To: | Medicus Development Partners LLC (abufalino@vedderprice.com) |
Subject: | U.S. Trademark Application Serial No. 88615496 - MEDICUS - 40948000002 |
Sent: | December 15, 2019 09:52:36 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88615496
Mark: MEDICUS
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Correspondence Address: |
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Applicant: Medicus Development Partners LLC
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Reference/Docket No. 40948000002
Correspondence Email Address: |
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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 15, 2019
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. Nevertheless, the applicant must respond to the following issue(s).
IDENTIFICATION AND CLASSIFICATION OF SERVICES
The identification of services is indefinite in part and must be clarified because all services are not identified with the requisite clarity and specificity. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the entry “facilities designed consulting services in the field of existing and to-be-built and existing real estate facilities” appears to be indefinite. Applicant should identify all services with specificity by common commercial name.
Additionally, the identification names services which are misclassified and/or capable of classification in multiple classes. The examining attorney notes the applicant’s prior registration (Reg. No. 2704693) for the same services, but notes that a single entry nevertheless appears indefinite and further notes changes in USPTO classification have occurred since the prior registration registered in 2003.
Applicant may therefore adopt any or all of the following identification of goods, if accurate:
International Class 36; Real estate facilities management and consulting services relating thereto; consulting services in the area of leasing, financing and ownership of to-be-built and existing real estate facilities;
International Class 37; Consulting services in the area of real estate development and construction planning of to-be-built and existing real estate facilities; consulting services in the area of planning and laying out of real estate developments;
International Class 42; Consultation services in the field facilities design, specifically existing and to-be-built and existing {indicate nature of the facilities, e.g. medical, etc.} facilities;
(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 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). 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(es) 36, 37 and 42. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. 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.
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.
To the extent the suggested identification is incomplete or inaccurate, the applicant is further advised that the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual is available for assistance with identifying and classifying goods and services. See TMEP §1402.04.
GENERAL INFORMATION
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 feel free to contact the undersigned attorney if you wish to discuss this application.
/John S. Yard/
John S. Yard
Examining Attorney
Law Office 115
(571)272-9486
john.yard@uspto.gov
RESPONSE GUIDANCE