removal kits consisting of sterile stainless-steel suture removal device and gauze sponges, gloves; dropping pipettes for medical purposes; clothing especially for operating rooms
Please let me know if you are in agreement with the removal of Class 9, and the red and bolded amendments above, and I will amend the application via an Examiner’s Amendment. I must receive a response within three business days, or a formal Office Action will be issued. Thank you.
Sincerely,
Michelle Ribaudo, Esq.
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 126
(571) 270-3962
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