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:  February 11, 2020

 

 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.

 

SUMMARY OF ISSUES:

 

·       Prior-Filed Application

·       Identification of Goods

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 87954037 and 79265450 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS

 

The wording in International Classes 005, 016, 020, 027 and 028 is acceptable as written.

 

The identification of goods is indefinite and must be clarified because it could include goods in other international classes.  See TMEP §1402.01.  Notations concerning unacceptable wording are specified in the suggestion below.

 

For example, applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose and its intended uses. See id.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may adopt the following wording, if accurate:  

 

International Class 005: Analgesic preparations; Medical adhesive tape; Dietary and nutritional supplements

 

International Class 010: Physical rehabilitation, physical therapy and sports medicine equipment all designed specifically for medical use, namely, manually operated exercise equipment for physical therapy purposes, shoulder stretchers using a cable, MANUALLY-OPERATED resistance bands and cables CABLE TUBING for sports medicine PHYSICAL therapeutic purposes, body rehabilitation apparatuses for medical purposes, force and motion testing apparatuses for physical rehabilitation, vibrating apparatuses used to stimulate muscles and increase strength and physical performance for health and medical purposes, whirlpools for therapeutic use, foam rollers for use in physical therapy, foam positioning pads for medical and physical therapy use, hand and finger exercisers for therapeutic purposes, splints for medical purposes, support bandages, air pillows and cushions for medical purposes, and orthopedic cushions and padding, all the foregoing capable of use in both home and clinical settings; MANUALLY-OPERATED exercise equipment for physical therapy and sports medicine PHYSICAL THERAPY purposes; Chiropractic instruments; Medical devices for physical therapy and sports medicine purposes, namely, heart rate monitors, health monitoring devices CONSISTING OF blood pressure monitors, thermometers, AND pedometers, and body fat monitors; Medical diagnostic and therapy devices, namely, electro-therapy devices in the nature of static electric therapy apparatuses, MASSAGE instruments for soft tissue work, MEDICAL ultrasound APPARATUS devices for use in deep-heat tissue therapy, low frequency electric therapy apparatuses, and electronic light therapy apparatuses for the skin; Strength analysis devices in the nature of dynamometers for diagnostic muscle strength testing {delete comma} AND force {delete comma} and motion testing apparatuses for physical rehabilitation; Medical ultrasound apparatuses, spirometry devices IN THE NATURE OF SPIROMETERS, and laser devices in the nature of lasers for medical use and laser therapy stimulators for pain management FOR MEDICAL USE; Laser biostimulation instruments for health care use in the nature of electronic light therapy apparatuses for the skin, electrotherapy stimulation apparatuses comprising electrical nerve and muscle stimulators, MEDICAL electrodes, transmitting pads for use with human and veterinary patients, NAMELY, _____{specify animal, e.g., horses, dogs}, ALL FOR providing electrotherapy via transcutaneous electrical nerve stimulation, and FOR providing electronic stimulation to muscles for physical therapy purposes; Patient examination and/or treatment tables; CHEMICALLY ACTIVATED hot GEL packs and non-medicated compresses for medical use; Therapeutic, CHEMICALLY ACTIVATED hot and cold therapy packs and compresses; Medical gowns; Back supports for medical purposes; Orthopedic support bandages, namely, wearable pads for the hands; Traction apparatuses for medical purposes; Walking aids for medical purposes; Whirlpools for use in hospitals or for therapeutic use

 

International Class 016: Anatomical models for scientific, instructional, and educational purposes

 

International Class 020: Massage tables

 

International Class 027: Personal exercise mats; Yoga mats

 

International Class 028: Personal exercise mats; Yoga mats 

 

Additions Not Allowed: 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).

 

On-line Acceptable Identification of Goods and Services Manual Information: 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.

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.    

 

 

/Alison F. Pollack/

Alison F. Pollack

Trademark Examining Attorney

Law Office 106

571-272-4592

alison.pollack@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 February 11, 2020 for

U.S. Trademark Application Serial No. 88682310

 

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. 

 

 

/Alison F. Pollack/

Alison F. Pollack

Trademark Examining Attorney

Law Office 106

571-272-4592

alison.pollack@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 February 11, 2020, 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.”