To: | Carl Freudenberg KG (troymailroom@hdp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88363027 - SCAFFOLENE - 8470TF200245 |
Sent: | 5/25/2019 1:54:23 PM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88363027
MARK: SCAFFOLENE
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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: Carl Freudenberg KG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE 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.
ISSUE/MAILING DATE: 5/25/2019
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.
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).
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Furthermore, the wording of the identification of the goods contain many indefinite and/or broad wording and must be clarified to further indicate the nature and purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01; See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
A summary of the problematic wording in the identification of goods is included below for applicant’s convenience.
Class |
Problematic Wording |
Reason Unacceptable |
Suggestion |
5 |
medical textiles for dressing wounds, wound dressings and replacement skin (patches); medical textiles, being adhesion barriers for wounds and for binding wounds; medical textiles for haemostasis; medical, regenerative textiles, being cell carriers for regenerating bone, cartilage, skin and tendons |
This wording is indefinite because the nature of the goods is unclear. |
medical textiles for dressing wounds, particularly wound dressings; and replacement skin, in
particular processed human donor skin for the replacement of soft tissue in the form of |
5 |
textile, surgical implants provided with regenerative cells for regenerating organs and body tissues |
Class 5: textile, surgical implants comprising of living tissue provided with regenerative cells for regenerating organs and body tissues
Class 10: textile, surgical implants comprising of artificial material provided with regenerative cells for regenerating organs and body tissues |
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10 |
textile, surgical implants; textile, surgical implants for replacing and reinforcing tissue |
This wording must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass implants comprising live tissue in Class 5 or implants comprising artificial materials in Class 10. |
Class 5: textile, surgical implants comprising living tissue; textile, surgical implants comprising living tissue for replacing and reinforcing tissue
Class 10: textile, surgical implants comprising artificial material; textile, surgical implants comprising artificial material for replacing and reinforcing tissue; |
10 |
surgical textiles for supporting stents and organs; textiles for coating prostheses; textile, surgical implants for replacing and reinforcing tissue |
This wording is indefinite because the nature of the goods is unclear. |
surgical textiles for supporting stents and organs namely, implantable scaffolds and membranes, all composed of non-living and artificial materials; textiles for coating prostheses, namely textile cushion liners for prosthetic limbs; |
24 |
Textiles, being semi-finished products in the form of rolls, bars, webs and die-cuts |
This wording is indefinite because the nature of the goods is unclear. |
Rewoven Textiles |
Class 5: medical textiles for dressing wounds, particularly wound dressings; and replacement
skin, in particular processed human donor skin for the replacement of soft tissue in the form of (patches); medical textiles,
being adhesion barriers for wounds and for binding wounds, namely Adhesive bandages; medical textiles for haemostasis in the nature of medical
dressings; medical, regenerative textiles, being cell carriers for regenerating bone, cartilage, skin and tendons, in particular medicaments to help assist with the
regeneration of ligament and tendon fibers; textile, surgical implants comprising of living tissue provided with regenerative cells for regenerating organs and
body tissues; textile, surgical implants comprising living tissue; textile, surgical implants comprising living tissue for replacing and
reinforcing tissue
Class 10: textile, surgical implants comprising artificial material; textile, surgical implants comprising artificial material for replacing and reinforcing tissue; surgical textiles for supporting stents and organs namely, implantable scaffolds and membranes, all composed of non-living and artificial materials; textiles for coating prostheses, namely textile cushion liners for prosthetic limbs; textile, surgical implants comprising of artificial material provided with regenerative cells for regenerating organs and body tissues
Class 24: Rewoven Textiles, being semi-finished products in the form of rolls, bars, webs and
die-cuts sheets for use in the manufacture of medical nonwoven textiles in the form of bandages and dressings
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).
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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
To permit proper examination of the application, applicant must provide the following information:
(1) Explain whether the wording in the mark “SCAFFOLENE” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
(2) Explain whether this wording identifies a geographic place or has any meaning in a foreign language.
(3) Submit an English translation of all foreign wording in a mark. If the wording does not have meaning in a foreign language, applicant should so specify.
The format for an English translation: “The English translation of “SCAFFOLENE” is “{insert English wording here}”.”
The format for when there is no English translation: “The wording “SCAFFOLENE” has no meaning in a foreign language.”
See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
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.
/Valerie Kaplan/
Trademark Examining Attorney
Law Office 107
valerie.kaplan@uspto.gov
571-272-6767
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.