To: | Medeon Biodesign, Inc. (mailroom@mg-ip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88365631 - CLICKCLEAN - 4461/0129TUS |
Sent: | 6/13/2019 6:52:54 PM |
Sent As: | ECOM112@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88365631
MARK: CLICKCLEAN
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Medeon Biodesign, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 6/13/2019
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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Here, applicant’s mark is “CLICKCLEAN” for “Laparoscopic Lens Shield Device; Medical and surgical laparoscopes; endoscopy cameras for medical purposes; testing apparatus for medical purposes; apparatus for use in medical analysis; diagnostic apparatus for medical purposes; medical apparatus and instruments; surgical apparatus and instruments” in Class 10.
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.
Specifically, the term “CLICK” in the mark generally means to “strike, move, or produce something with a click” or “to turn something on or off by pushing a button or moving a switch;” meanwhile, the term “CLEAN” in the mark means “free from dirt, stain or impurities; unsoiled.” See attached evidence from Merriam-Webster Dictionary, available at http://www.merriam-webster.com/dictionary/click, and from The American Heritage Dictionary, available at http://www.ahdictionary.com/word/search.html?q=clean, respectively.
Applicant describes its goods as “a single use, disposable device that instantly restores the surgeon’s clarity of view,” and that it “gives surgeons a clarity of view throughout laparoscopic surgeries with a simple ‘click-and-clean’ in situ cleaning mechanism.” See attached evidence from applicant’s website, available at http://www.medeonbio.com/clickclean/?lang=en. It further explains that “as the visual field is soiled by blood and debris, a simple click will advance clean film over the distal end, giving the surgeon a clear unobstructed view.” See aforementioned attached evidence from applicant’s website.
Thus, applicant’s mark “CLICKCLEAN” merely describes a feature and the purpose and function of applicant’s laparoscopic goods, i.e. a surgical device that cleans the laparoscopic lens by means of a click button or switch. Accordingly, registration is refused under section 2(e)(1).
IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
The wording “testing apparatus for medical purposes; apparatus for use in medical analysis; diagnostic apparatus for medical purposes; medical apparatus and instruments” in the identification of goods is indefinite and must be clarified because it is unclear as to the specific types of goods are and what their purpose or function is. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 10: “Laparoscopic Lens Shield Device; Medical and surgical laparoscopes; endoscopy cameras for medical purposes; testing apparatus for medical purposes, namely, __________ {indicate the type of testing apparatus or its function, e.g. “blood testing apparatus,” “blood sampling tubes,” “immunochemical testing apparatus,” “eye testing machines and apparatus,” etc.}; apparatus for use in medical analysis, namely, __________ {indicate the type of apparatus or its function, e.g. “Medical diagnostic instruments for the analysis of body fluids,” “Medical devices for monitoring oxymetory, gas analysis and vital signs,” etc.}; diagnostic apparatus for medical purposes, namely, __________ {indicate the type of apparatus or its function, e.g. “for the detection of periodontal disease,” “x-ray diagnostic apparatus,” “for the detection of cancer,” etc.}; medical apparatus and instruments, namely, __________ {indicate the type of apparatus and instruments or its function, e.g. “for monitoring vital signs, blood properties and respiratory events,” “for treating osteoarthritis and osteoporosis,” “devices used in orthopedic surgery to position surgical instruments, implants and/or patients' limbs” etc.}; surgical apparatus and instruments.”
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.
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.
/Tyler M. Seling/
Tyler M. Seling, Esq.
Examining Attorney
Law Office 112
(571) 272-0272
Tyler.Seling@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.