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: 4/23/2019

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Prior-Pending Application Advisory
• Fee Requirement
• Identification Requirement

 

PRIOR-PENDING APPLICATION ADVISORY

 

The filing date of pending U.S. Application Serial No. 88124158 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

FEE REQUIREMENT

 

The application identifies goods and services that are classified in at least 8 classes; however, applicant submitted a fee sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

IDENTIFICATION REQUIREMENT

 

The wording “computer hardware and software for medical imaging apparatus; computer hardware and software for use in orthopedics” in the identification of goods is indefinite and must be clarified because applicant must specify what the function of the software is. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “surgical apparatus and instruments, and parts and fittings therefor” in the identification of goods is indefinite and must be clarified because applicant must specify either that the parts and fittings are replacement parts and fittings therefor, or the specific parts and fittings. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “surgical and medical apparatus and instruments for use in orthopedics, and parts and fittings therefor” in the identification of goods is indefinite and must be clarified because applicant must specify what the apparatus and instruments are and what the parts and fittings are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “medical and surgical supply kits comprised of equipment and apparatus for use in orthopedics and imaging preparations and compositions” in the identification of goods is indefinite and must be clarified because applicant must specify what the kit comprises, which will control classification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant is advised that the primary component of the kits will determine classification; in the event that no component is dominant, the first goods listed in the classification will determine classification.

 

The wording “medical publications, namely, hand-outs, workbooks, manuals, brochures, journal articles” in the identification of goods is indefinite and must be clarified because applicant must specify what the field of the publications are, and that these are printed publications.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “maintenance, service and repair of medical and surgical equipment, and parts and fittings therefor” in the identification of services is indefinite and must be clarified because applicant must specify what service means.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “telecommunications, namely, transmission and storage of digital information, data and images relating to healthcare for use by patients and healthcare providers” in the identification of services for International Class 38 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “telecommunications, namely, electronic transmission of digital information, data and images relating to healthcare for use by patients and healthcare providers” in Class 38 and “electronic data storage of digital information, data and images relating to healthcare for use by patients and healthcare providers” in Class 42.

 

The wording “computer services for remote data management of medical and surgical equipment, namely, services for collecting and storing data about medical and surgical system performance, and monitoring system performance” in the identification of services is indefinite and must be clarified because applicant must specify that the data collection and management are for electronic data.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Applicant may substitute the following wording, if accurate:

 

Class 9: computer hardware and operating software for medical imaging apparatus; computer hardware and software for use in orthopedics for {specify function, e.g. analyzing bone density}; computer hardware and software for use with medical patient monitoring equipment, for receiving, processing, transmitting and displaying patient data; medical workstations comprised of computer hardware and software for gathering and transmitting patient data for surgical and medical use

 

Class 10: surgical apparatus and instruments, and replacement parts and fittings therefor; surgical and medical apparatus and instruments for use in orthopedics , namely, surgical apparatus and instruments for use in orthopedic surgery , and replacement parts and fittings therefor; medical workstations comprised of surgical devices, instruments, computer hardware and software for gathering and transmitting patient data for surgical and medical use; medical and surgical supply kits comprised of equipment and apparatus for use in orthopedics, namely, orthopedic braces and imaging preparations and compositions being imaging agents for magnetic resonance imaging (MRI)

 

Class 16:  printed medical publications, namely, hand-outs, workbooks, manuals, brochures, journal articles in the field of orthopedics

 

Class 37:  maintenance, service being power washing and repair of medical and surgical equipment, and parts and fittings therefor

 

Class 38:  telecommunications, namely, electronic transmission of digital information, data and images relating to healthcare for use by patients and healthcare providers

 

Class 42:  electronic data storage of digital information, data and images relating to healthcare for use by patients and healthcare providers; medical and scientific research; compiling scientific data for medical and scientific research purposes in the field of medical science; providing medical and scientific research information in the fields of orthopedics and medical imaging; design and development of medical and surgical equipment; remote monitoring services for medical and surgical equipment; management of medical image data, namely, electronic data storage and data conversion of electronic information; computer services for remote data management of medical and surgical equipment, namely, services for collecting and storing electronic data about medical and surgical system performance, and monitoring system performance; providing technical support services for medical and surgical equipment, namely, operating and troubleshooting in the nature of diagnosing problems with medical and surgical equipment; providing computer software technical support services in the field of medical and surgical equipment, namely, operating and troubleshooting in the nature of diagnosing software problems with medical and surgical equipment

 

Class 44:  providing a database in the fields of orthopedics and medical imaging for treatment and diagnostic purposes

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and services may not later be reinserted.  See 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.

 

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 requirements 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. 

 

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 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.  

 

 

 

/Teague Avent/

Teague Avent

Trademark Examining Attorney

Law Office 125

(571) 272-1219

teague.avent@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/23/2019 FOR U.S. APPLICATION SERIAL NO. 88291519

 

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 4/23/2019 (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.