Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  July 11, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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).

 

However, applicant must respond to the following requirement.

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

The wording “medical device for treating wounds and repairing soft tissue” is indefinite and potentially too broad, given that it is not clear what applicant means by “medical device.” See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, this wording could include wound dressings in International Class 5. See, e.g., U.S. Registration No. 5023201 (“medical devices for treating wounds, namely, wound dressings which facilitate healing”).

 

Moreover, the wording “natural biomaterials for soft tissue repair, wound management and dermal reconstruction” and “natural biomaterials for augmentation of soft tissue for medical purposes” is too broad. See TMEP §§1402.01, 1402.03. Natural, non-living biomaterials are classified in International Class 10, but natural biomaterials comprising living tissue are classified in International Class 5.

 

Finally, the wording “implants comprising living tissue,” “skin growth and repair media consisting of biological materials for medical purposes,” “implantable scaffolds and matrices comprising living tissue for tissue repair, wound management and dermal reconstruction,” and “regenerative products and materials for use in surgical procedures and wound management, namely, scaffolds and matrices made of biological materials for promoting and facilitating soft tissue growth, regeneration and repair” are misclassified in International Class 10; implants and similar goods made of living tissue and biological materials are classified in International Class 5. Applicant must adopt the appropriate international classification number for the goods identified in the application. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b). The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a).

 

The following are suggested formats for the amended identifications of goods:

 

CLASS 5: Medical device for treating wounds and repairing soft tissue, namely, {indicate specific Class 5 goods not already listed in the identification, e.g., wound dressings, medical adhesive strips for closing wounds}; natural biomaterials comprising living tissue for soft tissue repair, wound management and dermal reconstruction; natural biomaterials comprising living tissue for augmentation of soft tissue for medical purposes; implants comprising living tissue; skin growth and repair media consisting of biological materials for medical purposes; implantable scaffolds and matrices comprising living tissue for tissue repair, wound management and dermal reconstruction; regenerative products and materials for use in surgical procedures and wound management, namely, scaffolds and matrices made of biological materials for promoting and facilitating soft tissue growth, regeneration and repair

 

CLASS 10: Artificial biomaterials for soft tissue repair, wound management and dermal reconstruction; artificial biomaterials for augmentation of soft tissue for medical purposes; implants comprising natural, non-living materials; implants consisting of artificial materials; biodegradable soft tissue repair, wound management, and dermal reconstruction implants; permanent soft tissue repair, wound management, and dermal reconstruction implants; surgical implants and mesh made of synthetic materials for use in soft tissue repair or the reconstruction of soft tissue deficiencies; surgical implants and mesh made of artificial electrospun biomaterial for use in soft tissue repair or the reconstruction of soft tissue deficiencies; medical devices and apparatuses, namely, surgical implants or mesh made of artificial biomaterial for use in repair, reinforcement or buttressing of soft tissue, and parts and fittings therefor; surgical mesh comprised primarily of artificial materials; implantable scaffolds and matrices comprising artificial materials for soft tissue repair, wound management and dermal reconstruction; regenerative products and materials for use in surgical procedures and wound management, namely, synthetic scaffolds and matrices promoting and facilitating soft tissue growth, regeneration and repair; medical device for treating wounds and repairing soft tissue, namely, {indicate specific Class 10 goods not already listed in the identification, e.g., electronic medical appliances for wound healing}; natural, non-living biomaterials for soft tissue repair, wound management and dermal reconstruction; natural, non-living biomaterials for augmentation of soft tissue for medical purposes

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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 or add goods not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Therefore, in response to the requirement that applicant amend the identification of goods, applicant must either (1) restrict the amended identification to one class (i.e., the number of classes covered by the fee already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(a)  List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).

 

(b)  Submit a filing fee for each international class not covered by the fee already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See 15 U.S.C. §§1051(b), 1112; 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must explicitly address the requirement in this Office action by setting forth the necessary changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action  

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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.

 

• Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.

 

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

 

• 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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods. 37 C.F.R. §§2.6(a)(1)(v), 2.23(c); TMEP §820.04. However, in certain situations, 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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on July 11, 2019 for

U.S. Trademark Application Serial No. 88402086

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 July 11, 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.”