Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

Issue date:  March 18, 2020

 

This Office action is in response to applicant’s communication filed on February 19, 2020.

 

1.  Advisory – Requirement Satisfied:

The trademark examining attorney notes that the following requirement has been satisfied: (1) Country of Citizenship Requirement.  See TMEP §§713.02, 714.04. 

 

2.  Advisory – Final Refusal and Requirement:

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 5707813 and 5707814.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  In addition, the following requirement is now made FINAL:  (1) Identification of Goods / Recitation of Services Requirement.  See 37 C.F.R. §2.63(b).  Please see below for additional information.

 

3.  Final Refusal – Section 2(d) Refusal to Register – FINAL:

THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS AND SERVICES SPECIFIED THEREIN.  Please note that the refusal issued in the previous Office Action was limited to Classes 016, 041, 042, and 044.  Wording in those classes was written broadly enough to include goods classified other classes.  Accordingly, the goods in Class 009 in the application as amended are included in this Final Office Action.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5707813 and 5707814, owned by the same registrant.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Comparison of the Marks:

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

As to U.S. Registration Number 5707813:

The applicant’s mark is BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE.  The registrant’s mark is RMU BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE.  The only difference between the applicant’s mark and the registrant’s mark is that the registrant’s mark includes the acronym RMU.  This difference, however, is not enough to alter the overall commercial impression of the marks.

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Additionally, although applicant’s mark does not contain the entirety of the registered mark, they both include the identical wording BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Accordingly, because the marks both include the identical wording BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE, the marks are confusingly similar.

 

As to U.S. Registration Number 5707814:

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE and registrant’s mark is BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the Goods / Services:

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The applicant’s goods and services, for purposes of this refusal are, “Downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets, product descriptions, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare” in Class 009, “articles of paper or cardboard, namely, periodicals and books relating to pharmaceuticals and medicines, pharmaceutical and medicinal research and development, pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments, development; printed matter, namely, newspapers; printed instructional and teaching materials in the field of medicine; printed publications, namely newsletters, journals, books in the field of pharmaceuticals and pharmaceuticals research and development; printed matter, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; printed instructional and teaching materials, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare” in Class 016, “Education services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; training services, namely, training in pharmaceutical, medicinal or sanitary preparations or substances and the use and operation of medical apparatus; education and training services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; publication services, namely, publication of textbooks; publication services, namely, publication of printed matter in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; organisation and arrangement of lectures, seminars and symposiums for educational purposes; publication of electronic books, magazines, journals and web blogs; Non-downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets, product descriptions, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; advice and consultancy related to the aforesaid services” in Class 041, “Scientific and technological services in the fields of medicine, medical technology, pharmaceuticals, and healthcare , diagnostic services for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare and research related thereto; scientific research and development services; technological research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technological development services, namely, development of new technology for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare; design and development of computer hardware and computer software; design and development of computer hardware and computer software to assist in in the determination and development of pharmaceuticals and medicines; science and technology services, namely, medical and pharmaceutical research services; engineering services; product safety testing, authentication of materials and processes for medical, veterinary and nutritional purposes used in the fields of medicine, medical technology, pharmaceuticals, and healthcare and quality control for others; quality control of preparations and goods for medical, veterinary and nutritional purposes; chemical analysis and research; design and testing of new products for others; diagnostic testing and analysis, namely, remote diagnosis of medical diagnostic imaging, clinical and biomedical equipment for determining the need for repair; design and monitoring of clinical research and studies for the pharmaceutical and veterinary industries, namely, conducting clinical trials for others; virological scientific research; biological and biochemical research; genetic testing for scientific research purposes; genetic fingerprinting, namely, genetic mapping for scientific purposes; laboratory analysis in the fields of medicine, medical technology, pharmaceuticals, and healthcare; laboratory research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technical advisory services relating to medicine, medical technology, pharmaceuticals and healthcare; advice and consultancy related to the aforesaid services” in Class 042, and “Medical services; veterinary services; hygienic and beauty care services for human beings or animals; human healthcare services; human healthcare services in the nature of medical services, dentistry, pharmaceutical advice, opticians' services, mental health services; human hygiene and beauty care services; genetic testing for medical purposes; advice and consultancy related to the aforesaid services” in Class 044.

 

The registrant’s services are, “Educational services, namely, teaching, training, tutoring and courses of instruction at the undergraduate and graduate level”.

 

The applicant’s goods and services are related to the registrant’s services because these types of goods and services are offered at colleges and universities.  Accordingly, these types of goods and services travel through the same channels of trade to the same classes of purchasers.  Further, the registrant’s services are written broadly enough to encompass portions of the applicant’s services.  Specifically, the registrant’s teaching, training, tutoring and courses of instruction are not limited to a particular subject matter.  Therefore, these services encompass the applicants, “Education services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; training services, namely, training in pharmaceutical, medicinal or sanitary preparations or substances and the use and operation of medical apparatus; education and training services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use”.

 

Further, the attached Internet evidence, consisting of the websites of colleges and universities, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Additionally, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case.  This evidence shows that the goods and/or services listed therein, namely, providing college and grate level courses and magazines in the field of medicine, journals in the field of medicine, newsletters in the field of medicine, medical research, books in the field of medicine, periodicals in the field of medicine, instructional and teaching materials in the field of medicine, and scientific and medical research in the field of pharmaceuticals are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).

 

PLEASE NOTE:  Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

Accordingly, because the applicant’s mark and the registrant’s marks all contain the identical wording BIG ENOUGH TO MATTER SMALL ENOUGH TO CARE and the evidence demonstrates that the goods and services are overlapping and closely related, confusion as to source is likely and registration is refused under Section 2(d) of the Trademark Act.

 

Applicant argues, “It is clear that the goods and services, as amended in Section I above, do not sufficiently encompass or overlap with the instruction courses and training offered under the Cited Marks.  Here, based on the amended descriptions, Applicant offers training and seminars specifically related to the fields of medicine and pharmacy.  The education services that Applicant offers are not specifically tied to course and training at the undergraduate and graduate level, as set forth in the Cited Marks, but instead, the seminars and conferences are outside of the undergraduate and graduate system and relate specifically to the medical field.”  This argument, however, is not persuasive.  Specifically, the registrant’s educational services are not limited to any field.  Accordingly, the registrant’s educational services include classes in the fields of medicine and pharmacy.  Because the marks include identical wording and the registrant’s educational services are written broadly enough to encompass the applicant’s educational services, registration is refused under Section 2(d) of the Trademark Act.

 

Applicant argues, “Applicant’s goods and services are directed towards consumers in the medical field for medical and veterinary purposes.  The education and training services, specifically the conferences and seminars and the printed materials are directed towards professionals in the medical and veterinary field.  It is intended that consumers of Applicant’s goods and services use such goods and services as additional training.  On the other hand, the educational services offered under the Cited Marks are related to undergraduate and graduate students attending a university.”  This argument, however, is not persuasive.  Specifically, the applicant’s goods and services do not limit the intended consumer in any way.  Further, even if applicant limited the goods and services to a particular type of consumer, this would not overcome the refusal as the consumers of the registrant’s services are not limited in any way.  Accordingly, because the marks include identical wording and the registrant’s educational services are written broadly enough to encompass the applicant’s educational services, registration is refused under Section 2(d) of the Trademark Act.

 

Applicant argues that consumers of applicant’s goods and services are sophisticated.  This argument, however, is not persuasive.  Specifically, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).  Accordingly, because the marks include identical wording and the registrant’s educational services are written broadly enough to encompass the applicant’s educational services, registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

4.  Final Requirement – Identification of Goods / Recitation of Services – FINAL:

A written application must specify the particular goods and/or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  15 U.S.C. §§1051(a)(2)  and 1051(b)(2); 37 C.F.R. §2.32(a)(6).  To "specify" means to name in an explicit manner.  The identification should set forth common names, using terminology that is generally understood.  The identification of goods and/or services must be specific, definite, clear, accurate, and concise.   See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986) , rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); The Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966) ; California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm’r Pats. 1954); Ex parte The A.C. Gilbert Co., 99 USPQ 344 (Comm’r Pats. 1953).  TMEP §1402.01.

 

As to International Class 009:

The wording “Downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets, product descriptions, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare” in the identification of goods must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, the wording “product descriptions” is not acceptable as product descriptions are not a type of publication.  Accordingly, this wording must be deleted.

 

As to International Class 010:

The wording “Medical apparatus and instruments, namely, apparatus for the prevention, curing, and treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, pharmaceutical and medicinal substances for the prevention, curing, and treatment of allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders” in the identification of goods must be clarified because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

Specifically, applicant must clarify what apparatus the applicant is providing that prevents, cures, and treats a wide variety of ailments.  For example, this wording encompasses “dropping pipettes for medical purposes” in Class 010 as well as, “Diagnostic apparatus for the detection of cancer” in Class 010.  Please identify the apparatus by common commercial or generic name.  Please note that the term “apparatus” is not acceptable as used in the applicant’s amended identification of goods as it could include almost any item in Class 010 in the Identification of Goods and Services manual.  Applicant must specifically identify the common commercial or generic name of the items that applicant provides in International Class 010. 

 

Additionally, the wording includes “pharmaceutical and medicinal substances for the prevention, curing, and treatment of allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders” which are goods that are properly classified in International Class 005.  Accordingly, this wording must be deleted from International Class 010.

 

The wording “medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances, namely, medical apparatus for preparing and storing pharmaceutical or medicinal preparations and delivering pharmaceutical or medicinal preparations onto or into the human body” in the identification of goods must be clarified because it is unclear what goods the applicant is providing.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Please identify the goods by common commercial or generic name.  Please note that applicant may state, “medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances, namely, medical apparatus for introducing pharmaceutical or medicinal preparations into the human body” in Class 010, if accurate.

 

The wording “medical apparatus and instruments containing chemical substances for use in human medicine, namely, medical apparatus for preparing and storing chemical substances and delivering chemical substances onto or into the human body” in the identification of goods must be clarified because it is indefinite  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Please identify the goods by common commercial or generic name.  Please note that applicant may state, medical apparatus and instruments containing chemical substances for use in human medicine, namely, medical apparatus for introducing pharmaceutical or medicinal preparations into the human body” in Class 010, if accurate.

 

As to International Class 016:

The wording “articles of paper or cardboard, namely, periodicals and books relating to pharmaceuticals and medicines, pharmaceutical and medicinal research and development, pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments, development” in the identification of goods must be clarified because it is indefinite.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Specifically, applicant must indicate that the periodicals are “printed periodicals”.  Additionally, the subject matter of “development” is unclear.  Please clarify the subject matter of the periodicals and books for the record.

 

The wording “packaging materials made of cardboard, foil, plastics and paper” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “flexible metal foils packaging materials for use in the manufacture of pouches, bags and lids” is properly classified in International Class 006.  Additionally, “packaging materials made from plastics” is overly broad.  Applicant may state “Plastic film for use as a packaging material for general use” in Class 016, however, “commercial packaging materials, namely, corrugated plastic bins” are properly classified in International Class 020.  Please clarify the goods for the record and classify appropriately. 

 

As to International Class 019:

The wording “Packaging materials made from plastics, foil, paper or cardboard” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “Plastic film for use as packaging material for general use” is properly classified in International Class 016, “flexible metal foils packaging materials for use in the manufacture of pouches, bags and lids” is properly classified in International Class 006”, and “packaging materials made of cardboard and paper” is properly classified in International Class 016.  Please clarify the goods for the record and classify appropriately. 

 

As to International Class 035:

The wording “product demonstrations and product display services namely, product promotion, marketing and merchandising for others in the nature of inventory display, conference presentations and displays” in the identification of services is indefinite and must be clarified because it is unclear what services the applicant is providing.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id. 

 

As to International Class 041:

The wording “Non-downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets, product descriptions, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “product descriptions” is not acceptable as product descriptions are not a type of publication.  Accordingly, this wording must be deleted.

 

As to International Class 042:

The wording “Scientific and technological services in the fields of medicine, medical technology, pharmaceuticals, and healthcare , diagnostic services for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare and research related thereto” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, applicant must identify the specific scientific and technological services that applicant provides and classify appropriately. 

 

The wording “authentication of materials and processes for medical, veterinary and nutritional purposes used in the fields of medicine, medical technology, pharmaceuticals, and healthcare and quality control for others” in the identification of services is indefinite and must be clarified because it is unclear what services the applicant is providing.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please identify the services by common commercial or generic name and classify appropriately. 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 005:

Pharmaceutical, medicinal, veterinary preparations and substances, namely systemic anti-infectives, pharmaceutical and medicinal substances for the prevention, curing, and treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders; pharmaceutical and medicinal substances for the prevention, curing, and treatment of allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; sanitary preparations and substances, namely, sanitary sterilizing preparations; chemical substances for use in human or veterinary medicine, namely, chemical preparations and reagents for medical purposes namely the treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; substances used for medical and/or pharmaceutical purposes, namely, pharmaceutical preparations for the treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders, allergies, inflammation, pain, infectious diseases, blood diseases and disorders, nervous system diseases and disorders, malignant neoplastic diseases and disorders, and immunomodulating agent diseases and disorders; dietetic substances for medical purposes, namely, dietetic foods adapted for medical purposes.

 

International Class 006:

Packaging materials, namely, flexible metal foils packaging materials for use in the manufacture of pouches, bags and lids.

 

International Class 009:

Downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, and instructional worksheets, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare.

 

International Class 010:

Medical apparatus and instruments, namely, {please identify the name of the apparatus by common commercial or generic name} for the prevention, curing, and treatment of viral, metabolic, alimentary, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, hepatological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, parasitic, psychiatric, and immune system related diseases and disorders; medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances, namely, medical apparatus for introducing pharmaceutical or medicinal preparations into the human body; medical apparatus and instruments containing chemical substances for use in human medicine, namely, medical apparatus for introducing pharmaceutical or medicinal preparations into the human body.

 

International Class 016:

Paper; cardboard; articles of paper or cardboard, namely, printed periodicals and books relating to pharmaceuticals and medicines, pharmaceutical and medicinal research and development, pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, and medical apparatus and instruments; boxes of cardboard or paper; printed matter, namely, newspapers; stationery; printed instructional and teaching materials in the field of medicine; printed publications, namely newsletters, journals, books in the field of pharmaceuticals and pharmaceuticals research and development; packaging materials made of cardboard and paper; plastic film for use as packaging material for general use; printed matter, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; printed instructional and teaching materials, namely, printed books, booklets, journals, magazines, newspapers, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, instructional worksheets all in the fields of medicine, medical technology, pharmaceuticals, and healthcare.

 

International Class 020:

Commercial packaging materials, namely, corrugated plastic bins.

 

International Class 035:

Advertising; business management; business administration; providing office functions; marketing and promotional services, namely, promoting and marketing the goods and services of others by distributing advertising material, coupons and discount offers via printed materials and electronic means; public relations services; product demonstrations and product display services namely, promotion the goods of others, marketing services and product merchandising for others in the nature of inventory display and shelf arrangement; organisation of trade shows and trade exhibitions for business purposes; distribution of advertising, marketing and promotional material; retail and wholesale store services featuring pharmaceutical, medicinal, sanitary and veterinary preparations and substances, chemical substances for use in human or veterinary medicine, medical apparatus and instruments; business consultancy and advisory services; business analysis, research and information services; advice and consultancy related to the aforesaid services.

 

International Class 040:

Custom manufacture of pharmaceutical, medicinal, sanitary and veterinary preparations and substances; Custom manufacture of chemical substances for use in human or veterinary medicine; Custom manufacture of medical apparatus and instruments; Custom manufacture of medical apparatus and instruments containing pharmaceutical, medicinal or sanitary preparations or substances; Custom manufacture of medical apparatus and instruments containing substances for human or veterinary use; advice and consultancy related to the aforesaid services.

 

International Class 041:

Education services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; training services, namely, training in pharmaceutical, medicinal or sanitary preparations or substances and the use and operation of medical apparatus; education and training services, namely, providing seminars, conferences and training classes in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; publication services, namely, publication of textbooks; publication services, namely, publication of printed matter in the fields of medicine, medical technology, pharmaceuticals, and healthcare and in the use and preparation of pharmaceutical, medicinal or sanitary preparations or substances for human or veterinary use; organisation and arrangement of lectures, seminars and symposiums for educational purposes; publication of electronic books, magazines, journals and web blogs; Non-downloadable electronic publications in the nature of articles, papers, books, booklets, journals, magazines, newsletters, periodicals, pamphlets, brochures, manuals, leaflets, informational flyers, informational sheets and newsletters, and instructional worksheets, all in the fields of medicine, medical technology, pharmaceuticals, and healthcare; advice and consultancy related to the aforesaid services.

 

International Class 042:

Scientific and technological services, namely, scientific research and development services; technological research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technological development services, namely, development of new technology for others in the fields of medicine, medical technology, pharmaceuticals, and healthcare; design and development of computer hardware and computer software; design and development of computer hardware and computer software to assist in in the determination and development of pharmaceuticals and medicines; science and technology services, namely, medical and pharmaceutical research services; engineering services; product safety testing; quality control of preparations and goods for medical, veterinary and nutritional purposes; chemical analysis and research; design and testing of new products for others; diagnostic testing and analysis, namely, remote diagnosis of medical diagnostic imaging, clinical and biomedical equipment for determining the need for repair; design and monitoring of clinical research and studies for the pharmaceutical and veterinary industries, namely, conducting clinical trials for others; virological scientific research; biological and biochemical research; genetic testing for scientific research purposes; genetic fingerprinting, namely, genetic mapping for scientific purposes; laboratory analysis in the fields of medicine, medical technology, pharmaceuticals, and healthcare; laboratory research in the fields of medicine, medical technology, pharmaceuticals, and healthcare; technical advisory services relating to medicine, medical technology, pharmaceuticals and healthcare; advice and consultancy related to the aforesaid services.

 

International Class 044:

Medical services; veterinary services; hygienic and beauty care services for human beings or animals; human healthcare services; human healthcare services in the nature of medical services, dentistry, pharmaceutical advice, opticians' services, mental health services; human hygiene and beauty care services; genetic testing for medical purposes; advice and consultancy related to the aforesaid services.

 

Applicant’s goods and/or services 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.  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 and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

Requirements for a Multiple Class Application:

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 eleven classes; however, applicant submitted a fee(s) sufficient for only ten 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.

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

5.  Advisory – Assistance:

Please 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. 

 

PLEASE NOTE:  If applicant requires assistance navigating the online response form, applicant should contact the Trademark Assistance Center at 571-272-9250.

 

6.  Advisory – Proper Response to a Final Action:

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Colleen Dombrow/

Trademark Attorney

Law Office 101

571-272-8262

colleen.dombrow@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 March 18, 2020 for

U.S. Trademark Application Serial No. 88452719

 

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. 

 

 

/Colleen Dombrow/

Trademark Attorney

Law Office 101

571-272-8262

colleen.dombrow@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 March 18, 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.”