To: | Topcon Healthcare Solutions, Inc. (tm@sughrue.com) |
Subject: | U.S. Trademark Application Serial No. 90126654 - SIGHT PILOT - S5777011 |
Sent: | December 18, 2020 10:34:19 AM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90126654
Mark: SIGHT PILOT
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Correspondence Address: 2000 PENNSYLVANIA AVENUE NW, SUITE 900
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Applicant: Topcon Healthcare Solutions, Inc.
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Reference/Docket No. S5777011
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: December 18, 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. Applicant’s communication of October 27, 2020 is noted.
SEARCH RESULTS
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 OF GOODS AND SERVICES
The identification for software in International Classes 009 and 042 must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant should note the suggestions and/or explanations in bold in the proposed identification below.
The applicant is strongly urged to consult the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual for assistance with identifying and classifying goods and services in this trademark application. See TMEP §1402.04
The following substitute wording is suggested, if accurate:
International Class 009
Downloadable and recorded computer software for operating medical apparatus for testing a patient's vision
International Class 042
Providing temporary use of on-line non-downloadable computer software for operating medical apparatus for testing a patient's vision |
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.
DISCLAIMER
The term “sight” is defined as someone's ability to see and is synonymous with the word “vision.” [See attached dictionary evidence.] Applicant seeks to register its mark for software for use in connection with medical apparatus for testing a patient's vision. Applicant’s goods and services relate to sight or vision or to someone’s ability to see. As such, the term SIGHT is descriptive as used with the specified goods and services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SIGHT” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
SIGNIFICANCE OF THE MARK
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.
If applicant has questions about this Office action, please telephone the assigned trademark examining attorney.
How to respond. Click to file a response to this nonfinal Office action.
/Evelyn Bradley/
Evelyn Bradley
Trademark Examiner
Law Office 104
(571) 272-9292
RESPONSE GUIDANCE