To: | Southern Implants (Pty) Ltd. (chitm@nixonpeabody.com) |
Subject: | U.S. Trademark Application Serial No. 88536825 - PROMAX - 075467-36US |
Sent: | August 20, 2019 11:58:25 AM |
Sent As: | ecom126@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88536825
Mark: PROMAX
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Correspondence Address: 70 W. MADISON STREET, 35TH FLOOR
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Applicant: Southern Implants (Pty) Ltd.
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Reference/Docket No. 075467-36US
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: August 20, 2019
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).
SUMMARY OF ISSUES: The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
I. SECTION 1 & 45 REFUSAL – SPECIMEN OF USE
Applicant’s specimen of use in this case comprises eight images of “labels bearing the mark” PROMAX in black lettering. The labels are not, however, affixed to applicant’s goods, packaging for those goods, or used in the manner of a point-of-sale display associated with the goods and with a means to purchase the goods. Applicant’s specimen of use therefore does not show the applied-for mark in use in commerce in connection with the applicant’s goods identified in International Class 10.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. 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. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
II. AMENDMENT REQUIRED – IDENTIFICATION OF GOODS
Indefinite Wording in Identification
The wording “screws retained crowns” in the
identification of goods is indefinite and must be clarified because the plural term “screws” renders the nature of the goods unclear. See 37 C.F.R.
§2.32(a)(6); TMEP §1402.01.
The wording “restorative tools for medical use, namely, screwdrivers, torque drivers, reamers, twist drills, implant burs, punch handles, wrenches and direction indicators” in the identification of goods is indefinite and must be clarified because the meaning of “restorative tools” is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggested Wording for Identification
Applicant may substitute the following wording, if accurate (note that added text is indicated with bold type, deleted text is indicated with a strike through, and suggested text is indicated with braces):
“Dental implants made of artificial materials; structural connectors for dental implants
and dental prosthetics, namely, abutment screws, screws retained crowns; restorative dental implant components, namely, abutments, impression copings, cover screws, retention screws, cover
sleeves, impression posts, dental implant analogs; surgical and restorative tools instruments for medical use, namely, screwdrivers, torque drivers, reamers, twist
drills, implant burs, punch handles, wrenches and direction indicators” in International Class 10.
Advisories – ID Manual and Scope of Amendments
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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click HERE to file a response to this non-final Office action
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.
/Carl A. Konschak/
Carl A. Konschak, Esq.
Examining Attorney
Law Office 126
(571) 270-3878
carl.konschak@uspto.gov