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:  May 06, 2020

 

This Office action is in response to applicant’s communication filed on April 8, 2020.

 

In a previous Office action dated October 9, 2019, applicant was required to satisfy the following requirements: amend the identification of goods and/or services, disclaim descriptive wording in the mark, and submit additional information about the goods.  In addition, applicant was required to respond to fact that the U.S. application’s identification exceeded the scope of the identification in the foreign registration.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: definite amended identification provided, additional information about the goods provided, identification sufficiently amended to address the fact that the U.S. application’s identification exceeded the scope of the identification in the foreign registration.  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:

• Requirement - Disclaimer

 

REQUIREMENT – DISCLAIMER

 

In the previous Office action, applicant was required to disclaim the wording “PRECISION BIODEVCES” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).  All evidence and arguments asserted in the previous Office action are incorporated herein by reference.  Response options for satisfying this requirement, if any, were set forth in the previous Office action but applicant’s filing did not include a response to this issue.  Accordingly, for the reasons set forth previously and below, the requirement to disclaim the wording “PRECISION BIODEVICES” in the mark is now made FINAL.  See 15 U.S.C. §§1052(e)(1), 1056(a); TMEP §§1213, 1213.03(a).

 

Applicant must disclaim the wording “PRECISION BIODEVICES” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The wording “PRECISON” means the level of agreement of a particular measurement with itself when it is repeated; the quality of being exact, the wording “BIO” refers to biological which mean of or relating to the field of science concerned with the study of living things, and the wording “DEVICES” means objects or machines that have been invented for a particular purpose. See http://dictionary.cambridge.org/us/dictionary/english/precision; http://www.collinsdictionary.com/us/dictionary/english/bio_2; http://www.collinsdictionary.com/us/dictionary/english/biological; http://www.collinsdictionary.com/us/dictionary/english/biology; http://dictionary.cambridge.org/us/dictionary/english/device.  In its identification, applicant indicates that its goods and services are various devices for medical, laboratory and diagnostic purposes, manufacturing, engineering, assembly and prototype fabrication of scientific and medical devices purposes, and supply chain management services.  Additionally, applicant’s website indicates that it is a “world leader in precision injection molding” which is a process that requires precision to minimize any variation during injection molding. See http://microfluidics.technicolor.com/; http://www.mprplastics.com/specialty-applications/ultra-precision-injection-molding/.  Applicant’s website also indicates that its design, manufacturing and prototyping goods and services include specific design elements, namely, “... precision through holes/vias” and that applicant “[unites] biomedical expertise with world-class precision manufacturing and innovation.”  See http://microfluidics.technicolor.com/.  The term “biomedical” means of, relating to, or involving biological, medical and physical science.  See http://www.merriam-webster.com/dictionary/biomedical.  Moreover, in its Response to Office action, applicant provides statements for the record indicating that the goods are in the nature of biomedical devices and are intended for use with biological materials, in medical and life science, or biological, research, and provide accuracy in analysis.  See Response to Office Action pg. #4.  Finally, applicant should note the following evidence from members of the relevant biomedical industry showing common use of the term “BIODEVICES” to refer to biomedical devices, or objects of machines that relate to biological, medical and/or physical science for use for particular research or medical purposes, touted for their accuracy:

 

• http://www.embrexbiodevices.com/Poultry-BioDevices/ (Offering various “Poultry BIODEVICES” for in ovo vaccine delivery and human vaccine production and thus machines that relate to biological and medical science, including the “Chick Counter BIODEVICE”, “Invoject System”, and “Embrex BIODEVICE”; also providing that “BIODEVICES have changed the way we look at operation accuracy”);

 

•  http://www.sciencedirect.com/topics/engineering/biodevices (Various scientific excerpts describing “BIODEVICES” as “instruments” for use in biomedical applications and as “devices that are specifically designed for medical or biological applications”);

 

• http://news.psu.edu/story/608204/2020/02/13/academics/engineering-professor-named-director-penn-state-center-biodevices (Providing that the focus for the Penn State Center for BIODEVICES” will be to “advance research related to biodevices,” such as surgical devices, i.e., objects that relate to biological, medical and physical science).

 

This evidence establishes that the average purchaser would understand the term “BIODEVICES” to refer to objects or machines that relate to biological, medical and/or physical science.  Thus, the wording “PRECISION” merely describes applicant’s goods and/or services because applicant’s goods and services are intended to provide accurate analysis or exact analysis, exact manufacturing, and are for use in or otherwise relate to the process of precision injection molding, namely, a process that features minimized variation and/or exact level of agreement.  The wording “BIODEVICES” merely describes applicant’s goods and services because applicant’s goods are in the nature of biomedical devices, or objects or machines that relate to biological science invented for scientific research-related purposes, and applicant’s manufacturing, consulting, engineering and design services feature, are intended for, or otherwise relate to objects or machines that relate to biological science invented for scientific research-related purposes.

 

Accordingly, the wording “PRECISION BIODEVICES” is merely descriptive of applicant’s goods and services and must be disclaimed.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PRECISION BIODEVICES” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

ADVISORY – OPTION TO DELETE FILING BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely on the foreign registration under Section 44(e) as the sole basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

PROPER RESPONSE TO FINAL ACTION

 

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 request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

Rhoda Nkojo

/Rhoda Nkojo/

Examining Attorney

Law Office 117

(571) 272-8468

Rhoda.Nkojo@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 May 06, 2020 for

U.S. Trademark Application Serial No. 88194474

 

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. 

 

 

Nkojo, Rhoda

Examining Attorney

Law Office 117

(571) 272-8468

Rhoda.Nkojo@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 May 06, 2020, 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.”