Suspension Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

SUSPENSION NOTICE

No Response Required

 

 

Issue date:  January 21, 2020

 

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s). 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below was sent previously.

 

- U.S. Application Serial No(s). 88460556, 88176135, 88152079, 87866520, 87364736, 87632825, 86845952, 86206041, 86975482, and 85737290

 

Application Serial No. 87076933 has abandoned and is withdrawn as a potential citation.  Applicant Serial No. 88361286 has registered as Registration No. 5863203, Applicant Serial No. 86250420 has registered as Registration No. 5923674, and Applicant Serial No. 86250419 has registered as Registration No. 5923673.  These new registrations will also be cited against applicant’s mark under Section 2(d) when this application is removed from suspension.

 

Section 2(d) Refusal (MAINTAINED):

 

Applicant’s arguments have been considered, but the refusal to register applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 5321132, 5742366, 5380813, 5443468, 5401819, 5380812, 4960624, 4837578, 4778730, 4703634, 4328797, 3984444, 3984443, 4589493, 4589492, 4693789, 5532391, 3865993, 2970422, 2972886, 2894615, 3038157, and 4517247 is MAINTAINED.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously enclosed registration(s).

 

Disclaimer (MAINTAINED):

 

Applicant’s arguments against the disclaimer requirement have been considered, b ut the requirement is maintained.  Applicant must provide a disclaimer of the unregistrable part(s) 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 “DRILL” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  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). 

 

As shown by the previously attached definitions, “DRILL” means a tool for making holes in things, such as a dental drill for drilling teeth.  Applicant’s goods and services thus either are or they relate to dental drills.  Thus, this wording directly describes the goods and services and the subject matter thereof.

 

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

 

No claim is made to the exclusive right to use “DRILL” 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. 

 

Identification (MAINTAINED):

 

The wording in the identification remains indefinite and must be clarified, as indicated below.  See TMEP §§1402.01 and 1402.03.

 

Please note that additional wording must be clarified that was not raised in the initial Office action.  The examiner apologizes for any inconvenience caused by the delay in raising these additional issues.

 

In particular, applicant should note that its therapy services in International Class 44 are a listing of dental services and orthodontic services, which are beyond the scope of “therapy” services.  Dental therapies might include things like cleaning, but the listed dental treatments are not truly “therapies” but more dental services.

 

Applicant may adopt the following identification, if accurate:

 

International Class 5 – Alloys of precious metals for dental purposes; dental amalgams; dental cements; dental impression materials; medicines for dental purposes; medicines for human purposes, namely, for dental purposes; molding wax for dentists; porcelain for dental prostheses; rubber for dental purposes; teeth filling material

 

International Class 9 – Recorded computer programs for {specify functions, e.g., “use in CAD design and obtaining a proper fit} of dental implants; computer software applications, downloadable, for {specify functions, e.g., “use in CAD design and obtaining a proper fit} of dental implants; connected bracelets, namely, {specify International Class 9 goods by common name, e.g., magnetic encoded identification bracelets,” etc.}; downloadable image files containing photographs in the field of dentistry and dental implants; electronic notice boards; downloadable electronic publications, namely, papers, handouts, textbooks, reference books, books, teaching materials, magazines, teaching manuals, informational flyers, handbooks, and periodicals in the field of dentistry and dental implants; encoded identification bracelets, magnetic; prerecorded smart cards featuring personal healthcare information; prerecorded optical discs featuring books, manuals and periodicals in the fields of dentistry and dental implants; teeth protectors, namely, mouth guards for sports

 

International Class 10 – Artificial teeth; dental burs; dental apparatus and instruments for use in installing, extracting and adjusting dental implants; electric dental apparatus for use in installing, extracting and adjusting dental implants; dentures; diagnostic apparatus for medical purposes, for diagnosing oral diseases; medical apparatus and instruments for use in installing, extracting and adjusting dental implants; orthodontic appliances; pins for artificial teeth; teeth protectors for dental purposes

 

International Class 16 – Bags of paper or plastics, for packaging; books in the field of dentistry and dental implants; informational flyers featuring information in the field of dentistry and dental implants; graphic prints; handbooks in the field of dentistry and dental implants; periodicals in the field of dentistry and dental implants; photographs; printed matter, namely, books, papers, handouts, textbooks, reference books, teaching materials, magazines, and teaching manuals in the field of dentistry and dental implants; printed publications, namely, books, papers, handouts, textbooks, reference books, teaching materials, magazines, and teaching manuals in the field of dentistry and dental implants; writing instruments

 

International Class 35 – Administrative processing of purchase orders; advertising services; rental of advertising space; auctioneering; business management assistance; commercial and industrial management assistance; commercial information and advice for consumers in the choice of products and services; commercial administration of the licensing of the goods and services of others; demonstration of goods; dissemination of advertising matter; import-export agency services; marketing services; negotiation and conclusion of commercial transactions for third parties; on-line advertising on a computer network; provision of an on-line marketplace for buyers and sellers of goods and services; organization of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; relocation services for businesses; retail and wholesale store services featuring pharmaceutical, veterinary and sanitary preparations and medical supplies

 

International Class 41 – Membership club services in the nature of providing discounts to members in the field of dentistry; arranging and conducting of educational colloquiums in the field of dentistry; on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable, namely, papers, handouts, textbooks, reference books, books, teaching materials, magazines, dental implant teaching manuals, informational flyers, handbooks, and periodicals in the field of dentistry; organization of competitions in the field of dentistry; organization of exhibitions for cultural or educational purposes; publication of books; arranging and conducting of seminars in the field of dentistry; educational services, namely, education regarding dental implants, tooth filling, tooth extraction, inlays, dental cleaning, root canals, gum disease, periodontal disease, and orthodontic treatment in the field of dentistry; vocational guidance

 

International Class 44 – dentistry services; health care; health counseling; hospital services; medical clinic services; nursing, medical; orthodontic services; pharmacy advice, namely, advice regarding pharmaceuticals; therapeutic dental services, namely, dental cleaning services; visagists' services, namely, cosmetology services

 

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 at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.  An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05. 

 

No response required.  Applicant may file a response, but is not required to do so. 

 

 

/James W. MacFarlane/

Examining Attorney

Law Office 104

(571) 270-1512 (phone)

(571) 270-2512 (fax)

james.macfarlane@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 21, 2020 for

U.S. Trademark Application Serial No. 88380458

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/James W. MacFarlane/

Examining Attorney

Law Office 104

(571) 270-1512 (phone)

(571) 270-2512 (fax)

james.macfarlane@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”