| To: | OMNI life science, Inc. (tm@kimwinston.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88334198 - 1068.0067 |
| Sent: | 5/1/2019 2:55:04 PM |
| Sent As: | ECOM106@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88334198
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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: OMNI life science, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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.
TEAS RF applicants must submit responses and other documents electronically or pay an additional fee per international class. Please see the TEAS RF application response requirements, which are set forth at the end of this Office action.
ISSUE/MAILING DATE: 5/1/2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On May 1, 2019, the trademark examining attorney and Bruce Jacoby discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
Summary of Issues that Applicant Must Address
1. Trademark Act Sections 1 and 45 Refusal - Specimen is Unacceptable for International Class 10
2. Requirement to Clarify the Identification of Goods
3. Multiple Class Requirements - Section 1(a) Basis
4. Requirement to Clarify the Description of the Mark
Trademark Act Sections 1 and 45 Refusal – Specimen is Unacceptable for International Class 10
THIS REFUSAL APPLIES TO INTERNATIONAL CLASS 10 ONLY.
In the present case, applicant submitted a single specimen for both international classes. The specimen comprises the cover of “instructions for use” for an “KNEE Application” featuring the applied-for mark. The term “application” is defined as “[a] computer program designed for a specific task or use,” as shown by an entry from the American Heritage Dictionary at Attachment 1. Thus, the specimen appears to comprise instructions for a computer software program. While the specimen is acceptable for the identified goods comprising computer software in International Class 9, it does not show use in commerce in connection with the various types of medical and/or surgical apparatus identified in International Class 10.
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 identified in the application. 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).
Applicant may respond to this refusal by satisfying one of the following for International Class 10:
(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 and (b) shows the mark in actual use in commerce for the goods identified in the application. 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.” 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.
Requirement to Clarify the Identification of Goods
THIS REQUIREMENT APPLIES ONLY TO THE PARTICULAR GOODS INDICATED.
International Class 9
The identification for “Computer software for performing arthroplasty” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). Downloadable and recorded software is in International Class 9, whereas providing temporary, online non-downloadable software is a service in International Class 42. See TMEP §1402.03(d).
The wording “computer software used in connection with surgical devices and instruments, surgical apparatus, orthopedic and total joint replacement instrumentation, robotic surgery systems and instruments, robotic systems for total and unicondylar knee replacement procedures” in International Class 9 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable, as described in the preceding paragraph. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). In addition, the identification is also indefinite because while it specifies the field of use of the software, it does not specify the type of software or the function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(d).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Therefore, applicant must indicate the format of the software and classify the software appropriately, and indicate function of the software with respect to “surgical devices and instruments, surgical apparatus, orthopedic and total joint replacement instrumentation, robotic surgery systems and instruments, robotic systems for total and unicondylar knee replacement procedures.”
International Class 10
The wording “Surgical and medical goods, namely, orthopedic joint implants” in the identification of goods must be clarified because it is too broad and could include goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, if these goods are made of living tissues, they are classified in International Class 5 and if they are made of artificial materials, they are classified in International Class 10. Therefore, applicant must indicate the material composition of the goods and classify the goods in the proper class(es).
The wording “orthopedic and total joint replacement instrumentation” in the identification of goods is indefinite and must be clarified to indicate the purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “robotic systems for total and unicondylar knee replacement procedures” in the identification of goods is indefinite and must be clarified to specify the primary components of the “robotic surgery systems” to enable proper classification of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a). Applicant must clarify the goods by (1) describing the nature, purpose, or use of the systems; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).
Scope Advisory
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).
Suggested Amendments
Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of
goods and/or services. If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as
this: strikethrough. Applicant should enter its amendments in standard font. If applicant wishes to accept the suggested deletions, applicant
must manually delete the struck through wording in any USPTO response form. Copying and pasting the language below will not result in deletion of the
struck through wording, which will remain within the identification.
Applicant may adopt the following identification of goods, if accurate:
International Class 5: Surgical and medical goods, namely, orthopedic joint implants comprised of living tissues
International Class 9: Downloadable computer software for performing arthroplasty; recorded
computer software for performing arthroplasty; downloadable computer software used in connection with for operation of surgical
devices and instruments, surgical apparatus, orthopedic and total joint replacement instrumentation, robotic surgery systems and instruments, and robotic systems for total and
unicondylar knee replacement procedures; recorded computer software used in connection with for operation of surgical devices
and instruments, surgical apparatus, orthopedic and total joint replacement instrumentation, robotic surgery systems and instruments, and robotic systems for total and
unicondylar knee replacement procedures
International Class 10: Surgical and medical goods, namely, orthopedic joint implants comprised of artificial materials; robotic surgical apparatus comprising a cutting arm, motorized guide, and computer work station; surgical devices and instruments; surgical apparatus; orthopedic and total joint replacement instrumentation for {clarify purpose, e.g., diagnostic and therapeutic use}; robotic surgery systems and instruments, namely, surgical robots; robotic systems for total and unicondylar knee replacement procedures comprised of {specify primary components in Class 10, e.g., surgical robots and surgical instruments}
International Class 42: Providing online, non-downloadable computer software for performing arthroplasty; providing online, non-downloadable computer software used in connection with for operation of surgical devices and instruments, surgical
apparatus, orthopedic and total joint replacement instrumentation, robotic surgery systems and instruments, and robotic systems for total and unicondylar knee replacement
procedures
For assistance with identifying and classifying goods 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 Requirements – Section 1(a) Basis
Applicant must clarify the number of classes for which registration is sought.
Applicant must also satisfy all the requirements below for each international class based on use in commerce under Section 1(a):
(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 at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted fees sufficient for only 2 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.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class.
(4) Submit a specimen for each international class. The current specimen is acceptable for International Class 9 only; and applicant needs specimens for International Classes 5, 10 and 42, if they are included in the application.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§ 2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
Requirement to Clarify the Description of the Mark
The following description is suggested, if accurate:
The mark consists of two opposing curved bands below a circle, which together form a stylized figure, all inside a solid circular carrier.
If applicant has any questions about this Office action, please contact the undersigned examining attorney.
Trademark Examining Attorney
Law Office 106
p. 571.272.7187
f. 571.272.9106
linda.lavache@uspto.gov (informal inquiries only)
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.
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.
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.
