To: | SOUTHERN ANESTHESIA & SURGICAL, INC. (trademark@cll.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88235605 - ADVANCE PLUS - 31183.059 |
Sent: | 3/21/2019 11:40:57 AM |
Sent As: | ECOM102@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88235605
MARK: ADVANCE PLUS
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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: SOUTHERN ANESTHESIA & SURGICAL, INC.
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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: 3/21/2019
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.
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.
NO LIKELIHOOD OF CONFUSION
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).
Please see below for details.
REQUIREMENT AND ADVISORY
PARTIAL REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION OF GOODS
“The purpose of the identification of goods [and/or services] is to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial name for the goods [and/or services].” In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
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).
The applicant has applied to register the mark for:
IC 5: Dental anesthetics
IC 10: Dental apparatus and instruments, namely, dental handpieces, sutures, burrs, surgical blades, dental syringes, anesthesia extension sets, intravenous fluid administration sets, sterilization pouches and tubing, dental needles, artificial bone for implantation, intravenous pump sets; sterilization tubing and pouches; examination gloves; surgical gloves; and gauze
In addition, applicant is advised to delete or modify the virtually duplicate entry in the identification of goods and/or services in International Class 10 for “sterilization pouches and tubing”: a virtually identical entry for “sterilization tubing and pouches” is also included in the identification of goods. See generally TMEP §§1402.01, 1402.01(a). If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Finally, the goods identified as “gauze” are classified incorrectly. Applicant must amend the application to classify the goods in International Class 5. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).
Applicant may adopt the following wording, if accurate:
IC 5: Dental anesthetics; gauze
IC 10: Dental apparatus and instruments, namely, dental handpieces, sutures, burrs, surgical blades, dental syringes, anesthesia extension sets comprised of [specify, e.g., anesthesia machines, anesthesia masks, ventilators for use in patient care, etc.], intravenous fluid administration sets comprised of [specify, e.g., intravenous bags sold empty for intravenous therapy, medical apparatus for intravenous administration of fluids, namely, fluid warmers, etc.], disposable sterilization pouches and disposable tubing [clarify how the tubing is used to sterilize goods], dental needles, artificial bone for implantation, intravenous pump sets comprised of [specify, e.g., infusion pumps for delivering measured amounts of solutions into the bloodstream over time, for use in dental procedures]; [clarify “examination gloves”, e.g., dental examination gloves]; surgical gloves
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 respond to this Office action within the six-month period for response, the goods objected to above will be deleted from the application. The application will then proceed with the following goods only:
IC 5: Dental anesthetics; gauze
IC 10: Dental apparatus and instruments, namely, dental handpieces, sutures, burrs, surgical blades, dental syringes, dental needles, artificial bone for implantation; surgical gloves
See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
GENERAL RESPONSE GUIDELINES
Response guidelines. For this application to proceed further, 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.
In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee. See 37 C.F.R. §2.23(b)(1), (c).
/Nancy L. Clarke/
Examining Attorney
Law Office 102
Tel. (571) 272-9253
E-mail: nancy.clarke@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.