Priority Action

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

PRIORITY ACTION

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:  May 29, 2020

 

USPTO database searched; no conflicting marks found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

Applicant must address issues shown below.  On May 22, 2020, the examining attorney and Amy C. Van Eepoel discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

SUMMARY OF ISSUES:

• Identification and Classification of Goods and Services Requirement
• Multiple-Class Application Requirements

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES REQUIREMENT

 

Specific wording used to describe large portions of the applicant’s identified goods and services needs clarification because it is indefinite, too broad, or otherwise unacceptable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and 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 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). 

 

Below the examining attorney reproduces the identification of goods and services, suggesting where more information is required or supplying slight additions of wording in bold that would render the identifications acceptable.  Applicant should also note the following when amending the identification.

 

International Class 5

 

Applicant uses the wording “A house mark” in conjunction with its International Class 5 goods.  Although a house mark is typically used on a wide variety of goods, the identification must sufficiently indicate goods that can be classified in accordance with the international classification system.  TMEP §1402.03(b).

 

Also, the wording “pharmaceutical preparations and over the counter preparations” in the identification of goods is indefinite and must be clarified because it does not make clear the disease or condition to be treated, e.g., pharmaceutical preparations for treating heart disease.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, applicant must clarify the wording “over the counter preparations and products” in the identification of goods in International Class 5 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the nature of the goods.  Further, this wording could identify goods in more than one international class.  For example, this wording could encompass “bandages for skin wounds” in International Class 5, “support bandages” in International Class 10 and “walking sticks” in International Class 18. 

 

International Class 10

 

Applicant uses the wording “A house mark” in conjunction with its International Class 10 goods.  As previously mentioned, although a house mark is typically used on a wide variety of goods, the identification must sufficiently indicate goods that can be classified in accordance with the international classification system.  TMEP §1402.03(b).

 

In addition, the wording “medical apparatus, devices and instruments” in the identification of goods is indefinite and must be clarified because the wording fails to properly indicate the particular type or purpose of these goods, e.g., implantable ports, or for measuring skin hydration.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 42

 

The wording “scientific research for medical purposes” in the identification of services is indefinite and must be clarified because the wording fails to properly indicate the field of these services, e.g., cancerous diseases.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

International Class 44

 

The wording “Providing information in the fields of pharmaceuticals, medicines, medical devices” in the identification of services is indefinite and must be clarified by specifying the nature of the information, e.g., medical and scientific research.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Further, applicant must clarify the wording “Providing information in the fields of pharmaceuticals” in the identification of services in International Class 44 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear the nature of the services.  Further, this wording could identify services in more than one international class.  For example, this wording could encompass “providing information in the field of selling pharmaceuticals” in International Class 35, “providing technical information in the field of pharmaceutical manufacturing” in International Class 40, and “providing medical and scientific research information in the field of pharmaceuticals and clinical trials” in International Class 42 amongst other possibilities. 

 

Please note required changes in bold type, strikethroughs reflecting deletions, and applicant should pay particular attention to language removed or inserted by the trademark examining attorney.  Applicant may substitute the following wording, if accurate: 

 

International Class 5:  A house mark for pharmaceutical preparations for _____ {state purpose, e.g., treating diabetes, treating allergies, skin wounds, etc.} and over the counter preparations, namely, ______ for _______ {must specify the preparation and its purpose, e.g. treatment of a common cold} and products

 

International Class 9:  Downloadable software in the nature of a mobile application for providing information on pharmaceuticals, medicines, medical devices, health and wellness

 

International Class 10:  A house mark for surgical and medical apparatus, devices and instruments; A house mark for medical apparatus, namely, _____ {state type or purpose, e.g., implantable ports, for measuring skin hydration, etc.}; A house mark for over the counter preparations, namely, support bandages

 

International Class 18:  A house mark for over the counter preparations, namely, walking sticks

 

International Class 35:  Providing information in the field of selling pharmaceuticals

 

International Class 40:  Providing technical information in the field of pharmaceutical manufacturing

 

International Class 42:  Providing online, non-downloadable software for providing and managing health and healthcare information; scientific research for medical purposes in the field of {specify field, e.g., cancerous diseases, etc.}; providing information in the fields of pharmaceuticals, namely, providing medical and scientific research information in the field of pharmaceuticals and clinical trials

 

International Class 44:  Providing medical and scientific research information in the fields of pharmaceuticals, medicines, and medical devices,; Providing information in the fields of health and wellness

 

Scope Advisory

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

ID Manual Online

 

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 identifies goods and 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least eight classes; however, applicant submitted fees sufficient for only five classes.  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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action.

 

 

/LaShawnda Elliott/

Trademark Attorney

United States Patent and Trademark Office

Law Office 125

(571) 272-5409

lashawnda.elliott@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 May 29, 2020 for

U.S. Trademark Application Serial No. 88816666

 

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. 

 

 

/LaShawnda Elliott/

Trademark Attorney

United States Patent and Trademark Office

Law Office 125

(571) 272-5409

lashawnda.elliott@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 May 29, 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.”