Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  November 12, 2019

 

This application was approved for publication on October 15, 2019. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP § 706.01.

 

The trademark examining attorney apologizes for any inconvenience this may cause applicant.

 

IDENTIFICATION OF GOODS AND/OR SERVICES AMENDMENT REQUIRED

 

Class 010: The wording "Protective clothing for medical and veterinary purposes" is indefinite and requires clarification for 2(d) purposes. Specifically, the nature of the clothing items is unclear and requires specification (e.g., are these protective surgical scrubs, protective examination gowns, etc.?). Please clarify.

 

Class 035: The wording “Online retail store services and store retail services featuring advisory, consultancy and information services connected to the sale of surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites” is indefinite as to “store retail services featuring advisory, consultancy and information services connected to the sale of surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites,” which does not clearly identify the “retail services” activity as required for definiteness. Without such indication, such wording may include a wide variety of services related to retailing (such as accounting, product supply, advertising, etc.). See TMEP §§1402.01, 1402.03. If accurate, such wording should be amended from “store retail services” to “retail store services.” Additionally, as written, it is unclear whether the wording “Online retail store services and store retail services featuring advisory, consultancy and information services connected to the sale of surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites” is intended to refer to “Online retail store services and store retail services IN THE FIELD OF surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites THAT ALSO FEATURE sales advisory, consultancy and information services connected to such goods as an ancillary component of the retail stores OR whether the stores feature information services, as opposed to goods. Please clarify the wording in the ID, so the nature of the services is clear. 

 

Applicant may substitute the following wording, if accurate: 

 

Class 010: Protective clothing for medical and veterinary purposes, namely, {specify e.g., protective surgical scrubs}; protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites; wearable waterproof protectors for limbs, casts and dressings

 

Class 035: Online retail store services and retail store services featuring advisory, consultancy and information services connected to the sale of surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites; advisory, consultancy and information services in the nature of providing business information connected to the sale of surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites

 

Applicant’s goods and/or services 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.  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 amended.  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.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not timely respond to this Office action, the following services will be deleted from the application: Online services featuring advisory, consultancy and information services connected to the sale of surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites.

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a). In such case, the application will then proceed with the following goods/services only: Class 010: Protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites; wearable waterproof protectors for limbs, casts and dressings

 

Class 035: Online retail store services featuring surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites; advisory, consultancy and information services in the nature of providing business information connected to the sale of surgical, medical, orthopaedic, orthotic, chiropody, foot care and veterinary apparatus and instruments, dressings, protectors for use in medical, veterinary, orthopaedic and wound care treatment to shield plasters, casts, dressings, catheters sites

 

 

 

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 nonfinal Office action  

 

 

/Collier L Johnson II/

Collier L Johnson II

Examining Attorney

Law Office 123

571-270-0878

collier.johnson@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 November 12, 2019 for

U.S. Trademark Application Serial No. 88161386

 

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. 

 

 

/Collier L Johnson II/

Collier L Johnson II

Examining Attorney

Law Office 123

571-270-0878

collier.johnson@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 November 12, 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.”