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:  November 17, 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 OF USPTO DATABASE OF MARKS

 

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.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES

 

The identification of goods and services includes wording which is indefinite or misclassified and must be clarified to ensure proper classification and to satisfy Office requirements for specificity and form.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods/services as indicated below.  See TMEP §1402.01.  If the goods/services have no common commercial or generic name, applicant must describe the product/service, its main purpose, and its intended uses.  See id.  In particular:

 

Class 10:

 

“Medical devices for use in connection with eye surgery” – The particular nature of the medical devices must be specified.  Applicant’s indication that they are used “in connection” with eye surgery is insufficient for this purpose.  The particular use/nature is required, e.g., “medical devices being surgical instruments for use in connection with eye surgery” or “eye protectors for post-surgery eye protection”.

 

Class 42:

 

1. “Providing medical information relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, the medical treatment of glaucoma; providing a website featuring medical information in the field of ophthalmology” – The services are classified incorrectly.  Applicant must amend the application to classify the goods and/or services in International Class 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

2. “Medical publications featuring information in the field of ophthalmology” – The identification for “publications” in International Class 42 is indefinite and too broad and must be clarified because the word does not make clear whether the “publications” are products or services and thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether “publications” identifies print publications in International Class 16, electronic recorded or downloadable publications in International Class 9, and/or non-downloadable online/Internet publications provided as a service in International Class 41, and amend the identification to provide the additional information specified below for such goods and services.  

 

If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications.  TMEP §§1402.03(e), 1402.07(b).  For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e).  

 

If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See id.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.  Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  See TMEP §§1402.07(b), 1402.11(a)(x).  

 

Class 44:

 

Acceptable as written, subject to the addition of misclassified services, as indicated below.

 

Applicant may adopt the following wording, if accurate: 

 

“Medical devices being surgical instruments for use in connection with eye surgery; medical devices, namely, lasers for incisions during eye surgery; medical devices for use in treating glaucoma; medical ophthalmological equipment, namely, devices for draining eye fluid; surgical instruments, namely, lasers for use in eye surgery,” in Class 10.

 

“Printed medical publications, namely, (specify format, e.g., books, journals, brochures) featuring information in the field of ophthalmology,” in Class 16.

 

“Non-downloadable electronic medical publications in the nature of (specify format) in the field of ophthalmology,” in Class 41.  

 

“Medical clinical research in the field of ophthalmology; medical research relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, and the medical treatment of glaucoma,” in Class 42.

 

“Ophthalmology services, namely, treatment of eye diseases, treatment of glaucoma and eye surgery; surgery, namely, laser eye surgery; providing medical information relating to eye health, ophthalmic surgery, laser eye surgery, the medical treatment of eye diseases, and the medical treatment of glaucoma; providing a website featuring medical information in the field of ophthalmology,” in Class 44.

 

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).

 

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.

 

Advisory – Multi-class application requirements

 

The application identifies goods and/or services in more than three international classes; 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only three class(es).  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.

 

If the applicant has any questions or needs assistance in responding to this Office action, please e-mail or telephone the assigned examining attorney.

 

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

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@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 November 17, 2020 for

U.S. Trademark Application Serial No. 90080256

 

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. 

 

 

/SMP/

Steven M. Perez

Trademark Attorney

Law Office 101

(571) 272-5888

steven.perez@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 November 17, 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.”