UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 3/5/2019

 

 

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.

 

SUMMARY OF ISSUES:

• Identification Of Goods And Services Amendment Required
• Clarification Of The Number Of Classes For Which Registration Is Sought Required
• Multiple-Class Application Requirements Advisory
• Explanation Of Mark’s Significance Required

 

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).

 

 

IDENTIFICATION OF GOODS AND/OR SERVICES AMENDMENT REQUIRED

 

The identification of goods and services is indefinite and must be clarified as indicated in bold below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, the wording “Pharmaceuticals, medical and veterinary preparations” fails to identify the nature of the preparations with the required specificity in Class 5.

 

The wording in the identification of goods and services for must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, the wording “consultancy and information services relating to medical products” could encompass business consulting in Class 35 and pharmaceutical advice in Class 44.

 

Lastly, applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.    generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

Therefore, the applicant may adopt the following identification of goods and/or services, if accurate:

 

Class 5

Pharmaceuticals, medical and veterinary preparations, namely, pain relief medication {applicant must specify the disease or condition treated or diagnosed needs to be indicated to meet the specificity standard in Class 5}; sanitary preparations for medical purposes; cancer treatment agent; pharmaceutical drug for cancer treatment; diagnostic agent used for cancer; pharmaceutical preparations for the treatment and prevention of autoimmunological, bacterial, cardiovascular, central and peripheral nervous system, diabetic, endocrine, haematological, hormonal, gastrointestinal, gout, immunological, infectious, inflammation and inflammatory, musculoskeletal, neurological, oncological, pain, respiratory, urological and viral diseases and disorders; vaccines; medical preparations for the treatment of {specify disease or malady being treated, e.g., kidney disease, cancer, psychiatric disorders}; diagnostic preparations for medical purposes; diagnostic testing materials for medical use, namely, {specify nature of testing materials and purpose(s), e.g., diagnostic reagents and assays for testing of body fluids, testing strips for use in wound dressing and therapy}; dietetic preparations {applicant must specify the nature of the preparations} beverages and foods adapted for medical use; dietetic food and substances {applicant must specify the nature of the preparations} beverages adapted for medical or veterinary use; food for babies; dietary supplements for humans and animals; plasters, materials {applicant must specify the nature of the materials} pledgets, bandages and wadding  for medical dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides

 

Class 10

Surgical, medical, dental and veterinary devices, apparatus and instruments, namely, {identify devices, apparatus and instruments by their common commercial names, e.g., scalpels, lancing devices, dental implants}; medical equipment, namely, {specify type(s) of equipment, e.g., computed tomography apparatus, intubation equipment, endoscopic equipment}; medical therapy instruments, namely, {specify instruments and/or their specific purpose}; physical therapy equipment, namely, {specify equipment and/or their specific purpose}; artificial limbs, eyes and teeth; orthopaedic articles, namely, {specify goods in Class 10 e.g. footwear, insoles, belts}; suture materials; therapeutic and assistive devices adapted for the disabled, namely, {specify instruments and/or their specific purpose e.g. a force and motion sensing apparatus and assisted exercise machine for the rehabilitation of [indicate body part being rehabilitated -hands and wrists, feet and ankles, knees] affected by neuromuscular diseases, disorders, or injuries for home or clinical use, assistive listening device for the hearing impaired}; massage apparatus; apparatus, devices and articles for nursing infants, namely, {specify goods in Class 10 e.g. nursing bottles}; sexual activity apparatus, devices and articles, namely, {specify goods in Class 10 e.g. adult sexual stimulation aids and a workbook, artificial penises, penis enlargers, vibrators, benwa balls, artificial vaginas}

 

Class 35:         Business consultation regarding launching of new medical products; providing consumer product information relating to medical products

 

Class 41

Educational services, providing training {indicate form of educational activity, e.g., classes, seminars, workshops} in the fields of {indicate subject matter or fields of educational activity e.g. medicine, pharmaceuticals and health care}; Teaching and training services, namely, courses, classes, lessons and seminars in the field of medicines, pharmaceuticals and health care; Arranging, conducting and organization of educational congresses, conferences, conventions and symposiums in the field of medicines, pharmaceuticals and health care {applicant must specify the nature of the services in Class 41 because it can include services in Class 35 if the conferences, conventions etc. are for business purposes and class 41 if the conferences, conventions etc. are for educational purposes}; Educational training services, namely, courses, classes, lessons and seminars in the fields of pharmaceutical and diagnostic drugs; Arranging and conducting educational congresses in the fields of pharmaceutical and diagnostic drugs

 

Class 42

Examination or research on medical treatment methods and techniques; provision of medical and scientific research  information on clinical trials and related information; research and development in the field of immunology; Pharmaceutical research in the nature of testing, examination or research on pharmaceuticals; medical and pharmacological research services and clinical trials; research, development, and technical consultation related thereto in the field of medicine; providing medical and scientific research information in the field of pharmaceuticals; pharmaceutical drug development services; medical laboratories; design and development of medical technology; design and development of computer software for use with medical technology

 

Class 44

Medical services; Medical information; Providing a website featuring medical information; Medical testing for diagnostic or treatment purposes; Medical treatment services for the treatment of {indicate condition or disease, e.g., speech disorders, breast cancer, infertility, etc.}; Medical care services; Medical analysis services relating to the treatment of persons provided by a medical laboratory; Medical services in the field of oncology; Medical consultation; Medical advisory services; Compilation of medical reports in the nature of medical diagnostic testing, monitoring and reporting services{applicant must specify the nature of the services in Class 44 because it can include services in Class 35 if the collection and compilation of information into computer databases are for business purposes regardless of the subject matter and class 44 if the services have a medical diagnostic purpose}; Issuing of medical reports{applicant must specify the nature of the services in Class 44 e.g. Medical information services, namely, reporting of consumer authorized clinical testing results directly to the patient}; Medical and healthcare clinics; Medical assistance; Healthcare services, namely, {specify the type of health care services provided, e.g., geriatric health care, physical therapy, etc.}; Rental of medical machines and apparatus; Consultancy and information services relating to medical products in the nature of pharmaceutical advice {applicant must specify the nature of the services in Class 44}; Pharmacy advice and preparation of prescriptions by pharmacists; Health center services, hospital services and health counseling

 

 

Applicant should note that the bolded language above is to indicate the examining attorney's suggestions, and the braces indicate where applicant must insert specific types of goods/services.  The amended identification should only include the specific goods/services indicated, as inserted by applicant, it should not include the braces or instructional language.  Applicant need not amend its identification other than where specified by bold font.

 

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.

 

 

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIRED

 

The applicant has identified goods and/or services that could be classified in at least 6 classes.  However, the applicant submitted a fee sufficient for only 5 classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 5 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must explain whether the wording in the mark RAKUTEN and/or ASPYRIAN has any significance in applicant’s specific field or trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

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.  

 

/Karen S. Derby/

Karen S. Derby

Examining Attorney

U.S. Patent and Trademark Office

Law Office 123

Karen.Derby@uspto.gov

571.270.7070

 

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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/5/2019 FOR U.S. APPLICATION SERIAL NO. 88206682

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/5/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.