To: | M.I.Tech Co., Ltd. (docketing@steinip.com) |
Subject: | U.S. Trademark Application Serial No. 88410641 - CHOOSTENT - 0344.2007 |
Sent: | July 22, 2019 10:11:30 AM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88410641
Mark: CHOOSTENT
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Correspondence Address: |
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Applicant: M.I.Tech Co., Ltd.
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Reference/Docket No. 0344.2007
Correspondence Email Address: |
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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: July 22, 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).
FOREIGN REGISTRATION TRANSLATION REQUIREMENT
GOODS EXCEED SCOPE OF FOREIGN REGISTRATION
In this case, the U.S. application identifies the particular goods as follows: “equipment for inserting implants in blood vessels and body tissues, electrodes for medical use, probes for medical purposes, physiotherapy apparatus, bone cementation tools and equipment, urethral syringes, artificial pneumothorax, pharmaceutical apparatus and instruments, prosthetic instruments for dental purposes, medical guidewires.”
However, the foreign registration identifies the following goods: “implant.”
These goods in the U.S. application exceed the scope of goods in the foreign registration because the particular goods in the U.S. application are not implants. Thus, these goods in the U.S. application are not acceptable for the Section 44(e) filing basis and cannot be amended to correspond with the goods in the foreign registration.
Applicant may respond to this issue by satisfying one of the following:
(1) Amending the identification of goods in the U.S. application for the Section 44(e) filing basis to correspond with the goods identified in the foreign registration, if possible, to ensure that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Deleting the Trademark Act Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.
AMENDED IDENTIFICATION OF GOODS REQUIREMENT
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods, (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.
Applicant may substitute the following wording, if accurate:
Class 5: Implants composed of living tissue; surgical implants comprising living tissue
Class 10: Implants consisting of artificial materials; medical stents; prostheses to be implanted in blood vessels and body tissues; medical equipment for inserting implants in blood vessels and body tissues; permanent endoprostheses for medical purposes; prostheses for {specify type, e.g. breast, hand} for medical purposes; electrodes for medical use; probes for medical purposes; physiotherapy apparatus in the nature of {specify nature of goods, e.g. electric heating devices for curative treatment, foam rollers, etc.}; bone cementation tools and equipment, namely, {specify, e.g. surgical devices and instruments}; urethral syringes; artificial pneumothorax apparatus; medical pharmaceutical apparatus and instruments for {specify class 10 purpose, e.g. introducing pharmaceutical preparations into the human body}; prosthetic instruments for dental purposes; surgical implants comprising artificial material; medical guidewires
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ENTITY CLARIFICATION REQUIREMENT
If applicant is a limited company, applicant must amend the legal entity and provide the country under whose laws it is organized. TMEP §803.03(h). If applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization. See TMEP §803.03(c).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
/Raymond Lee/
Trademark Examining Attorney
Law Office 127
United States Patent & Trademark Office
raymond.lee@uspto.gov
571-272-5980
RESPONSE GUIDANCE