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:  August 15, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Amendment to the Identification of Goods and Services Required - Partial
• Multiple-Class Application Requirements

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).

 

AMENDMENT TO THE IDENTIFICATION OF GOODS AND SERVICES – PARTIAL

 

The following applies to only the entries identified below.

 

As further explained below, the wording used to describe many of the applied-for goods needs clarification because it is indefinite, overbroad, or contains vague wording that must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Specifically, applicant should note the following issues:

 

• The wording “software” appearing in Class 9 is overly broad as it could encompass both downloadable software in Class 9 as well as providing online non-downloadable software in Class 42, and as such, the nature of the software goods and/or services must be further clarified.
• The language “medical implants consisting of artificial materials for collecting, receiving, sending, storing, preparing, controlling, analyzing and processing of data and energy to and from said medical implants” must further clarify the nature of the medical implants being provided.

 

Further, where highlighted below, applicant has included the term “and/or” or “or” in the identification of goods and/or services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, the use of “or” in applicant’s identification of goods makes it unclear whether applicant is using the mark on all the identified goods.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “or” deleted and the goods or services specified using definite and unambiguous language. 

 

Full Suggested Identifications

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services require clarification. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

Suggested amendments appear below. Please note that the suggestions are in bold, explanatory information is in brackets, suggested removal of language is in strikethrough typeface and notations are in italicized parentheses.

 

Applicant may substitute the following wording if acceptable and accurate:

 

In Class 9:

 

“Apparatus, devices and instruments, all not used in direct association with active implants, for measuring, receiving, sending, checking, controlling, driving, transferring, transmitting, processing, analyzing, conducting, switching, transforming, accumulating, and regulating electricity, energy and/or data, including physical parameters, namely, electronic storage devices in the nature of blank memory discs, memory cards and data storage media, namely, packaged semiconductors, electronic control unit and programmer which controls the working parameters of wireless communication systems and wireless powering systems, chargers in the nature of battery chargers, digital chargers and electronic chargers, electronic transmitters and electronic receivers of electronic signals, and electronic circuits; remote controls for wireless controlling, and programming wireless charger apparatus for wireless energizing and control stations for wireless controlling, programming and energizing of active implants; Downloadable computer software, in particular for active medical implants, for measuring, receiving, sending, checking, transferring, calculating, processing, controlling, presenting and analyzing of data, namely, data about electricity, energy, physical parameters, and communication and programming data in medical implants; Downloadable computer software, in particular for measuring, receiving, sending, checking, transferring, calculating, processing, controlling, presenting and analyzing of data, namely, data about electricity, energy, physical parameters, communication and programming data in apparatus, devices and instruments for communicating with, energizing and programming of medical implants; and data processing equipment and computers”

 

In Class 10:

 

“Medical and surgical apparatus, instruments and devices, including active and non-active medical implants, namely, medical implants comprised of artificial material; medical and surgical apparatus, instruments and devices intended for use inside the mammal or human body, in particular manual, electrical or a combination of manual and electrical apparatus, devices and instruments, in all goods including medical hydraulic, mechanical, and pneumatic apparatus, devices and instruments, namely, medical implants comprised of artificial material; medical and surgical apparatus, instruments and devices for replacing and adding one or more bodily functions and parts inside the body, namely, medical implants comprised of artificial material; medical and surgical apparatus, instruments and devices designed for wireless programming, wireless controlling, wireless communicating and wireless energizing, namely, active implants in the nature of implants consisting of artificial materials, and a wireless transmitter and a receiver as an integral component of a surgical implant; wireless communication systems, apparatus, devices, and instruments and wireless energizing systems, apparatus, devices, and instruments for measuring, receiving, sending, switching, transforming, accumulating, regulating, storing, checking, controlling, driving, transferring, transmitting, processing and analyzing, in all the applicable aforementioned goods, of data including physical parameters, electricity, energy and data, namely, electronic transmitters for communicating with, and energizing of, and used in direct association with, active medical implants consisting of artificial materials; surgical instruments in particular to be used during operations of active or non-active medical implants; veterinary medical and surgical apparatus, instruments and devices, for use in implant surgeries; medical and surgical apparatus, instruments and devices for orthopaedic joint implants; and medical implants consisting of artificial materials for collecting, receiving, sending, storing, preparing, controlling, analyzing and processing of data and energy to and from said medical implants”

 

In Class 42:

 

“{specify type of software services in Class 42, e.g., Providing on-line non-downloadable, Software as a service (SAAS) services featuring, etc.} software, in particular for active medical implants, for measuring, receiving, sending, checking, transferring, calculating, processing, controlling, presenting and analyzing of data, namely, data about electricity, energy, physical parameters, and communication and programming data in medical implants; {specify type of software services in Class 42, e.g., Providing on-line non-downloadable, Software as a service (SAAS) services featuring, etc.} software, in particular for measuring, receiving, sending, checking, transferring, calculating, processing, controlling, presenting and analyzing of data, namely, data about electricity, energy, physical parameters, communication and programming data in apparatus, devices and instruments for communicating with, energizing and programming of medical implants”

 

In Class 44:

 

“Health care services, namely, providing a medical, surgical and health database featuring medical, surgical, and health information relating to medical implants that has been input, collected, received, prepared, controlled, programmed, calculated, and analyzed, from medical implants, remote controls or control stations for use by medical, surgical and health professionals for the purposes of monitoring and diagnosing medical conditions; medical and surgical services, namely, implantation of artificial implants for collecting, sending, receiving, storing, preparing, controlling, presenting, calculating, analyzing, and processing of data to and from patients, to and from medical implants, to and from remote controls, wireless charger apparatus, and and/or control stations for active implants; medical and surgical services, namely, artificial implantation of medical implants for programming, controlling, communicating with and and/or energizing of active implants; and medical and surgical services, namely, artificial implantation services for persons having a medical related condition and being candidates for or and being operated on with an active or a and non-active implants”

 

Scope Advisory and Identification of Manual Reference

 

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-CLASS APPLICATION REQUIREMENTS

 

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 at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 classes.  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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

COMMUNICATIONS WITH THE TRADEMARK OFFICE

 

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  

 

 

Lauren Roncoroni

/Lauren Roncoroni/

Trademark Examining Attorney

Law Office 109

Phone: (571) 270-5661

Lauren.Roncoroni@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 August 15, 2019 for

U.S. Trademark Application Serial No. 88442551

 

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. 

 

 

Lauren Roncoroni

/Lauren Roncoroni/

Trademark Examining Attorney

Law Office 109

Phone: (571) 270-5661

Lauren.Roncoroni@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 August 15, 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.”