To: | BIOTRONIK SE & Co. KG (tm@sughrue.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88132818 - BIOENVELOPE - S3473063 |
Sent: | 1/8/2019 3:59:21 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88132818
MARK: BIOENVELOPE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: BIOTRONIK SE & Co. KG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 1/8/2019
INTRODUCTION
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S 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:
• REFUSAL – SECTION 2(e)(1) – MERELY DESCRIPTIVE
• REQUIREMENT – IDENTIFICATION OF GOODS
REFUSAL – SECTION 2(e)(1) – MERELY DESCRIPTIVE
The applied-for mark is “BIOENVELOPE” for “biomedical preparations; surgical biomaterials for implanting; medical products; medical products, namely, natural biomaterial encasement structures intended to cover electrical devices and implant the covered electrical devices in mammals” in Class 5 and “surgical products and materials; encasement structures for surgical use; surgical products, namely, natural biomaterial encasement structures intended to cover electrical devices and implant the covered electrical devices in mammals” in Class 10.
The attached evidence from Macmillan Dictionary and Acronym Finder defines the prefix “BIO” as being short for biology and meaning “relating to living things.” Macmillan Dictionary defines the word “ENVELOPE” as meaning “a thin case that contains something.” Applicant’s website states that the “BIOENVELOPE is made from biological material and intended to securely hold cardiovascular implantable electronic devices (CIEDs), such as pacemakers and defibrillators, creating a stabilized environment.” The attached article from “BusinessWire” states that “this is the only cardiac implantable electronic device (CIED) envelope available for use with S-ICDs.” The attached article from “CardiacVascularNews” states that the “material consists of a flexible bioscaffold that remodels in three to six months while encouraging the body to naturally regrow and restore functional, vascularized tissue” which will extend “the benefits of CIED envelopes to more patients and further customizing care.” This evidence describes the applied-for goods as “envelopes” and firmly relates there usage to living things.
This understanding of the meaning of the applied-for mark is confirmed by the listing of goods submitted with the application which includes “natural biomaterial encasement structures intended to cover electrical devices and implant the covered electrical devices in mammals.” Wikipedia states that “a biomaterial is any substance that has been engineered to interact with biological systems for a medical purpose.” A mark does not need to be merely descriptive of all the goods or services specified in an application. In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Franklin Cnty. Historical Soc'y, 104 USPQ2d 1085, 1089 (TTAB 2012). “A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [goods or] services for which registration is sought.’” In re The Chamber of Commerce of the U.S., 675 F.3d at 1300, 102 USPQ2d at 1219 (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1040, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
Based on the foregoing, the applied-for mark merely describes that the applicant’s goods are contained within thin cases made of material designed to relate to living things.
Advisory – Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
REQUIREMENT – IDENTIFICATION OF GOODS
Applicant must clarify some of the wording in the identification of goods and/or services because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear the exact nature of the goods and/or services. Applicant must amend the identification to specify the common commercial or generic name of the goods and/or services. 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. In addition, some of the goods appear to be misclassified.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the
changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services
which should be removed, it will be shown with a line through it such as this: strikethrough. Misclassified goods which have been moved to the appropriate class are
marked as: bold and underlined. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined or in ALL CAPS.
Applicant may substitute the following wording, if accurate:
Class 5: biomedical preparations, namely, ___ {indicate particular goods, e.g., biological tissue grafts, biological tissue cultures for medical purposes}; surgical biomaterials for implanting, namely, ___ {indicate particular goods, e.g., natural biomaterials for augmentation of bone and tissue for medical purposes, bone void fillers consisting of natural materials}; medical products, namely, ___ {indicate particular goods, e.g., products and preparations for cleansing the skin for medical use, bacterial preparations for medical use}; medical products, namely, natural biomaterial encasement structures intended to cover electrical devices and implant the covered electrical devices in mammals for ___ {indicate medical function of particular goods, e.g., the augmentation of bone and tissue for medical purposes}; surgical products, namely, natural biomaterial encasement structures intended to cover electrical devices and implant the covered electrical devices in mammals for ___ {indicate medical function of particular goods, e.g., use as surgical implants}
Class 10: surgical products and materials, namely, ___ {indicate particular goods, e.g., surgical implants comprising artificial material,
surgical mesh comprised primarily of artificial materials}; encasement structures for surgical use, namely, ___ {indicate particular goods, e.g., artificial
biomaterial encasement structures intended to cover electrical devices and implant the covered electrical devices in mammals for the augmentation of bone and tissue for medical
purposes}; surgical products, namely, natural biomaterial encasement structures intended to cover electrical devices and implant the covered electrical devices in
mammals
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
CONCLUSION
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. 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. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) 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.
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.
/Stefan M. Oehrlein/
Trademark Examining Attorney
Law Office 115
(571) 272-1308
stefan.oehrlein@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.