To: | ASUSTEK COMPUTER INCORPORATION (docket@mtiplaw.com) |
Subject: | U.S. Trademark Application Serial No. 90046134 - ASUS - TLCNT15664 |
Sent: | August 26, 2020 03:28:24 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90046134
Mark: ASUS
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Correspondence Address:
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Applicant: ASUSTEK COMPUTER INCORPORATION
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Reference/Docket No. TLCNT15664
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: August 26, 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.
SEARCH RESULTS
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
However, applicant must comply with the following procedural requirements.
IDENTIFICATION OF GOODS
Applicant has identified the following in Class 10: “Medical apparatus and instruments for monitoring vital signs, blood properties and respiratory events; Medical apparatus and instruments for monitoring, detecting, and analyzing blood pressure; Medical apparatus and instruments for monitoring, detecting, and analyzing vital signs, namely, SPO2 (peripheral capillary oxygen saturation); Medical apparatus and instruments for electrocardiography monitoring, detection, and analysis; Medical apparatus and instruments for ultrasound image monitoring, detection, and analysis; Medical instruments and apparatuses, namely, electroencephalographs, peak flow meters, spirometers, pulse oximeters, pulse rate monitors, electrodes for medical use, blood oxygen monitors, lancets, cardiac monitors, cardiac monitoring oscilloscopes, heart sound amplifiers, electrocardiograph artifact filters, digital pulse amplifiers, and low frequency electric therapy apparatus; imaging apparatus; Medical instruments and apparatuses for diabetes monitoring; Medical instruments and apparatuses for monitoring blood oxygenation, temperature, heart rate, ECG (Electrocardiographic (ECG) recorders), respiration, and other vital signs data; Medical apparatus and instruments, namely, devices for recording and analyzing electroencephalographic (EEG), electromyographic (EMG), and evoked potential (EP) readings; Apparatus for use in medical analysis, namely, body composition analyzers; Apparatus for use in medical analysis, namely, hematology analyzers for medical diagnostic use; Apparatus for use in medical analysis, namely, medical apparatus and instruments for monitoring blood and bodily fluids; Testing apparatus for medical purposes, namely, portable medical devices for measuring the physiological parameters and for monitoring the physiological function of the wearer of the device; Testing apparatus for medical purposes, namely, blood testing apparatus and vascular testing apparatus; Diagnostic apparatus for medical purposes for use in blood pressure monitor, electrocardiography monitor, SPO2 (peripheral capillary oxygen saturation) monitor; Diagnostic apparatus for medical purposes, namely, health monitoring devices consisting of heart rate monitors, skin temperature monitors, and pedometers; Diagnostic apparatus for medical purposes, namely, pedometers, respiratory monitors and aneroids; Medical diagnostic apparatus, analytical apparatus for medical purposes and blood pressure measuring apparatus; Dental apparatus, namely, dental scanner, ultrasound dental imaging apparatus, dental lights, dental camera and component parts therefor; Dental apparatus, namely, intra-oral light systems, intra-oral scanners; Pulse meters; Body fat monitors; Body fat analyzers for medical purposes; Body composition monitors; Glucometers; Electrocardiographs; Heart rate monitoring apparatus; Ultrasonic diagnostic instruments for medical use; Tomographs for medical purposes; Scanners for medical diagnosis, namely, 3D scanner for human body, ultrasound imaging scanners; Thermometers for medical purposes; Sphygmomanometers; Stethoscopes; Bracelets for medical purposes”
Applicant may adopt the following wording, if accurate:
International Class 10:
Medical apparatus and instruments for monitoring vital signs, blood properties and respiratory events; Medical apparatus and instruments for monitoring, detecting, and analyzing blood pressure; Medical apparatus and instruments for monitoring, detecting, and analyzing vital signs, namely, SPO2 (peripheral capillary oxygen saturation); Medical apparatus and instruments for electrocardiography monitoring, detection, and analysis; Medical apparatus and instruments for ultrasound image monitoring, detection, and analysis; Medical instruments and apparatuses, namely, electroencephalographs, peak flow meters, spirometers, pulse oximeters, pulse rate monitors, electrodes for medical use, blood oxygen monitors, lancets, cardiac monitors, cardiac monitoring oscilloscopes, heart sound amplifiers, electrocardiograph artifact filters, digital pulse amplifiers, and low frequency electric therapy apparatus; medical imaging apparatus; Medical instruments and apparatuses for diabetes monitoring; Medical instruments and apparatuses for monitoring blood oxygenation, temperature, heart rate, respiration, and other vital signs data; Medical apparatus and instruments, namely, devices for recording and analyzing electroencephalographic (EEG), electromyographic (EMG), and evoked potential (EP) readings; Apparatus for use in medical analysis, namely, body composition analyzers; Apparatus for use in medical analysis, namely, hematology analyzers for medical diagnostic use; Apparatus for use in medical analysis, namely, medical apparatus and instruments for monitoring blood and bodily fluids; Testing apparatus for medical purposes, namely, portable medical devices for measuring the physiological parameters and for monitoring the physiological function of the wearer of the device; Testing apparatus for medical purposes, namely, blood testing apparatus and vascular testing apparatus in the nature of medical instruments to measure blood pressure, cardiac output and other cardiovascular parameters; Diagnostic apparatus for medical purposes, namely, blood pressure monitors, electrocardiography monitors, and SPO2 (peripheral capillary oxygen saturation) monitors; Diagnostic apparatus for medical purposes, namely, health monitoring devices consisting of heart rate monitors, skin temperature monitors, and pedometers; Diagnostic apparatus for medical purposes for analyzing and measuring respiratory activity and blood pressure consisting of pedometers, respiratory monitors and aneroid gauges; Medical diagnostic apparatus, analytical apparatus for medical purposes and blood pressure measuring apparatus; Dental apparatus, namely, 3D dental scanner, ultrasound dental imaging apparatus, intra-oral dental light system, dental intra-oral camera and component parts therefor; Dental apparatus, namely, intra-oral light systems, intra-oral scanners; Pulse meters; Body fat monitors; Body fat analyzers for medical purposes; Body composition monitors; Glucometers; Electrocardiographs; Heart rate monitoring apparatus; Ultrasonic diagnostic instruments for medical use; Tomographs for medical purposes; Scanners for medical diagnosis, namely, 3D scanner for human body, ultrasound imaging scanners; Thermometers for medical purposes; Sphygmomanometers; Stethoscopes; Bracelets for medical purposes
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.
APPLICATION PURSUANT TO SECTIONS 1(b) & 44(d)
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
How to respond. Click to file a response to this nonfinal Office action.
If the applicant has any questions or needs assistance in responding to this Office Action, please contact the assigned examining attorney.
/Katherine Weigle/
Examining Attorney
Law Office 101
U.S. Patent & Trademark Office
(571) 270-1506
katherine.weigle@uspto.gov
RESPONSE GUIDANCE