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: 4/24/2019

 

 

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:

·        Search of Office’s Database of Marks – No Conflicting Marks

• Identification and Classification of Goods Requirement
• English Translation 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 AND CLASSIFICATION OF GOODS

 

Applicant must clarify some of the wording in the identification of goods because it is indefinite or overbroad.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03.

 

Further, some of the goods are classified incorrectly.  Applicant must amend the application to classify the goods as described below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The applicant insufficiently describes the following goods in Class 1:

• The wording “protein raw material” is indefinite because it does not specify the purpose of the goods as for scientific and medical research, for instance.
• The wording “protein products, namely, cosmetics, medical devices, fibers, and textiles” is indefinite because it is unclear if the goods are the finished products or protein for their manufacture.
• The wording “adhesives for surgical applications” is indefinite and possibly misclassified as medical adhesives are in Class 5 while adhesives for manufacturing surgical bandages are in Class 1.
• The wording “medical adhesives for binding wounds, medical adhesives for binding internal tissue” is misclassified and should appear in Class 5.
• The wording “adhesives for cosmetic use, adhesives for medical devices, adhesives for cosmetic purposes” is misclassified and should appear in Class 3.

 

The applicant insufficiently describes the following goods in Class 3:

• The wording “hand soap, liquid soap” and “industrial soap” is indefinite because it does not clarify that it is non-medicated soap as required in Class 3.
• The wording “medicated soap” is misclassified and should appear in Class 5.
• The wording “ointments for cosmetic use” is indefinite because it does not clarify the nature of the goods.
• The wording “cosmetic preparations and/or gels for cosmetic purposes” is indefinite because “and/or” does not specify the nature of the goods and should be replaced with more definite language to clarify the nature of the goods.

 

The applicant insufficiently describes the following goods in Class 5:

• The wording “hernia nets” is indefinite because it does not clarify the nature of the goods in their common commercial name.

• The wording “hernia nets, hernia meshes, hernia mesh” is indefinite because it does not clarify the nature of the goods as comprised primarily of artificial materials.
• The wording “adhesive dressings” is indefinite because it does not clarify that the adhesive is self-adhesive.
• The wording “chemicals preparations for pharmaceutical use, chemicals preparations for medical use” is indefinite because it does not clarify the nature of the goods purpose.
• The wording “surgical implants” is indefinite because it does not clarify the nature of the goods as comprised of living tissues.
• The wording “plasters for medical use” is indefinite because it does not clarify the nature of the goods as sticking plasters.
• The wording “wound care preparations” is indefinite because it does not clarify the nature of the goods, such as, wound dressings.

 

The applicant insufficiently describes the following goods in Class 10:

• The wording “surgical corsets” is indefinite because it does not clarify the nature of the goods as abdominal corsets.
• The wording “orthopedic or surgical stockings” is indefinite because it does not clarify the nature of the goods as elastic stockings, and because “or” does not specify the nature of the goods and should be replaced with more definite language to clarify the nature of the goods.
• The wording “breast implants”, “hip implants”, and “ocular implants” is indefinite because it does not clarify that the goods are made of artificial materials.
• The wording “wound closures” is indefinite because it does nor clarify the nature of the goods, such as, medical devices for closing wounds.

 

Applicant may substitute the following wording, if accurate: 

 

Class 1: Chemicals for use in industry, in particular chemicals for use in pharmaceutical industry, chemical agents for coating metals, chemical agents for coating synthetic materials, chemical agents for coating textiles, chemical agents for coating leather and fabrics, chemicals for use in coating dental, surgical, medical instruments, chemical compositions for treating textiles, chemical preparations for use in the manufacture of fibers and textiles, chemical preparations for use in the manufacture of cosmetic products, chemical preparations for use in the manufacture of veterinary products, chemical preparations for use in the food industry, chemical additives for use in the manufacture of cosmetics; proteins for use in industry, in particular protein for use in the manufacture of cosmetics, protein for use in the manufacture of medical devices, protein for use in the manufacture of fibers and textiles, protein raw material for scientific and medical research, protein in raw material form for use in the manufacture of cosmetics, protein in raw material form for use in the manufacture of medical devices, protein in raw material form for use in the manufacture of fibers and textiles, protein products, namely, protein for use in the manufacture of cosmetics, medical devices, fibers, and textiles, proteins for the manufacture of cosmetics, proteins for the manufacture of food supplements; food preserving chemicals; adhesives for use in industry, in particular adhesives for coating of substrates, adhesives for manufacturing surgical bandages, adhesives for treating textiles, proteins for the manufacture of cosmetics; in particular all the aforesaid goods based on or containing recombinant proteins

 

Class 3: Soaps for personal care, hair care, skin care, tooth care, in particular, deodorant soap, detergent soap, non-medicated hand soap, non-medicated liquid soap, perfumed soap, non-medicated industrial soap, laundry soap; perfumery; essential oils; essential oils, in particular for personal care, hair care, skin care, tooth care; cosmetics and cosmetic preparations, in particular cosmetics and cosmetic preparations for personal care, cosmetics and cosmetic preparations for hair care, cosmetics and cosmetic preparations for skin care, cosmetics and cosmetic preparations for tooth care, cosmetics in the form of creams, foams, gels, lotions, milks, oils, ointments, powders, sun protection preparations, cosmetic suntan preparations, deodorants for human beings, deodorants for animals, shampoo, hair conditioner, cuticle conditioner, skin conditioner, laundry fabric conditioner, hair dyes, anti-wrinkle creams, ointments for cosmetic use in the nature of {indicate type, e.g., general purpose mentholated ointment not for medical use}, cosmetic oils, cosmetic preparations and gels for cosmetic purposes; moisturizing creams; hair lotions; dentifrices; adhesives for cosmetic use, adhesives for medical devices, adhesives for cosmetic purposes; in particular all the aforesaid goods based on or containing recombinant proteins

 

Class 5: Pharmaceutical and veterinary preparations, in particular pharmaceutical and veterinary preparations for skin care, biological tissue cultures for implantation, biological skin tissue for implantation, biological bone tissue for implantation, drug delivery agents consisting of compounds that facilitate delivery of a wide range of pharmaceuticals, pharmaceutical implants, antimicrobial preparations, in particular antimicrobial preparations for inhibiting or treating bacteria, algae, fungi, protozoae; antibacterial cleaners, antibacterial pharmaceuticals, antibacterial sprays, antibacterial substances for medical purposes; sanitary preparations for veterinary use, dressings for wounds, medical dressings, surgical dressings, self adhesive dressings, bandages for dressing, bandages for skin wounds, hernia bandages, hernia nets in the nature of bandages, hernia meshes  comprised primarily of artificial materials, hernia mesh and components of hernia mesh comprised primarily of artificial materials; self adhesive dressings, adhesive plasters for medical purposes, chemicals preparations for pharmaceutical use, namely, for {specify disease or condition to be prevented or treated or the health goal to be achieved} chemicals preparations for medical use, namely, for {specify disease or condition to be prevented or treated or the health goal to be achieved}, chemicals preparations for sanitary use, medicated creams for application for the lips, medicated creams for application after exposure to the sun, medicated plasters, medicated preparations for skin treatment, medicated skin creams, medicated lotions, gels for dermatological use, surgical implants comprised of living tissues, surgical implants comprising living tissue, food supplements; dietetic foods adapted for medical use; sticking plasters for medical use; materials for medical dressings, materials for dental sealing purposes; wound care preparations, namely, wound dressings; medical adhesives for binding wounds, medical adhesives for binding internal tissue; soaps for personal care, hair care, skin care, tooth care, in particular, medicated soap; in particular all the aforesaid goods based on or containing recombinant proteins

 

Class 10: Surgical and medical apparatus and instruments for use in general surgery; surgical apparatus and instruments for use in ophthalmic surgery; surgical apparatus and instruments for medical, dental, or veterinary use; artificial limbs, eyes, and teeth; orthopedic devices for diagnostic and therapeutic use; orthopedic supports, in particular compression garments, namely, compression stockings, compression tights, compression bandages; surgical abdominal corsets, orthopedic and elastic surgical stockings, orthopedic support and surgical bandages, orthopedic soles, orthopedic braces, orthopedic footwear, suture materials, in particular biodegradable sutures; implants comprising natural, non-living materials, implants consisting of artificial materials in particular medical implants; silicone medical implants, artificial breast implants, catheters, artificial hip implants, ocular implants made of artificial materials, stents, microchip implants, dental implants, silicone breast implants; catheters made of artificial material; orthopedic implants made of artificial material, biodegradable implants made of artificial material, silicone prosthetic implants, surgical implants composed of artificial materials, cochlea implants made of artificial material, medical and surgical catheters; wound closures, namely, medical devices for closing wounds; in particular all the aforesaid goods based on or containing recombinant proteins

 

Applicant may amend the identification 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.  Generally, any deleted goods and/or 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.

 

ENGLISH TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark SANA.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “SANA” in the mark is “healthy”.  TMEP §809.03.  See attached translation evidence from SpanishDict.

 

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. 

 

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.  

 

 

 

/Alexandra El-Bayeh/

Trademark Examining Attorney

Law Office 124

(571) 270-5911

alexandra.el-bayeh@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 4/24/2019 FOR U.S. APPLICATION SERIAL NO. 88298272

 

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 4/24/2019 (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.