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:  October 22, 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.

 

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).

 

Identification of Goods

 

The identification of goods is indefinite and must be clarified because the nature of some of the items is unclear as noted below.  The phrase “medical devices for access of devices, instruments, or cannula…” is indefinite because it is unclear whether this refers to devices that permit users to access and manipulate other devices that will be inserted into body cavities, or if it refers to the actual devices that are inserted and used for the delivery and removal of fluids and tissue samples.  

 

The wording “catheters incontinence devices and access for devices for incontinence” is unacceptably indefinite because it is unclear if it refers to one type of device or multiple items.  The applicant must amend this wording to specify the item(s) by common commercial name. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

Applicant may adopt the following identification, if accurate: 

 

Class 3:

 

Incontinence wipes impregnated with cleansing preparations

 

Class 5:

 

Incontinence garments

 

Class 10:

 

medical devices for use in treating and diagnosing [specify disease or condition device used for, e.g. diabetes, cancer, epilepsy, etc.]; medical instruments and cannula for insertion into bodily orifices, cavities, and lumena; medical instruments and cannula for insertion into potential spaces within a body; medical devices for use in the field of women's health, namely, medical instruments and catheters for use in gynecological procedures and gynecological surgical procedures; medical kits consisting primarily of medical instruments, catheters, and preparations for diagnosis and treatment of women's health issues; gynecological medical instruments; urological medical instruments for males and females; medical and surgical catheters; catheters and parts and fittings thereof; endoscopic equipment for medical purposes; hysteroscopes; cytoscopes; medical endoscopes; rigid and flexible medical endoscopes; medical devices used to evaluate the uterine cavity and patency of fallopian tubes; medical devices used to evaluate the bladder and urinary function; medical gynecological instruments for examining women's reproductive organs; medical urological instruments for examining the urinary tract function within males and females; nebulizers for medical purposes; medical fluid injectors; catheters for use in biopsies; fallopian tube biopsy instruments; uterine biopsy instruments; biopsy devices, namely, [specify items by common commercial name, e.g. scalpels, tissue samplers, tissue forceps, etc.]; biopsy instruments; medical instruments for use in performing biopsies; catheters for use in fallopian tube biopsies; catheters for use in uterine biopsies; medical instruments for uterine cell sampling; medical instrument for fallopian cell sampling; endometrial samplers; cytology brushes; endometrium biopsy suction devices; uterine access devices, namely, dilators and cannulae; incontinence devices, namely, [specify by common commercial name, e.g. bed pads, medical instruments for use in strengthening pelvic floor muscles, etc.]; uterine introducing catheters; balloon catheters; medical balloons; everting medical balloons; everting catheters; everting cervical catheters; medical devices for placing and securing catheters; inflation devices for balloon catheters; catheters for use in uterine access; catheters for use in fallopian tube access; medical balloons for use in cervical transit; medical instruments for stabilization of cervix; medical devices, namely, insemination catheters for delivering reproductive material to the uterus or fallopian tube; embryo transfer catheters and syringes; intra-uterine contraceptive devices; intra-uterine contraceptive device delivery instruments; medical instruments for the transfer of sperm and semen; medical instruments for egg transfer; medical and surgical dilators; vaginal dilators; cervical dilators, bodily lumen or vessel dilators; dilators for potential spaces within a male or female body; uterine dilators

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  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 and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Classification

 

If applicant adopts the suggested amendment of the goods, then applicant must amend the classification to International Classes 3, 5, and 10.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Combined Application Requirements

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

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  

 

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. 

 

 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 October 22, 2019 for

U.S. Trademark Application Serial No. 88547107

 

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. 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 October 22, 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.”