To: | NuTech Medical, Inc. (amckean@mckeanfinancial.com) |
Subject: | U.S. Trademark Application Serial No. 88307494 - VORTEX WATER - N/A |
Sent: | December 02, 2019 05:29:27 PM |
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. 88307494
Mark: VORTEX WATER
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Correspondence Address: |
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Applicant: NuTech Medical, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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SUSPENSION NOTICE
No Response Required
Issue date: December 02, 2019
The application is suspended for the reason(s) specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The pending applications below have earlier filing dates than applicant’s application. If the marks in the applications below register, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered marks. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed applications below either register or abandon. 37 C.F.R. §2.83(c). Information relevant to the applications below was sent previously.
- U.S. Application Serial Nos. 86851421 (H20 VORTEX 9.5 PH) and 86851295[1] (VORTEX 9.5)
Refusal(s) and/or requirement(s) resolved and maintained and continued. The following requirements are satisfied:
• Applicant’s name and entity – to be identified as NuTech Medical, Inc., a corporation of Wyoming
• Disclaimer statement has been entered into the record
See TMEP §713.02.
The following refusal is maintained and continued:
• Specimen Refusal
Applicant submits images of water bottles and labels that show use of the mark in connection with purified bottled water. The specimen fails because the application identifies the service of “water distribution and supply” and not the product of “bottled water.” The submitted labels do not show use of the mark in connection with service, rather, they show the mark in connection with a product.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
It appears applicant mistakenly applied for the wrong good/service. However, applicant may not amend to refer to “purified bottled water” and delete “water supply and distribution” because this would be altering the scope of the original application. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
See id. These refusal(s) and/or requirement(s) will be made final once this application is removed from suspension, unless a new issue arises. See TMEP §716.01.
Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.
No response required. Applicant may file a response, but is not required to do so.
/Giselle Agosto-Hincapie/
Examining Attorney Advisor
Trademarks Law Office 102
giselle.agosto@uspto.gov (Informal inquires only)
571-272-5868
[1] This application has matured to registration as Reg. No. 5830818. A refusal based on this registration is pending the resolution of application serial no. 86851421.