To: | Gebr. Brasseler GmbH & Co. KG (trademarks@blankrome.com) |
Subject: | U.S. Trademark Application Serial No. 88533841 - PROCODILE - 125641.00231 |
Sent: | October 19, 2019 06:43:50 PM |
Sent As: | ecom117@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88533841
Mark: PROCODILE
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Correspondence Address:
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Applicant: Gebr. Brasseler GmbH & Co. KG
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Reference/Docket No. 125641.00231
Correspondence Email Address: |
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THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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: October 19, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
However, applicant must respond to the following requirement.
IDENTIFICATION OF GOODS REQUIRES AMENDMENT
The identification of goods requires amendment because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. For example, “instrument stands” is broad enough to include “musical instrument stands” in International Class 15. Therefore, applicant must provide greater specificity as to the goods listed in the identification.
Please note that, with respect to “trays (inserts, in particular work stands)” specifically, this wording is also not acceptable because it contains parentheses, which should not be used in identifications so as to avoid confusion with the USPTO’s practice of using parentheses in an affidavit of incontestability to indicate goods not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Because applicant’s parenthetical information does not serve this purpose, applicant must remove the parentheses from the identification and incorporate the parenthetical information into the description of the goods.
The following is the suggested format for the amended International Class 10 identification of goods:
Medical and dental apparatus and instruments, namely, {specify items, e.g., picks, burrs, mirrors}; Endodontic containers for holding dental apparatus and instruments in the nature of dental drills, dental burrs and dental files; Root canal instruments, namely, {indicate specific goods, e.g., root canal therapy instruments used to shave the inside of a root canal}; Root canal apparatus, namely, {indicate specific goods not already listed in the identification}; Dental files for filing and smoothing the surface of teeth and dental crowns; Dental root files used in root canal therapy procedures; Stands for holding dental instruments for root canals; Trays, namely, inserts for dental work stands; Root pins in the nature of pins for artificial teeth; Root pin systems comprised of {indicate components of the system, e.g., root pins of a variety of materials and of instruments in partially congruent form in connection therewith for the preparation of cavities in teeth}
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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 or add goods not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS
Applicant submitted a fee with the application sufficient for only one class of goods; however, as noted previously, the current identification may include goods in more than one class (e.g., International Classes 10 and 15). Therefore, in response to the requirement that applicant amend the identification of goods, applicant must either (1) restrict the amended identification to one class (i.e., the number of classes covered by the fee already paid), or, if classes added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:
(a) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(b) Submit a filing fee for each international class not covered by the fee already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONSE REQUIRED
For this application to proceed, applicant must explicitly address the requirement in this Office action by setting forth the necessary changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click to file a response to this non-final Office action
/Andrew Leaser/
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
RESPONSE GUIDANCE
Missing the response deadline to this letter will cause the application to abandon. A response must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.
Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.
The response must be signed by a U.S.-licensed attorney. Responses signed by an unauthorized party are not accepted and can cause the application to abandon.
If needed, find contact information for the supervisor of the office or unit listed in the signature block.