Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 29, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues that the Applicant Must Address

 

1)      Significance of Lettering in the Mark is Required

2)      Amended Identification of Goods and Services is Required

3)      Dual Basis – Copy of Foreign Registration is Required

4)      Attorney Bar Information is Required

5)      Attorney Attestation is Required

 

SIGNIFICANCE OF LETTERING IN THE MARK IS REQUIRED

 

To permit proper examination of the application, applicant must explain whether the letters in the mark “CDR” have any significance in the relevant trades or industries, or as applied to applicant’s goods and/or services, or if such letters represent a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

AMENDED IDENTIFICATION OF GOODS AND SERVICES IS REQUIRED

 

A.    International Class 5

 

The wording “coating materials for surgical implants” in the identification of goods is indefinite and must be clarified because additional information is required about the coating materials.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, the applicant may identify these goods as “antimicrobial coatings to treat the growth of mold, mildew, bacteria and fungus on surgical implants” and/or “drug delivery agents in the form of a coating for surgical implants that facilitate the delivery of a wide range of pharmaceuticals.”

 

B.     International Class 10

 

The wording “Surgical and/or medical apparatus and/or instruments, instruments and/or apparatus for orthopaedic surgery, instruments and/or apparatus for trauma surgery” in the identification of goods is indefinite and must be clarified because (1) additional information is required about the goods identified as “Surgical and/or medical apparatus and/or instruments” and (2) the use of the term “or” in the identification is unacceptable because it identifies goods in the alternative which the mark may or may not be used upon.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant may identify these goods as “surgical and medical apparatus and instruments for {specify the type of surgery} surgery,” “instruments and apparatus for orthopaedic surgery,” and “instruments and apparatus for trauma surgery.”

 

The wording “implants for trauma surgery” 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.  In particular, this wording could encompass “implants for trauma surgery comprised of living tissue” classified in International Class 5 and “implants for trauma surgery comprised of artificial materials” in International Class 10.

 

The wording “special-purpose instruments for inserting implants” in the identification of goods is indefinite and must be clarified because the applicant must specify that these are surgical in nature.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For instance, the applicant may identify these goods as “special-purpose surgical instruments for inserting implants.”

 

The wording “orthopaedic articles” in the identification of goods is indefinite and must be clarified because the types of articles must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, these goods may be identified as “orthopaedic soles,” “orthopaedic belts,” “orthopaedic hip prostheses,” and/or “orthopaedic walkers.”

 

C.     International Class 40

 

The wording “manufacture of surgical special purpose instruments for inserting implants” in the identification of services is indefinite and must be clarified because these manufacturing services must either be “custom” or “to order and/or specification of others.”  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, these services may be identified as “custom manufacture of surgical special purpose instruments for inserting implants” or “manufacture of surgical special purpose instruments for inserting implants to order and/or specification of others.”

 

D.    International Class 41

 

The wording “Education; training; the aforementioned services including organization, conducting, arranging and managing of seminars and workshops in the field of orthopaedic surgery, in particular in the field of trauma surgery, of spinal surgery” in the identification of services is indefinite and must be clarified because the use of semi-colons after “education” and “training” designate separate services from those identified as “the aforementioned services including . . . .  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant may acceptably identify these services as “Educational training services, namely, arranging, conducting and organization of seminars and workshops in the field of orthopaedic surgery, in particular in the field of trauma surgery and spinal surgery.”  Please note that the term “including” was deleted because it suggests there are other educational and training services that were not identified.  Furthermore, the term “managing” was removed from the proposed identification because it could include services otherwise classified in International Class 35. 

 

The wording “providing electronic publications, publication of texts (other than publicity texts)” in the identification of services is indefinite and must be clarified because additional information is required about these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Furthermore, applicants should not use parentheses in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses in registrations to indicate services that have been deleted from registrations or in an affidavit of incontestability to indicate services 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.  Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.  For example, these services may be identified as “non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}” and “electronic publishing services, namely, publication of text works of others on {indicate format, e.g., CD, DVD, on-line} featuring {indicate specific subject matter}.”

 

The wording “film and video production, namely providing and compilation of texts and images on video film, DVDs and similar electronic data carriers, included in class 41, all in the field of field of orthopaedic surgery, in particular in the field of trauma surgery, of spinal surgery” in the identification of services is indefinite and must be clarified because the wording “included in class 41” must be deleted from the identification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The applicant may identify these services as “film and video production, namely, providing and compilation of texts and images on video film, DVDs and similar electronic data carriers, all in the field of field of orthopaedic surgery, in particular in the field of trauma surgery and spinal surgery.”

 

E.     International Class 42

 

The wording “Scientific and technological services and research and design relating thereto” in the identification of services is indefinite and must be clarified because additional information is required about these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, these services may be identified as “scientific and technological services, namely, research and design in the field of {insert computer-related field, e.g., computer networking hardware, computer datacenter architecture, etc.}.”

 

The wording “Industrial analysis and/or research, technical consultancy, technical project planning, technical project management,” in the identification of services is indefinite and must be clarified because additional information is required about these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, “industrial analysis and/or research” services may be identified as “industrial analysis and research in the field of {indicate field or goods that are subject of the analysis and research}.”  “Technical consultancy” may be identified as “technical consulting services in the field of {indicate field or subject matter of technical consulting}.”  Please note that the classification of these services depends on service-related field or subject matter.  “Technical project planning” and “technical project management” may be identified as “engineering services, particularly technical project planning and design engineering of lines for {please specify field of use, i.e., the processing of web products}” and “consulting services for others in the field of design, planning, and implementation project management of {indicate Class 42 subject matter, e.g., scientific research, clinical trials, computer software testing, etc.}.”

 

The wording “material development, material testing, providing of technical know how” in the identification of services is indefinite and must be clarified because additional information is required about these services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  For example, these services may be identified as “development and testing services in the field of {specify type of materials} materials for {specify field of use, i.e., medical, scientific, and technological applications}.”  Based upon the information in the current record, the nature of the services identified as “providing of technical know how” cannot be ascertained and therefore an acceptable identification cannot be suggested.

 

F.      International Class 44

 

The services identified in this international class are acceptable as worded.

 

The applicant may adopt the following amended identification of goods and services, if accurate:

 

International Class 5:  Orthopedic implants, namely biological bone and skin tissue intended for subsequent implantation, surgical implants comprising living tissue, bone cement for medical purposes; and antimicrobial coatings to treat the growth of mold, mildew, bacteria and fungus on surgical implants.

 

International Class 10:  Surgical and medical apparatus and instruments for {specify the type of surgery} surgery; instruments and apparatus for orthopaedic surgery; instruments and apparatus for trauma surgery; implants for trauma surgery comprised of artificial materials; surgical implants of artificial materials; special-purpose surgical instruments for inserting implants, bone implants of artificial materials, spinal implants of artificial materials, medical guidewires, orthopaedic articles, namely, orthopaedic soles, orthopaedic belts, orthopaedic hip prostheses, and orthopaedic walkers.

 

International Class 40:  Custom-manufacture of medical and/or surgical apparatus and/or instruments, custom-manufacture of surgical and/or orthopaedic implants, custom manufacture of surgical special purpose instruments for inserting implants.

 

International Class 41:  Educational training services, namely, arranging, conducting and organization of seminars and workshops in the field of orthopaedic surgery, in particular in the field of trauma surgery and spinal surgery; conducting training courses in the field of use of instruments and implants for orthopaedic surgery, in particular for trauma surgery and spinal surgery; non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}; electronic publishing services, namely, publication of text works of others on {indicate format, e.g., CD, DVD, on-line} featuring {indicate specific subject matter}; editing and publishing of printed matter; film and video production, namely, providing and compilation of texts and images on video film, DVDs and similar electronic data carriers, all in the field of field of orthopaedic surgery, in particular in the field of trauma surgery and spinal surgery.

 

International Class 42:  Scientific and technological services, namely, research and design in the field of {insert computer-related field, e.g., computer networking hardware, computer datacenter architecture, etc.}; industrial analysis and research in the field of {indicate field or goods that are subject of the analysis and research}; technical consulting services in the field of {indicate field or subject matter of technical consulting}; engineering services, particularly technical project planning and design engineering of lines for {please specify field of use, i.e., the processing of web products}; consulting services for others in the field of design, planning, and implementation project management of {indicate Class 42 subject matter, e.g., scientific research, clinical trials, computer software testing, etc.}; development of surgical and/or orthopaedic articles, development of implants and/or instruments for inserting implants; development and testing services in the field of {specify type of materials} materials for {specify field of use, i.e., medical, scientific, and technological applications}.

 

International Class 44:  Medical services, in particular procedures for anchoring bone implants in a bone.

 

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.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

DUAL BASIS – COPY OF FOREIGN REGISTRATION IS REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

ATTORNEY BAR INFORMATION IS REQUIRED

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

ATTORNEY ATTESTATION IS REQUIRED

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

SEARCH RESULTS

 

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).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

RESPONSE TO 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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@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 August 29, 2019 for

U.S. Trademark Application Serial No. 88545723

 

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. 

 

 

/Tina L Snapp/

Examining Attorney

Law Office 116

571-272-9224

Informal Email Tina.Snapp@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 August 29, 2019, 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.”