Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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:  December 14, 2020

 

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

 

However, applicant must respond to the following requirement.

 

IDENTIFICATION OF GOODS REQUIRES AMENDMENT

 

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED HEREIN.

 

The USPTO requires the description of goods in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). In this case, the wording “Medical Analytical Equipment,” “Medical Measurement Equipment,” “Medical Diagnostic Equipment,” and “Midwifery Equipment” in the identification of goods is indefinite because it fails to indicate specific goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, “Medical Measurement Equipment” could include such goods as “devices for measuring wounds,” “medical devices for measuring blood sugar,” and “medical apparatus for measuring skin hydration.”

 

The following is the suggested format for the amended identification of goods:

 

Electrocardiographs; Apparatus for physical training for medical use; Body rehabilitation apparatus for medical purposes; Clinical thermometers; Electrocardiographic (ECG) recorders; Electrocardiographic (ECG) recorders and electrocardiographic (ECG) digital plasters sold as a unit; Electronic stimulation apparatus for nerves, skin, and muscles for physical therapy purposes; Enema apparatus; Enema apparatus for medical purposes; Face coverings being sanitary masks for protection against viral infection; Face covers being sanitary masks for protection against viral infection; Face masks for use by dental care providers; Face masks for use by health care providers; Manually-operated exercise equipment for physical therapy purposes; Medical apparatus and instruments for use in surgery; Personal protective equipment (PPE), namely, masks for use by medical personnel; Physical exercise apparatus, for medical purposes; Sanitary masks for medical purposes; Sanitary masks for medical wellness purposes; Sanitary masks for dust isolation for medical purposes; Sanitary masks for dust prevention for medical purposes; Sanitary masks for fungus isolation purposes; Sanitary masks for germ isolation purposes; Sanitary masks for pollen isolation purposes; Sanitary masks for virus isolation purposes; Surgical devices and instruments; Surgical masks; Syringes for medical purposes; Thermometers for medical purposes; Thermometers for medical use; Ultrasonic medical diagnostic apparatus; Ultrasonic therapy machines and apparatus; Disposable sanitary masks for protection against viral infection; Ear thermometers; Fever thermometers; Infrared thermometers for medical purposes; Surgical and medical apparatus and instruments for use in general surgery; Medical Analytical Equipment, namely, {indicate the specific Class 10 goods being offered and not already listed in the identification; otherwise, delete this wording}; Medical Measurement Equipment, namely, {indicate the specific Class 10 goods being offered and not already listed in the identification; otherwise, delete this wording}; Medical Diagnostic Equipment, namely, {indicate the specific Class 10 goods being offered and not already listed in the identification; otherwise, delete this wording}; Midwifery Equipment, namely, {indicate the specific Class 10 goods being offered and not already listed in the identification; otherwise, delete this wording}

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application. 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 or add goods not found in or encompassed by those in the original U.S. application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

ADVISORY: OPTION TO DELETE SECTION 1(b) BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration under Section 44(e). See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3). However, the foreign registration alone may serve as a basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d). If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods based on Section 1(b).

 

RESPONSE REQUIRED

 

For this application to proceed, applicant must explicitly address the requirement in this Office action by setting forth the necessary changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action 

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application: “Medical Analytical Equipment,” “Medical Measurement Equipment,” “Medical Diagnostic Equipment,” and “Midwifery Equipment.” The application will then proceed with the following identification:

 

Electrocardiographs; Apparatus for physical training for medical use; Body rehabilitation apparatus for medical purposes; Clinical thermometers; Electrocardiographic (ECG) recorders; Electrocardiographic (ECG) recorders and electrocardiographic (ECG) digital plasters sold as a unit; Electronic stimulation apparatus for nerves, skin, and muscles for physical therapy purposes; Enema apparatus; Enema apparatus for medical purposes; Face coverings being sanitary masks for protection against viral infection; Face covers being sanitary masks for protection against viral infection; Face masks for use by dental care providers; Face masks for use by health care providers; Manually-operated exercise equipment for physical therapy purposes; Medical apparatus and instruments for use in surgery; Personal protective equipment (PPE), namely, masks for use by medical personnel; Physical exercise apparatus, for medical purposes; Sanitary masks for medical purposes; Sanitary masks for medical wellness purposes; Sanitary masks for dust isolation for medical purposes; Sanitary masks for dust prevention for medical purposes; Sanitary masks for fungus isolation purposes; Sanitary masks for germ isolation purposes; Sanitary masks for pollen isolation purposes; Sanitary masks for virus isolation purposes; Surgical devices and instruments; Surgical masks; Syringes for medical purposes; Thermometers for medical purposes; Thermometers for medical use; Ultrasonic medical diagnostic apparatus; Ultrasonic therapy machines and apparatus; Disposable sanitary masks for protection against viral infection; Ear thermometers; Fever thermometers; Infrared thermometers for medical purposes; Surgical and medical apparatus and instruments for use in general surgery

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

Missing the response deadline to this letter will cause the application to abandon. A response must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

Arguments against a refusal and/or requirement are considered responses to an Office action, and responses to Office actions will not be accepted if submitted informally by telephone or email. See TMEP §709.05. Therefore, no arguments against a refusal and/or requirement will be considered if provided by telephone or email.

 

All informal communications relevant to this application will be placed in the official application record, however.

 

The response must be signed 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). Responses signed by an unauthorized party are not accepted and can cause the application to abandon.

 

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 December 14, 2020 for

U.S. Trademark Application Serial No. 90118439

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 December 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.”