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: 5/11/2019

 

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

 

• Section 2(d) Refusal – Likelihood of Confusion
• Prior-Filed Applications – Advisory
• Classification and Identification of Goods and Services – Requirement
• Multiple Class Application – Requirement
• Mark Description – Requirement
• Potential Goods in Trade Refusal – Advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4693247 (EMPOWER NEXT), 4944361 (MPOWER MD), and 4953946 (MPOWER PERFORMANCE INSTITUTE).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Applicant has applied to register the mark MPOWER (with design) for, in relevant part, “Design services in the field of medical instruments, prostheses, implants and orthopedic articles; Design of surgical instruments, prostheses, implants and orthopedic articles; 3D design services; digitization of images; Providing of non-downloadable software online for developing two-dimensional images into three-dimensional goods; Customised design of surgical instruments, prostheses, implants and orthopedic articles” in International Class 42 and “Medical, surgical and diagnostic services; Orthopedic surgery services; Consultancy in the field of medical and orthopaedic equipment and instruments; Professional consultancy in the field of orthopedic surgery; Pre-operative and rehabilitation assistance services; Telemedicine services; Providing orthopedical information and assistance to patients and medical professionals; Advisory services in the field of medical problems; Medical services for the diagnosis of conditions of the human body; Orthopedical counseling; Orthopedical evaluation services” in International Class 45. 

 

The registered marks are:

 

U.S. Registration No. 4693247: EMPOWER NEXT for, in relevant part, “research and development of new products for others; graphic art design services” in International Class 42.

 

U.S. Registration No. 4944361: MPOWER MD for “Medical services, namely, concierge medical services for dietary and nutritional guidance, primary care services, orthopedic surgery and care, physical therapy, and nutritional therapy services” in International Class 44.

 

U.S. Registration No. 4953946: MPOWER PERFORMANCE INSTITUTE for “Medical services for athletic performance and training, namely, dietary and nutritional guidance, orthopedic surgery and care, physical therapy, and nutritional therapy services” in International Class 44.

 

Similarity of Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Similarity to U.S. Registration No. 4693247 (EMPOWER NEXT)

 

As a preliminary matter, consumers will perceive the applied-for mark as a stylized version of the word MPOWER, because the two triangular shapes appear to the shape of the letter “M”.  The attached evidence from applicant’s website shows that applicant has indeed used similar triangular shapes to represent the letter M, such as for the wording “Medacta” and “M-ARS.” 

 

The dominant portion of the registered mark is the wording EMPOWER because it is the first term in the mark.  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  Therefore, the wording EMPOWER constitutes the term in the registered mark that consumers will likely recognize or recollect when making purchasing decisions. 

 

The wording MPOWER, which is how this applied-for mark will be referred to by consumers, is phonetically equivalent to the dominant portion of the registered mark, EMPOWER.  Thus, the marks sound similar in part.  This similarity in sound is sufficient to support a finding that the marks are confusingly similar.  See cf. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Thus, the marks are confusingly similar. 

 

Similarity to U.S. Registration Nos. 4944361 (MPOWER MD) and 4953946 (MPOWER PERFORMANCE INSTITUTE)

 

Again, for the reasons stated above, applicant’s mark will be perceived by consumers as a stylized version of the wording MPOWER. 

 

Here, the dominant portion of these registered marks are MPOWER.  Again, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  Therefore, the wording MPOWER constitutes the term in the registered marks that consumers will likely recognize or recollect when making purchasing decisions. 

 

Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  The attached registrations show that the wording MD and PERFORMANCE INSTITUTE have been disclaimed in the registered marks, which shows that these portions of the marks are less significant or dominant.  Therefore, the wording MPOWER in the registered marks constitute the dominant portions, which is identical to the literal portion of applicant’s MPOWER mark. 

 

Thus, the marks are confusingly similar.

 

Relatedness of Services

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Relatedness to U.S. Registration No. 4693247 (EMPOWER NEXT)

 

Applicant’s services recited as “Design services in the field of medical instruments, prostheses, implants and orthopedic articles; Design of surgical instruments, prostheses, implants and orthopedic articles; 3D design services; digitization of images; Providing of non-downloadable software online for developing two-dimensional images into three-dimensional goods; Customised design of surgical instruments, prostheses, implants and orthopedic articles“ are closely related to registrant’s “research and development of new products for others; graphic art design services.”

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

The attached Internet evidence, consisting of webpage printouts, show that research and development services encompasses design services.  In this case, the registration does not limit its research and development services of new products to a particular type or field, such that it is presumed to encompass all such types and fields, including applicant’s more narrowly defined design of medical instruments, prostheses, implants, and orthopedic articles.  See, c.f., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

Further, the attached Internet evidence establishes that the same entity commonly provides graphic design services as well as 3D design services and image digitization services under the same mark.  Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Therefore, since the marks are confusingly similar and the services are closely related, purchasers are likely to mistakenly believe that they emanate from a common source.  Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act. 

 

Relatedness to U.S. Registration Nos. 4944361 (MPOWER MD) and 4953946 (MPOWER PERFORMANCE INSTITUTE)

 

Again, please note that determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe medical, surgical and diagnostic services, which presumably encompasses all services of the type described, including registrant’s more narrow “Medical services, namely, concierge medical services for dietary and nutritional guidance, primary care services, orthopedic surgery and care, physical therapy, and nutritional therapy services” and “Medical services for athletic performance and training, namely, dietary and nutritional guidance, orthopedic surgery and care, physical therapy, and nutritional therapy services.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods and/or services are related.

 

Therefore, since the marks are confusingly similar and the services are closely related, purchasers are likely to mistakenly believe that they emanate from a common source.  Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act. 

 

PRIOR-FILED APPLICATIONS – ADVISORY

 

The filing dates of pending U.S. Application Serial Nos. 88259027 (MPOWER), 88255516 (MPOWER NUTRITION), 88255517 (MPOWER SPORTS MEDICINE), and 88255515 (MPOWER THERAPY) precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 applications.

 

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 marks in the referenced applications.  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.

 

CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES – CLARIFICATION REQUIREMENT

 

International Class 16

 

The identification for “scientific publications in the field of orthopaedics” in International Class 16 is indefinite and too broad and must be clarified because the word does not make clear whether the “publications” are products or services and thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether “publications” identifies print publications in International Class 16, electronic publications in International Class 9 or 41, and/or online/Internet publications in International Class 41, and amend the identification to provide the additional information specified below for such goods and services. 

 

If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications.  TMEP §§1402.03(e), 1402.07(b).  For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See id.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.  Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  See TMEP §§1402.07(b), 1402.11(a)(x). 

 

The following are examples of acceptable formats for identifications for electronic or online/Internet publications (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or

 

Non-downloadable electronic publications in the nature of {indicate specific nature of publications} in the field of {indicate subject matter} in International Class 41. 

 

Similarly, the wording “Printed promotional material in the field of surgical instruments, prostheses, orthopedic articles and related medical services; Printed publications in the field of surgical instruments, prostheses, orthopedic articles and related medical services” in the identification of goods is indefinite and must be clarified to indicate the specific physical nature of the publications and materials; e.g., pamphlets, brochures, newsletters, journals, or magazines.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.03(e). 

 

International Class 35

 

The wording “Assistance and consultancy services for professionals in the medical, surgical and orthopaedic sector in relation to promoting the professional activities thereof; Assistance and consultancy services in relation to organising promotional campaigns for doctors and surgeons; Assistance in relation to promoting professional activities; Assistance, organisation and conducting of promotional events; Providing, design and production services for advertising material” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

International Class 42

 

The wording “3D design services” and “digitization of images” in the identification of services is indefinite and must be clarified because the nature of these services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

International Class 45

 

The services in this class are classified incorrectly.  Applicant must amend the application to classify the services in International Classes 42 or 44, as suggested in the Suggested Amendment section below.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Applicant must clarify the wording “Medical, surgical and diagnostic services” in the identification because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording, in particular, “diagnostic services,” is indefinite because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, computer diagnostic services are in International Class 42 and medical diagnostic testing services are in International Class 44. 

 

The wording “Consultancy in the field of medical and orthopaedic equipment and instruments; Pre-operative and rehabilitation assistance services; Providing orthopedical information and assistance to patients and medical professionals; Medical services for the diagnosis of conditions of the human body” in the identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Please note that if applicant adopts the suggested amendment of the goods below, then applicant must amend the classification to International Classes 9, 16, 35, 41, 42, and 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  However, applicant has provided the application fee for only four (4) international classes.  Thus, not all international classes in the application are covered by the application fee.  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Suggested Amendment

 

Applicant may substitute the following wording, if accurate (suggestions in bold): 

 

International Class 9:           Downloadable electronic scientific publications in the nature of downloadable {specify common name of publications, e.g., articles, newsletters} in the field of orthopaedics

 

International Class 16:           Printed promotional material in the nature of {specify common name of materials, e.g., brochures, pamphlets} in the field of surgical instruments, prostheses, orthopedic articles and related medical services; Printed publications in the nature of {specify common name of publications, e.g., booklets, articles, magazines} in the field of surgical instruments, prostheses, orthopedic articles and related medical services; Printed scientific publications in the nature of printed {specify common name of printed publications, e.g., articles, newsletters} in the field of orthopaedics

 

International Class 35:           Advertising and promotional services; Marketing and promotion in the field of medicine, surgery and orthopaedics; Assistance and consultancy services for professionals in the medical, surgical and orthopaedic sector in relation to promoting {indicate specific area of promotional activity, e.g., collaboration of professionals within the medical, surgical, and orthopaedic sectors to achieve advances in the field of healthcare}; Assistance and consultancy services in relation to organising promotional advertising campaigns for doctors and surgeons; Production of visual advertising matter; Assistance in relation to promoting and advertising for professional activities of {specify profession or field, e.g., surgeons, physicians}; Assistance with marketing promotional events; organisation and conducting of marketing promotional events; Providing design and production of advertising material

 

International Class 41:        Non-downloadable electronic scientific publications in the nature of downloadable {specify common name of publications, e.g., articles, newsletters} in the field of orthopaedics

 

International Class 42:           Design services in the field of medical instruments, prostheses, implants and orthopedic articles; Design of surgical instruments, prostheses, implants and orthopedic articles; 3D design services in the nature of {specify common name of services, e.g., computer graphics design services, namely, creating of 3D computer models}; digitization of images in the nature of specify common name of services, e.g., electronic scanning of photographic images}; Providing of non-downloadable software online for developing two-dimensional images into three-dimensional goods; Customised design of surgical instruments, prostheses, implants and orthopedic articles; computer diagnostic services

 

International Class 44:        Medical services; surgical services; diagnostic services, namely, {specify Class 44 diagnostic services, e.g., medical diagnostic testing, monitoring, and reporting services}; Orthopedic surgery services; Consultancy in the field of medical and orthopaedic equipment and instruments {include additional wording to clarify nature of consulting service, e.g, regarding the use and operation of medical and orthopedic equipment and instruments}; Professional consultancy in the field of orthopedic surgery; Medical assistance services, namely, providing pre-operative instructions and physical rehabilitation services; Telemedicine services; Providing orthopedical information to patients and medical professionals; Providing medical assistance to patients by medical professionals; Medical assistance consultancy provided by medical professionals; Advisory services in the field of medical problems; Medical services, namely, performing diagnosis of conditions of the human body; Orthopedical counseling; Orthopedical evaluation services in the nature of medical testing services for diagnostic or treatment purposes

 

Amendment Guidelines

 

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.

 

MULTIPLE-CLASS APPLICATION – REQUIREMENT

 

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 fees 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 fees sufficient for only 4 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.

 

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).

 

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.

 

MARK DESCRIPTION – REQUIREMENT

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of the stylized wording “MPOWER”, where the letter “M” is formed by two stylized triangles.

 

POTENTIAL GOODS IN TRADE REFUSAL – ADVISORY

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the following goods are not “goods in trade”:  Printed promotional material in the field of surgical instruments, prostheses, orthopedic articles and related medical services.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.06(b)-(c).

 

“Goods in trade” are items that an applicant sells or transports in commerce for use by others.  See Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1379-80, 103 USPQ2d 1672, 1675 (Fed. Cir. 2012); TMEP §1202.06.  Incidental items that an applicant uses to conduct its business, such as letterhead, invoices, and business forms, are generally not “goods in trade,” because these items are only useful to the applicant and are not separately sold or distributed to consumers.  TMEP §1202.06; see, e.g., Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1380, 1382, 103 USPQ2d at 1675-76 (holding computer software used for ordering contact lenses not goods in trade where applicant solely provided online retail stores for eyewear products, and software was not sold separately and had no independent value apart from applicant’s primary service); In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (holding reports on subscribers’ securities portfolios not goods in trade where applicant solely provided financial reporting services, and reports were not sold separately and had no independent value apart from applicant’s primary service).

 

Although determining whether an applicant’s goods are independent goods in trade, or merely incidental to the applicant’s services, is made on a case-by-case basis, factors to consider include whether:  the goods are simply the conduit or necessary tool useful only to obtain applicant’s services, the goods are so inextricably tied to and associated with applicant’s services as to have no viable existence apart from them; and the goods are neither sold separately from nor have any independent value apart from applicant’s services.  In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161-62 (TTAB 2013) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); TMEP §1202.06.  None of these factors is necessarily dispositive.  Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676; TMEP §1202.06.

 

ASSISTANCE

 

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.  

 

 

 

Young Wolfe

/Young Wolfe/

Trademark Examining Attorney

Law Office 122

Phone: (571) 272-5579

young.wolfe@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 5/11/2019 FOR U.S. APPLICATION SERIAL NO. 88311455

 

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 5/11/2019 (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.