To: | Trice Medical, Inc. (ipdocket@foxrothschild.com) |
Subject: | U.S. Trademark Application Serial No. 88578986 - MI-EYE TO - 104607.00004 |
Sent: | November 13, 2019 04:41:15 PM |
Sent As: | ecom116@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88578986
Mark: MI-EYE TO
|
|
Correspondence Address:
|
|
Applicant: Trice Medical, Inc.
|
|
Reference/Docket No. 104607.00004
Correspondence Email Address: |
|
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: November 13, 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).
SIGNIFICANCE OF “TO”
To permit proper examination of the application, applicant must explain whether the term in the mark “TO” has any significance in the arthroscopic or orthopedic trade or industry or as applied to applicant’s goods and/or services, or if such wording is 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.
IDENTIFICATION OF GOODS AND SERVICES
CLASS 10
The Class 10 identification of goods is acceptable; no changes are needed for this Class.
CLASS 44
The wording “Medical procedures in the orthopedic field” is indefinite. The applicant must insert “Performing” at the beginning of the identification to clarify that this is a service. For example, “Performing medical procedures in the orthopedic field” would be acceptable.
OVERALL SUGGESTED IDENTIFICATION OF GOODS AND SERVICES
Applicant may amend the identification to the following wording, if accurate:
IC 010: medical devices, namely, a camera enabled needle for use by physician in examination of a joint for diagnostic and therapeutic purposes; medical and surgical instruments for use in arthroscopic joint inspection and orthopedic surgery; medical and surgical kits containing medical and surgical instruments for use in arthroscopic joint inspection and orthopedic surgery
IC 044: Performing medical procedures in the orthopedic field; orthopedic surgery services
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.
The application identifies goods and/or services 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 two classes. The applicant submitted fees sufficient for two classes. Therefore, all filing fees have been 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
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@uspto.gov
RESPONSE GUIDANCE