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:  February 21, 2020

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on July 24, 2019 in connection with this application.  Based on the amended identification of goods submitted in applicant’s response, the trademark examining attorney now issues the following new requirement regarding the identification of goods.  See TMEP §§706, 711.02. 

 

In a previous Office action dated July 24, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to amend the identification of goods.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

            •  NEW ISSUES:  Identification of goods and Multiple class requirements

            •  Trademark Act, Section 2(d) refusal – maintained and continued

 

Applicant must respond to all issues raised in this Office action and the previous Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

IDENTIFICATION OF GOODS

 

In the prior Office action applicant was required to amend the indefinite wording “Fitted covers for medical equipment” by specifying the particular types of medical equipment.

 

However, the amended wording “Fitted covers for medical equipment, namely, c-Arms, laser arms, cameras, microscopes, fluoroscopes, light handles, lights, tables, and stands, and not including face shields” for International Class 10 now includes goods that are not and/or may not be Class 10 types of medical equipment. Therefore, the wording must be clarified because it is indefinite and/or too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Fitted covers are classified according to the area of use. For example, fitted covers for microscopes for medical research are in Class 9, and fitted covers for lighting installations used during medical procedures and exams, handles that are integral component parts of these lighting installations and stands for these lighting installations are all in Class 11. Furthermore, applicant must clarify the nature of the all the items for which the fitted covers are used.

Applicant may adopt the wording below, if accurate. Specific instructions for the applicant are in bold italics text and suggested amendments are in bold text. Wording that should be reclassified appear in bold strike. Where bold text appears without any instructions, the applicant should note that the wording is indefinite and/or overly broad and the suggested amendment in bold appears to accurately describe the goods.  If any of the examining attorney’s suggestions are not accurate, applicant is still required to amend the unacceptable wording to identify definite and properly classified goods.

Class 10: Fitted covers for medical equipment, namely, c-Arms being component parts of lasers for medical or surgical use, laser arms being component parts of lasers for medical or surgical use, medical imaging cameras, microscopes for surgical operations, fluoroscopes for medical or surgical use, light handles, lights {move to Class 11} and medical procedure and exam tables, and stands {move to Class 11}, and not including face shields

Class 11: Fitted covers for lighting installations used during medical and surgical procedures and exams, handles that are integral component parts for the foregoing lighting installations and stands adapted for the foregoing lighting installations, and not including face shields

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services 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.

 

MULTIPLE CLASSES

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in more than one class; however, applicant submitted a fee(s) sufficient for only one class(es).  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

TRADEMARK ACT, SECTION 2(d) REFUSAL

The likelihood of confusion refusal under Trademark Act, Section 2(d) is maintained and continued for the reasons stated in the prior Office action. Applicant’s argument is basically that because the goods are not identical, they are not related and do not travel in the same channels of trade to the same class of consumers.  Applicant failed to submit any evidence supporting its arguments and the examining attorney’s evidence submitted in the previous Office action clearly disproves the applicant’s arguments. In further support of the relatedness of the goods, attached is more Internet evidence showing that goods of the same and/or similar kind travel in the same channels of trade to the same class of consumers. The evidence was found using the GOOGLE® search engine at the following:

http://harmonycr.com/medical-supplies/exam-room-supplies/

(Harmony Lab and Safety Supplies offering variety of exam room supplies, including surgical and procedural disposable face masks and paper exam table covers)

 

http://www.henryschein.com/us-en/search.aspx?searchkeyWord=Covers

http://www.henryschein.com/us-en/Search.aspx?searchkeyWord=masks

(Henry Schein offering wide variety of covers for medical equipment and disposable face masks)

 

CLOSING

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

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

ADVISORY: USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form.  Current TEAS RF applicants will generally need to continue to meet similar application requirements.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7).  And current TEAS Regular applicants must now provide an email address when submitting documents through TEAS, will generally be sent correspondence electronically from the USPTO, and will pay a filing fee of $275 per class (instead of $400) when adding a class.  For more information about these changes, see the Mandatory Electronic Filing webpage. 

 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 February 21, 2020 for

U.S. Trademark Application Serial No. 88421296

 

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. 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 February 21, 2020, 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.”