To: | St. Jude Medical, Atrial Fibrillation Di ETC. (samantha.meltzer@abbott.com) |
Subject: | U.S. Trademark Application Serial No. 88621932 - ENSITE - GRN6665607 |
Sent: | December 19, 2019 03:06:41 PM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88621932
Mark: ENSITE
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Correspondence Address:
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Applicant: St. Jude Medical, Atrial Fibrillation Di ETC.
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Reference/Docket No. GRN6665607
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 19, 2019
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:
1. Amended Identification of Goods Required
2. Multiple-Class Application Requirements
AMENDED IDENTIFICATION OF GOODS REQUIRED
The identification of goods must be clarified because the goods are indefinite and/or broad, and therefore, do not clearly and specifically indicate the nature of goods for which registration is sought. Additionally, the goods are potentially misclassified. For systems, the wording should generally be classified in the same international class as the primary parts or components of the system. See TMEP §1401.05(d). Specifically here, the overall nature of what applicant’s medical goods/electrophysiology systems comprise, will determine whether the goods are properly classified in class 010 as medical devices, or rather, should be classified in class 009 based on the fact that the systems seem to comprise class 009 goods, such as computer hardware and software. See below in suggested amended identification.
Therefore, applicant must amend the referenced wording below in accordance with the bolded, italicized guidance provided. Please note that, in some instances, examining attorney has replaced any unacceptable wording with acceptable wording. Finally, 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.
Applicant may adopt the suggested identification of goods below, if accurate. See TMEP §1402.01.
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
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee sufficient for only one 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.
RESPONSE GUIDELINES
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.
/Adetayo J. Adeyiga/
Trademark Examining Attorney
Law Office 114
(571) 272-7089
adetayo.adeyiga@uspto.gov
RESPONSE GUIDANCE