Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  July 10, 2019

 

 

INTRODUCTION

 

Applicant is encouraged to call or email the assigned attorney below to resolve the issues in this Office action.

 

This Office action is in response to applicant’s communication filed on June 3, 2019.

 

In a previous Priority action dated December 3, 2018, the trademark examining attorney required the following requirements:  Amend the identification of goods and/or services and meet the multiple-class application requirements; Provide a translation statement.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Translation statement provided.  See TMEP §§713.02, 714.04. 

 

Additionally, the following requirement has been withdrawn:  Multiple-class application requirements.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of Goods – Clarification Requirement

 

IDENTIFICATION OF GOODS – CLARIFICATION REQUIREMENT

 

The wording “rodent platforms,” “illuminating laboratory lamps,” “pattern stimulators,” “monitors,” “control units,” “desktop and operating room mounting arms,” “connectors,” and “equipment carrying cases” in the identification of goods is indefinite and must be clarified because the nature of these goods is unclear.  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.

 

Additionally, to ensure proper classification, the wording “carts and stands for use in clinical drug trials” in International Class 9 must be amended to specify what type of Class 9 products these goods are designed to hold.  For example, applicant may specify that these are operating microscope stands, stands specially adapted for laptops, or wheeled carts specially adapted for visual electrophysiology laboratory equipment.  Alternatively, applicant may specify that these goods are all sold as a unit with the other Class 9 goods specified in that particular clause. 

 

Suggested Amendment

 

Applicant may substitute the following wording, if accurate (suggestions in bold): 

 

International Class 9:            

 

Laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components and peripherals in the nature of rodent platforms in the nature of platforms for stabilizing rodents during electroretinography testing, illuminating laboratory lamps, electrodes, pattern stimulators in the nature of {specify common name and/or purpose}, amplifiers, computers and infrared cameras, and software for interpreting, storing and exporting data all sold as a unit; software for use with visual electrophysiology equipment, for interpreting, storing and exporting data sold as an integral component of laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes; software for use with visual electrophysiology equipment, for interpretation of data related to diagnosing ophthalmic conditions, vision research, drug trials and evaluation of retinal function; software for use with visual electrophysiology equipment, for interpretation of data related to rodent electroretinography testing for research purposes; visual electrophysiology equipment in the nature of apparatus for testing vision, computers, cameras, computer monitors, pattern stimulators in the nature of {specify common name and/or purpose}, amplifiers, Ganzfeld stimulators and Ganzfeld domes for vision research; visual electrophysiology equipment in the nature of apparatus for testing vision, Ganzfeld stimulators, Ganzfeld domes, computer monitors, amplifiers, control units for regulating {specify what is being controlled}, wheeled carts and stands for use in clinical drug trials {include additional wording to clarify proper classification in Class 9, e.g., specially adapted for  visual electrophysiology laboratory equipment, OR, specify that these goods are “all sold as a unit”}; laboratory apparatus and equipment, namely, visual electrophysiology equipment for rodent electroretinography testing for research purposes, and components and peripherals in the nature of rodent platforms in the nature of platforms for stabilizing rodents during electroretinography testing, illuminating laboratory lamps, electrodes, pattern stimulators in the nature of {specify common name and/or purpose}, amplifiers, computers and infrared cameras

 

International Class 10:

 

medical apparatus and equipment, namely, visual electrophysiology equipment for use in diagnosing ophthalmic conditions and evaluation of retinal function, and components and peripherals in the nature of computers, cameras, pattern stimulators in the nature of {specify common name and/or purpose}, Ganzfeld stimulators, Ganzfeld domes, desktop and operating room mounting arms for {specify what is being mounted, e.g., computer monitors}, amplifiers, cables, electrical connectors, computer monitors, conductive gels and pastes, light filters, control units for regulating {specify what is being controlled} and equipment carrying cases for carrying {specify Class 10 equipment being carried},, and software for interpreting, storing and exporting data all sold as a unit; software for interpreting, storing and exporting data sold as an integral component of medical apparatus and equipment, namely, visual electrophysiology equipment for use in diagnosing ophthalmic conditions and evaluation of retinal function

 

Amendment Guidelines

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  See 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.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  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 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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB).

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

Phone: (571) 272-5579

young.wolfe@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 10, 2019 for

U.S. Trademark Application Serial No. 88059226

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

Phone: (571) 272-5579

young.wolfe@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from July 10, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”