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: 5/16/2019

 

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.

 

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).

 

SUMMARY OF ISSUES

 

• Disclaimer Requirement
• Identification of Goods Require Amendment

 

 

Disclaimer Requirement

 

Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “CRYO ABLATION” in the mark because it is not inherently distinctive.  These unregistrable terms at best are merely descriptive of the purpose and use of applicant’s goods.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

This wording appears in and is encompassed by applicant’s identification of good.  Thus, the wording merely describes applicant’s goods because applicant’s medical and surgical apparatus and instruments are intended to be used for cryoablation procedures.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “CRYO ABLATION” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Applicant should also note and respond to the additional requirement that follows.

 

Identification of Goods Require Amendment

 

The wording used to describe portions of the applicant’s goods needs clarification because it is indefinite and the nature of the goods are unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

The identifications and classifications of goods are unacceptable for the following reasons:

 

• The wording “Surgical and medical apparatus and instruments” is indefinite, and applicant must amend this entry to specify the purpose and intended use of these goods.

 

• In addition, the wording “apparatus for use in medical analysis” is indefinite because the nature of the “medical analysis” has not been specified.

 

• The wording “apparatus for the ablation of tissues” must also be amended to specify the nature of the goods, in addition applicant’s entries for “cryoabalation needles,” “microwave ablation needles,” and “radiofrequency ablation needles.”

 

• Also, the wording “integrated medical diagnostic systems” and “integrated medical treatment systems” should be amended with greater specificity as to the nature of these particular goods.

 

The examining attorney suggests examples of acceptable wording below. If accurate, and inserting specific information where directed, the applicant may adopt any or all of the following identifications of goods.  See TMEP §1402.01. Suggestions are in bold, comments are in bold italics:

 

• Class 10: Surgical and medical apparatus and instruments, namely, {specify types of apparatus and instruments and/or the purpose and intended use of these goods}; apparatus for use in medical analysis, namely, apparatus for {specify type of medical analysis}; apparatus for the treatment of cancer; apparatus in the nature of medical devices, namely, surgical devices that facilitate the ablation of tissues; medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of cancer; surgical, medical and medical diagnostic devices, apparatus and instruments for use in cryoablation; surgical, medical and medical diagnostic devices, apparatus and instruments for use in ablating tissues; medical devices for performing cryotherapy; medical devices for performing microwave ablation; medical devices for performing radiofrequency ablation; medical devices for freezing tumours; minimally invasive surgical devices for treating cancerous and benign tissues; minimally invasive surgical devices for ablating tissues; medical devices for delivering heat to the tip of a needle; needles for medical purposes, namely, cryoablation needles; needles for medical purposes, namely, microwave ablation needles; needles for medical purposes, namely, radiofrequency ablation needles;  cryoablation needles for medical purposes; microwave ablation medical apparatus; radiofrequency ablation medical apparatus; medical devices and medical electronic systems for the analysis of tumours; medical devices and medical electronic systems for the analysis of tissues; tissue ablation medical apparatus for use with microwave treatments; tissue ablation medical apparatus for use with radiofrequency treatments; medical apparatus consisting of treatment probes and high pressure valves used for heat or freeze treatment and component parts thereof; medical apparatus, namely, integrated medical diagnostic systems to predict ice ball propagation and isotherms within a tissue for medical diagnosis and component parts thereof; medical apparatus, namely, integrated medical diagnostic systems to give location of given needles for medical diagnosis and component parts thereof; medical apparatus, namely, integrated medical treatment systems for use in any cryoablation medical procedure and comprised of medical devices, a gas supply unit, cryoablation needles and thermal sensors being component parts thereof; medical apparatus, namely, integrated medical treatment systems for use in any cryoablation medical procedure and comprised of medical devices, a gas supply unit, cryoablation needles and thermal sensors being component parts thereof; medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering cold temperatures to tissues for medical purposes and component parts thereof; medical apparatus, namely, integrated medical treatment systems comprising medical devices and a cryoablation unit for delivering microwaves to tissues for medical purposes and component parts thereof; Stands and trolleys for use with medical devices; mobile and portable stands and trolleys for medical devices; mobile stands and trolleys for medical devices for performing cryotherapy; mobile stands and trolleys for medical devices for performing microwave ablation; mobile stands and trolleys for medical devices for performing radiofrequency ablation; parts and fittings for all the aforesaid goods. 

The applicant should note the following when amending the identifications.

 

·       The applicant may use different wording of its own when amending the identifications of goods.  The applicant must follow the guidelines discussed herein to ensure specificity and accuracy.  Please note that while identifications of goods can be clarified or limited by amendment, it is impermissible to add to or broaden the scope of the goods beyond those originally listed in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

·       For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.  

 

 

/Matthew D. McClellan/

Trademark Examining Attorney, Law Office 121

Phone: (571) 272-5148

Matthew.McClellan@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 5/16/2019 FOR U.S. APPLICATION SERIAL NO. 88350864

 

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 5/16/2019 (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.