Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  October 08, 2019

 

This Office action is in response to applicant’s communication filed on September 5, 2019.

The examining attorney has reviewed the applicant’s response and determined the following:

1)      The statement regarding the significance of the mark is accepted and made of record. 

2)      The disclaimer is accepted and made of record.

3)      The identification of goods requirement is maintained for the reasons stated below.

4)      The color claim requirement and description of mark requirement are maintained for the reasons stated below.

 

SUMMARY OF ISSUES:

 

• Identification of Goods
• Description of Mark – Clarification Required

 

 

IDENTIFICATION OF GOODS

 

The amended identification of goods is unacceptable because some wording is indefinite and it identifies goods outside the scope of the original identification. 

 

Particular wording in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

The goods “slings for medical use” and “articular liners” are outside the scope of the original identification because these goods are not listed in the original wording. 

 

The wording “dental machines, apparatus and instruments, namely, dental X-RAY CT scanner, power tools for dental surgical use, instruments for fitting dental implants is indefinite.  Applicant must amend this wording to list the items comprising the power tools and instruments. 

 

 

Class 10:         Pacifiers for babies; ice bag pillows for medical purposes; Slings for medical use; Supportive bandages; Surgical catguts; Feeding cups for medical purposes; Dropping pipettes for medical purposes; Feeding bottle teats; Medical ice bags; Medical ice bag holders; Baby bottles; Nursing bottles; Finger guards for medical purposes; Artificial tympanic membranes; Prosthetics or fillings materials, not for dental use, namely, artificial materials for use in the replacement of bones; Esthetic massage apparatus for commercial use; implants made of artificial materials for total hip replacement; implants made of artificial materials for total knee prosthesis; Artificial joints; Artificial bones for implantation; Stems made of artificial materials for use as parts of artificial joint implants for orthopedic surgery; Cups made of artificial materials for use as parts of artificial joint implants for orthopedic surgery; Shells made of artificial materials for use as parts of artificial joint implants for orthopedic surgery; articular liners; cushion liners for artificial joints implants; sockets made of artificial materials for use as parts of artificial joint implants for orthopedic surgery; medical machines, apparatus and instruments, namely, orthopedic fixation devices used in orthopedic transplant and/or implant surgery; Electric massage apparatus for household purposes; Gloves for medical purposes; dental machines, apparatus and instruments, namely, dental X-RAY CT scanner, power tools, namely, [specify tools, e.g., dental drills]  for dental surgical use, instruments for fitting dental implants, namely, [specify instruments, e.g., dental bite trays]; Medical instruments, namely, orthopedic apparatus and instruments; Medical instruments, namely, orthopedic and neurosurgical apparatus and instruments; Medical diagnostic apparatus, analytical apparatus for medical purposes and blood pressure measuring apparatus; Bone densitometers being bone mineral density measuring apparatus for medical use; Testing apparatus for medical purposes for medical imaging recognition; artificial materials for use in the replacement of bones; Artificial bones for implantation, artificial bone parts to be implanted in natural bones; Dental implants; Orthopedic joint implants and their parts thereof; Artificial shoulder joint; Artificial foot joint; Artificial elbow joint; Artificial ear ossicle implants; Artificial vertebral body implants; Artificial intervertebral disc implants; Artificial knee bone implants; Artificial dental implant roots; Dentures; medical apparatus, namely, spine fixation devices; medical apparatus, namely, bone fixation plates; vacuum pumps for medical purposes; X-ray apparatus for medical and dental purposes; Digital X-ray apparatus for medical and dental purposes; X-ray CT scanners for medical and dental purposes; Orthopedic knee joint implants and parts thereof made of artificial materials; Orthopedic knee surgery apparatus and instruments

 

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See 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.

 

 

COLOR DESCRIPTION OF MARK

 

The drawing shows the applied-for mark in various colors, including white; however, the color claim and description of the mark do not reference the color white.  The color claim and description must be complete and reference all the colors in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  Therefore, applicant must clarify whether the color white is part of the mark or is used to indicate background, outlining, shading, and/or transparent areas.  TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

To clarify how white is being used in the mark, applicant may satisfy one of the following:

 

(1)        If white is a feature of the mark, applicant must amend the color claim to include the color and amend the description to identify where white appears in the literal and/or design elements of the mark.  The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors blue, black, gray and white are claimed as a feature of the mark.”

 

Description:  “The mark consists of two smaller spheres appearing in blue connected to a larger sphere appearing in blue above the word "Aquala" appearing in blue. The wording "Biomimetic technology" appears in black underneath the wording "Aquala". Underneath the wording "Biomimetic technology", appears the wording "KYOCERA" in black. To the left of the wording "KYOCERA" appears a geometric shape design in red which consists of triangles, squares, and other geometric shapes. All of the foregoing appears on a gray background with a white border inside a hexagon outlined in black.

(2)        If white is not a feature of the mark, applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark.  The following description is suggested, if accurate:

The mark consists of two smaller spheres appearing in blue connected to a larger sphere appearing in blue above the word "Aquala" appearing in blue. The wording "Biomimetic technology" appears in black underneath the wording "Aquala". Underneath the wording "Biomimetic technology", appears the wording "KYOCERA" in black. To the left of the wording "KYOCERA" appears a geometric shape design in red which consists of triangles, squares, and other geometric shapes. All of the foregoing appears on a gray background inside a hexagon outlined in black.  The color white represents background color and is not part of the mark. 

 

TMEP §807.07(d).

 

 

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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Michele-Lynn Swain/

Examining Attorney

Law Office 116

571-272-9232

michele.swain@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 08, 2019 for

U.S. Trademark Application Serial No. 88400296

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Michele-Lynn Swain/

Examining Attorney

Law Office 116

571-272-9232

michele.swain@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 08, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

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.”