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 14, 2020

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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.

 

SUMMARY OF ISSUES:

 

• Identification Amendment Requirement to Avoid Deceptiveness Refusal
• Request for Information

 

IDENTIFICATION AMENDMENT REQUIREMENT TO AVOID DECEPTIVNESS REFUSAL

 

Applicant’s mark includes the formative COVI, which indicates that applicant’s goods are related to the COVID-19 pandemic as “COVI” comes from coronavirus. See attached from http://www.npr.org/sections/goatsandsoda/2020/02/11/802352351/new-coronavirus-gets-an-official-name-from-the-world-health-organization (‘“Covi’ comes from coronavirus”’).  In 2019, a novel coronavirus called SARS-CoV-2 (Severe Acute Respiratory Syndrome Coronavirus 2) became responsible for a worldwide outbreak of a disease now known as COVID-19 (Coronavirus Disease 2019), the outbreak of which created a national emergency in the United States and was declared a pandemic by the World Health Organization. See the attached evidence from various sources discussing the COVID-19 outbreak:

 

• Centers for Disease Control and Prevention http://www.cdc.gov/coronavirus/types.html  (“Coronaviruses are named for the crown-like spikes on their surface” and “SARS-CoV-2 (the novel coronavirus that causes coronavirus disease 2019, or COVID-19).”)
• National Institute of Allergy and Infectious Diseases http://www.niaid.nih.gov/diseases-conditions/coronaviruses  (In late 2019, a novel coronavirus not previously identified called SARS-CoV-2 (Severe Acute Respiratory Syndrome Coronavirus 2) emerged that causes a disease called COVID-19 (Coronavirus Disease 2019))
• The White House http://www.whitehouse.gov/presidential-actions/proclamation-declaring-national-emergency-concerning-novel-coronavirus-disease-covid-19-outbreak/ (In the United States, the President declared a national emergency in response to COVID-19 on March 13, 2020.)
• U.S. Bureau of Labor Statistics http://www.bls.gov/covid19/effects-of-covid-19-pandemic-on-productivity-and-costs-statistics.htm (“The coronavirus (COVID-19) pandemic is affecting daily life for the entire country.”); and
• World Health Organization http://www.who.int/dg/speeches/detail/who-director-general-s-opening-remarks-at-the-media-briefing-on-covid-19---11-march-2020 (Director-General’s Opening Remarks at the Media Briefing on COVID-19 noting that on March 11, 2010, the World Health Organization began characterizing the outbreak as a “pandemic”).

 

The COVID-19 outbreak has achieved widespread media attention throughout the entire world.  For example, the attached article from Vox describes how 13% of all online news article views on the Internet concerned coronavirus. See http://www.vox.com/recode/2020/3/17/21182770/news-consumption-coronavirus-traffic-views; see also http://www.journalism.org/2020/04/01/cable-tv-and-covid-19-how-americans-perceive-the-outbreak-and-view-media-coverage-differ-by-main-news-source (Pew Research Center notes that “[c]overage of COVID-19 has dominated the news and resulted in skyrocketing ratings for the nation’s cable news networks”).  Consumers are familiar with COVID-19 and understand that it is caused by a novel coronavirus.

 

The relationship of applicant’s goods to the COVID-19 pandemic is likely to affect the purchasing decision of a significant portion of relevant consumers because the ability to test for the presence of the coronavirus is desirable. However, if some or all of the goods and/or services do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods and/or services.  See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).

 

To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic.  See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq.  However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal.  TMEP §1203.02(f)(i).

 

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

 

Therefore, applicant may amend the identification to the following, if accurate:

 

Class 010: Medical instruments, namely, biosensors for detecting infectious diseases in the nature of COVID-19

 

Advisories

 

As SARS-CoV-2 is a novel coronavirus and COVID-19 has never been seen in humans before late 2019, goods or services related to coronavirus transmission and the treatment of COVID-19 are in early stages of development. Thus, applicant should also note that upon consideration of a statement of use/allegation of use, registration may be refused on the ground that the applied-for mark, as used on the specimen of record, includes deceptive matter in relation to the identified goods if the specimen of use shows the applied-for mark used with goods that makes unproven claims regarding coronaviruses and COVID-19. See http://www.fda.gov/drugs/coronavirus-covid-19-drugs/fraudulent-activity-and-unlawful-sales-unapproved-and-misbranded-drug-products-covid-19.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

REQUEST FOR INFORMATION

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods because the nature of such goods is not clear from the present record.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

To permit proper examination of the application, applicant must also provide the following information:

 

1. Are the goods for the detection of COVID-19/coronavirus?

 

2. Explain whether the wording “WAVE” in the mark has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods, or if such wording is a term of art within applicant’s industry.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be 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.    

 

 

/Heather A. Sales/

Examining Attorney

Law Office 130

(571) 272-7835

Heather.Sales@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 14, 2020 for

U.S. Trademark Application Serial No. 90104388

 

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. 

 

 

/Heather A. Sales/

Examining Attorney

Law Office 130

(571) 272-7835

Heather.Sales@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 14, 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.”