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:  December 17, 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 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:

• Disclaimer Required
• Identification of Services
• Multiple Class Application Requirements

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “FOUNDATION” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The attached dictionary evidence shows this wording means “an organization or institution established by endowment with provision for future maintenance”.  Thus, the wording merely describes applicant’s goods and/or services because applicant is a foundation, namely, an organization established for research and devleopment of scientific discoveries and concepts. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “FOUNDATION” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified because it is too broad and does not clearly describe the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant has classified the following services in International Class 42:  “risk assessment, safety compliance and regulatory compliance in the fields of health and information technologies, as well as in emerging emerging technologies; and support regulatory approval of novel technologies.”  However, the proper classification for each item is delineated below specifically.  Additionally, applicant has provided the application fee for only 1 international class.  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

Furthermore, the wording “support services, namely, processing of patient image data, characterization of incident fields, focusing and tuning, and modelling and assessment of the treatment effects; computational life sciences, namely, support services in diverse medical diagnostic and therapeutic applications through multi-scale and multi-physics simulations, medical image-based modeling, device safety and efficacy assessment, mechanistic investigations (therapeutic safety), simulation platform and solver development, dielectric assessment of all kind of material” in the identification of services for International Class 42 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of services.  In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

The wording “including” in the identification of services is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific services.  See TMEP §1402.03(a).

 

The identification of services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or 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 goods and/or services.

 

Applicant may adopt the following wording, if accurate: 

 

Class 35

Business risk assessment services in the fields of health, information technologies and emerging technologies

 

Class 36

Financial risk assessment services in the fields of health, information technologies and emerging technologies

 

Class 42

Research and development in the fields of health-related effects of electromagnetic energy in the fields of health, information technologies and emerging technologies health and information technologies, as well as in emerging technologies; risk assessment, safety compliance and regulatory compliance in the fields of health and information technologies, as well as in emerging emerging technologies; education and training, namely, conducting [indicate mode of instruction, e.g., conducting classes, seminars, conferences, workshops] in the fields health, information technologies and emerging technologies health and information technologies, as well as in emerging technologies; engineering design/analysis tasks design services and product compliance certification/ pre-certification  in the nature of testing, analysis and evaluation of goods others to determine conformity with certification standards; Design and development of functionalized human and animal models, namely, design and development of computational anatomical models for biomedical modelling and safety assessment, electrophysiology models, perfusion models, thermoregulation models, tissue models, and personalized treatment stimulation tools; and Design and development of functionalized human and animal models, namely, non-downloadable computational digital anatomical models for biomedical modelling; and safety assessment in the nature of product safety testing; design and development of neuron models, anisotropic tissue models and personalized treatment stimulation tools; mri implant safety, namely, safety in the nature of product quality evaluations of passive and active implants for patients undergoing magnetic resonance imaging scans, and providing customized solutions for mitigation of patient risk from radio frequency and gradient fields; neuronal stimulation services, namely, computational modelling and design of neuronal stimulation and optimization for evaluation of active implantable medical devices and electroceuticals; mri safety systems, namely, customized product quality evaluations of radiofrequency and gradient field exposure for patients undergoing mri scans; experimental phantoms, namely, development of phantom products and designs development for of new technologies, development of functionalized multi-layer phantoms for evaluation of over the air device performance, specific absorption rate (sar) and temperature rise, and optimization of on-body and implanted transceivers; emf exposure systems, namely, design and development of customized exposure systems, development of effective and selective neurostimulation solutions in research and industry, mri safety phantom development for of new technologies, for in vitro, in vivo, and human studies on interactions of electromagnetic fields (emf) with living tissue; radio communication safety evaluation, namely, technical support services in the nature of troubleshooting of problems with radio communication platform development from device design to regulatory approval, including, and also for testing, analysis and evaluation of radio communication platform development to assure compliance with industry standards and extending standardized procedures to other platforms, validating modifications with simulations and measurements, and communicating the changes to regulators; Specific absorption rate sar exposure, namely, health risk assessment of emf electromagnetic fields exposure assessment in the nature of prediction and assessment of health risks to public and private agencies, facilities, individuals and locations following an accidental or terrorist caused release of chemical, biological, radiological or nuclear materials and support regulatory approval of novel technologies; wireless power transfer, namely, development and testing of dosimetric probes and testing, analysis and evaluation of the dosimetric probes performs numerical and experimental safety evaluations to test assure compliance of wireless power transfer (wpt) technologies with safety guidelines with industry standards; Design and development of in- and on-body antennas, namely, design and validation of electrically small, resonant and non-resonant antennas with optimized link budgets in complex environments, including and also designing considering anatomical variability and current safety regulations; precision medicine, namely, design of radio frequency applicators and ultrasonic transducers for therapeutic applications; support services, namely, processing of patient image data, characterization of incident fields, focusing and tuning, and modelling and assessment of the treatment effects; computational life sciences, namely, support services in diverse medical diagnostic and therapeutic applications through multi-scale and multi-physics simulations, medical image-based modeling, device safety and efficacy assessment, mechanistic investigations (therapeutic safety), simulation platform and solver development, dielectric assessment of all kind of material

 

Class 45

Regulatory compliance consulting in the field of safety, health, information technologies and emerging technologies; Support regulatory approval of novel technologies in the nature of obtaining regulatory permits, licenses and approvals to build electromagnetic fields technologies

 

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).

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)        Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)        Submit a specimen for each international class.  The current specimen is acceptable for class 42 and 44; and applicant needs a specimen for classes 35 and 36.  See more information about specimens.

 

            Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.  

 

(5)        Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  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.

 

RESPONSE GUIDELINES

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal and/or requirements by submitting evidence and arguments in support of registration.

 

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. 

 

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.    

 

 

/Kamal Bal/

Kamal S. Bal

Examining Attorney

Law Office 112

571-272-5645

kamal.bal@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 December 17, 2019 for

U.S. Trademark Application Serial No. 88604108

 

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. 

 

 

/Kamal Bal/

Kamal S. Bal

Examining Attorney

Law Office 112

571-272-5645

kamal.bal@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 December 17, 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.”