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:  May 21, 2021

 

INTRODUCTION

 

The Office in receipt of applicant’s communications filed on April 19, 2021, April 20, 2021 and May 13, 2021.

 

In the prior Office action of December 2, 2020, the applicant was required to satisfy the following requirements: provide representative specimens of use for specific goods, provide U.S. Attorney information and clarification. Based on applicant’s communications, the foregoing requirements are withdrawn and applicant’s voluntary amendment to the identification of goods is acceptable and has been entered into the record. See TMEP §713.02. 

 

However, due to the information and/or documentation in applicant’s communications, the applicant must address the new issues set forth below.  See TMEP §§706, 711.02. 

 

SUMMARY OF ISSUES:

 

• Verified Statement Required
• U.S. Attorney Required
• Representative Specimens for Additional Goods Required
• Payment of  Additional Fee for Loss of Teas Plus Status Required

 

 

VERIFIED STATEMENT REQUIRED

 

In response to the requirement to provide credentials for the attorney of record, applicant appointed a new attorney. There is no indication that an attorney named Feng Lin is admitted anywhere in the United States. Given the inability to provide a certification for the prior appearing attorney, it is unclear who actually signed the application. Therefore, applicant must provide a substitute verification.  For more information about this, see the Verified statement webpage.  On the TEAS response form, the applicant should answer “yes” to wizard question #10, and follow the instructions within the form for signing.  In the case of a new verified statement, the form will require two signatures:  one in the “Declaration Signature” section and one in the “Response Signature” section.  

 

 

U.S. ATTORNEY REQUIRED

 

Applicant must be represented by a U.S.-licensed attorney.  An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information. 

 

To appoint a U.S.-licensed attorney.  To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

REPRESENTATIVE SPECIMENS FOR ADDITIONAL GOODS REQUIRED

The requirement for representative specimens in the previous Office action was restricted to a specific list of goods.  Upon further review, the examining attorney finds that the previous requirement failed to include other relevant goods. Therefore, given the wide variety and range of unrelated goods in the amended identification of goods, applicant must submit additional specimens to allow for a complete and accurate examination of the application and assessment of the registrability of the subject mark, in accordance with Rule 2.61(b).  37 C.F.R. §2.61(b); see TMEP §904.01(a).

Applicant should submit specimens demonstrating use of the mark on all of the following goods:

1.     Dental apparatus, namely, intra-oral light systems

2.     Low frequency electric therapy apparatus

3.     Massage apparatus

4.     Massage apparatus and instruments

5.     Medical instruments, namely, orthopedic apparatus and instruments

6.     Sensory light therapy unit

7.     Electric massage apparatus for household use

8.     Milling apparatus for dental purposes

9.     Organoleptic diagnostic testing apparatus for medical, dental or cosmetic use

10.  Surgical apparatus and instruments for medical, dental or veterinary use

11.  X-ray apparatus for dental imaging

 

If applicant is unable to provide specimens to support use of these items, applicant must delete these entries, or amend the filing basis for those goods that were not in proper use as of the application filing date to an intent to use basis under Section 1(b).  This option will later necessitate additional fees and filing requirements such as providing a specimen for these goods at a subsequent date.

Failure to comply with a requirement to furnish additional specimens is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not make the additional specimens of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

PAYMENT OF ADDITIONAL FEE FOR LOSS OF TEAS PLUS STATUS REQUIRED

 

Processing fee required.  Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(a)(20), (c); TMEP §819.04.  Applicant is foreign-domiciled and thus the application must designate a U.S.-licensed attorney and include the attorney’s name, postal and email addresses, and bar information.  37 C.F.R. §2.22(a)(20).  However, applicant provided Feng Lin as the attorney name and this information is not valid because there is no indication such attorney exists. The evidence attached to the first Office action showed that no person named Feng Lin appears to be admitted to the California bar and applicant has been unable to show evidence that Feng Lin is an attorney admitted anywhere in the United States. 

 

The additional fee is required even if applicant later satisfies this requirement. 

 

Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application. 

 

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

 

RESPONSE GUIDANCE

 

• 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.

 

• 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.

 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 21, 2021 for

U.S. Trademark Application Serial No. 90061239

 

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. 

 

 

/Jean H. Im/

Trademark Examining Attorney

Law Office 101

U.S. Patent and Trademark Office

571-272-9303

jean.im@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 21, 2021, 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.”