Offc Action Outgoing

TRACHPHONE

Atos Medical AB

U.S. Trademark Registration No. 88481950 - TRACHPHONE - 67706-999

To:	Atos Medical AB (tmdocketing@fishstewip.com)
Subject:	U.S. Trademark Registration No. 88481950 - TRACHPHONE - 67706-999
Sent:	03/17/20 01:29:24 PM
Sent As:	ecomitu@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

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

U.S. Application Serial No. 88481950

Mark: TRACHPHONE

Correspondence Address:

Michael D. Fishman

FISHMAN STEWART PLLC

800 Tower Drive - Suite 610

Troy MI 48098

Applicant: Atos Medical AB

Reference/Docket No. 67706-999

Correspondence Email Address:

tmdocketing@fishstewip.com

OFFICE ACTION

Issue date: March 17, 2020

On February 12, 2020, the United States Patent and Trademark Office (USPTO) received a request to amend the application filing basis to delete Section 1(b) and rely on Section 44(e) as the sole basis for registration. 15 U.S.C. §§1051(b), 1127(e). The application currently specifies both a filing basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e). However, applicant is notified that, the foreign registration on which this application is based will expire on April 14, 2020. The foreign registration must be in force at the time the United States issues a registration based on that foreign registration. 37 C.F.R. §2.34(a)(3)(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §1004.01(a).

Therefore, applicant must provide a certificate of renewal or other certification from the intellectual property office of the foreign country or a copy of the foreign registration that shows that the foreign registration has been renewed and will be in force at the time the registration issues in the United States. 37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a). If the certificate of renewal or other certification is not written in English, applicant must also provide an English translation. See 37 C.F.R. §2.34(a)(3)(iii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. See TMEP §1004.01(b).

Applicant must respond on or before (June 17, 2020) the expiration of the current time period for filing a statement of use or request for extension of time to file a statement of use.

If applicant does not respond to this letter within the time provided, the request to delete Section 1(b) filing basis will not be processed. Rather, the Section 44(e) filing basis will be deleted and the application will remain based solely on Section 1. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. As a result, and to avoid abandonment, applicant must continue to file requests for extension of time to file a statement of use or file a statement of use within the six-month period after the issuance of the notice of allowance or before expiration of a previously granted extension period. 37 C.F.R. §§2.88(a)-(b), 2.89(a)-(b).

If more time is required to secure the foreign renewal certificate or the applicant no longer intends to maintain the Section 1(b) filing basis, applicant may file a petition to the Director to delete the Section 1(b) basis immediately and restore jurisdiction to the examining attorney to suspend the application to await the renewal for the foreign registration. See 37 C.F.R. §2.146. Applicant may not reinsert the Section 1(b) filing basis.

How to respond: Post-Approval/Publication/Post-Notice of Allowance (NOA) Amendment Form.

Direct questions about this notice to the Intent-to-use staff member below.

/Lynette Patterson/

Lynette Patterson

Paralegal Specialist

ITU/Divisional Unit

(571) 272-9507

lynette.patterson@uspto.gov

U.S. Trademark Registration No. 88481950 - TRACHPHONE - 67706-999

To:	Atos Medical AB (tmdocketing@fishstewip.com)
Subject:	U.S. Trademark Registration No. 88481950 - TRACHPHONE - 67706-999
Sent:	03/17/20 01:29:24 PM
Sent As:	ecomitu@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

USPTO Official Notice

Office action (Official Letter) or Notice has issued
on 03/17/2020 for
U.S.Trademark Application Serial No. 88481950

Your trademark document has been reviewed by an Intent-to-use staff member. As part of that review, the assigned staff member has issued you an official letter or notice. If a response is required, you must respond by the specified deadline or your application will be abandoned. Please follow the steps below.

(1) Read the official letter or notice.

(2) Direct questions about the contents of the official letter or notice to the assigned staff member identified in the letter. 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) Response may be required. Carefully review the Office action to determine (1) if a response is required, (2) the applicable response time period, and (3) how to respond 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.

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 often use public information provided in USPTO trademark applications to mail and email trademark-related offers and notices-most of which require fees. These companies often have names similar to the USPTO. All official USPTO correspondence will only be emailed from the domain "@uspto.gov." For a current list of companies the USPTO has received complaints about, information on how to identify these offers and notices, and what to do if you receive one, see the misleading notices webpage.