To: | Oasis Medical, Inc. (efiling@knobbe.com) |
Subject: | U.S. Trademark Application Serial No. 88510727 - OASIS TEARS - OASMD.123T |
Sent: | September 30, 2019 09:41:32 AM |
Sent As: | ecom123@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88510727
Mark: OASIS TEARS
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Correspondence Address: KNOBBE, MARTENS, OLSON & BEAR, LLP
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Applicant: Oasis Medical, Inc.
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Reference/Docket No. OASMD.123T
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: September 30, 2019
INTRODUCTION
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).
In this case, applicant must disclaim the wording "TEARS" in the mark because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a function or feature of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The Lexico Dictionary defines "TEARS", in applicant's mark, as a "drop of clear salty liquid secreted from glands in a person's eye when they cry or when the eye is irritated." See attached definition. Applicant’s websites explain its goods are also called “artificial tears” used to treat dry eyes. See attached website excerpts from http://oasismedical.com/, http://www.oasistears.com/. Applicant describes its goods by stating, it “is a mild solution that keeps tears on the eye surface to relieve the dry, burning, irritated sensation that is commonly experienced with dry eye disease.” See attached website excerpt from http://oasismedical.com/ (emphasis added). Thus, the wording merely describes a function or feature of applicant’s goods, namely, eye drops functioning as artificial “TEARS”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use "TEARS" apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant may substitute the following wording, if accurate, with suggested amendments in bold:
Class 5: Eye drops; Ophthalmic pharmaceutical preparations, namely, viscoelastic solutions; viscoelastic surgical fluid for use during ophthalmic surgical procedures; Eye patches for medical purposes, namely, bandages and patches made of collagen for veterinary use; Eye patches for medical purposes, namely, bandages and patches for placement on the eye; Medicated eyelid cleansers; Medicated eyelid cleansers, medicated pre-moistened wipes, and medicated facial cleansers, namely, foams, solutions, creams, gels, lotions and ointments for eyelid cleansing and removal of encrustation and other foreign matter from the eyelids, eyelashes, and periocular area; antiseptic wipes; antibacterial wipes; Antibacterial cleansers in the nature of antibacterial wipes; antiseptic gel; antibacterial gel; Antibacterial cleansers in the nature of antibacterial gels; antiseptic spray; antibacterial spray; Antibacterial cleansers in the nature of antibacterial sprays; Dietary and nutritional supplements; Nutritional supplements; Nutritional supplements for ocular wellness; Nutritional supplements for promoting healthy eyes and vision; Nutritional supplements for treating dry eyes; Dietary supplements and nutritional supplements for antioxidant, anti-inflammatory, and treating vision issues; nutritional and herbal supplements to treat eyesight problems and to improve vision
Class 9: Eye covers for protective purposes, namely, permeable protective eye coverings and protective collagen eye coverings
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 by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least two classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 5; and applicant needs a specimen for class 9. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
UNSIGNED APPLICATION
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b), (c), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.59(a). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
RESPONSE GUIDELINES
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. 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
If applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.
Matthew Howell
/Matthew Howell/
Examining Attorney
Trademark Law Office 123
(571)270-0992
matthew.howell@uspto.gov
RESPONSE GUIDANCE