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:  July 20, 2020

 

The referenced application and voluntary amendment of May 5, 2020 have 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 THAT APPLICANT MUST ADDRESS:

 

• Indefinite identification of goods – Specified goods only
• Disclaimer required

 

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.

 

However, applicant must respond to the following requirement(s) before registration can be granted.

 

IDENTIFICATION OF GOODS

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

Applicant’s goods are identified as “Cochlear implants and parts of cochlear implants, namely, sound processors, transmitter coils, transmitters, receivers, and intracochlear electrode arrays; sound processors for cochlear implants” in International Class 10.

 

The wording “sound processors for cochlear implants” in the identification of goods is indefinite and must be clarified by specifying that the goods are specially adapted for cochlear implants, if accurate.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification of goods, if accurate:

 

            Class 10:   Cochlear implants and parts of cochlear implants, namely, sound processors, transmitter coils, transmitters, receivers, and intracochlear electrode arrays; sound processors specially adapted for cochlear implants

 

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.

 

DISCLAIMER REQUIRED

Applicant must disclaim the term “CI” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods.  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). 

 

In this case, applicant’s mark is SKY CI for “Cochlear implants and parts of cochlear implants, namely, sound processors, transmitter coils, transmitters, receivers, and intracochlear electrode arrays; sound processors for cochlear implants.”  The attached Internet evidence shows that “CI” is commonly used in connection with similar goods as an abbreviation for “Cochlear Implant.”  See, e.g.:

http://www.cochlear.com/us/en/professionals/products/cochlear-implants/candidacy

http://www.ncbi.nlm.nih.gov/pmc/articles/PMC3636188/

http://www.karger.com/Article/Abstract/95608

http://www.asha.org/public/hearing/Cochlear-Implant/

http://www.acialliance.org/page/CochlearImplant

http://www.medel.com/en-us/hearing-solutions/cochlear-implants

http://en.wikipedia.org/wiki/Cochlear_implant

http://cookchildrens.org/rehabilitation/specialty-programs/Pages/Cochlear-Implants.aspx

http://www.audiology.org/tags/cochlear-implants-ci

 

Thus, the term “CI” merely describes applicant’s goods and must be disclaimed.

 

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

 

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

 

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

 

RESPONSE GUIDELINES

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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

 

 

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 July 20, 2020 for

U.S. Trademark Application Serial No. 88879964

 

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. 

 

 

Kertgate, Amy

/Amy Kertgate/

Examining Attorney

Law Office 113

Tel: (571) 272-1943

Email: amy.kertgate@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 July 20, 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.”