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:  January 14, 2021

 

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 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.

 

Identification of Goods

 

The identification of goods is indefinite and must be clarified as set forth in detail below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

            Class 1

 

This class is acceptable as written.

 

            Class 3

 

This class is acceptable as written.

 

            Class 5

 

“Prophylaxis powders, materials, including powders and pastes, for dental use and for oral prophylaxis” is vague and improperly uses the term “including.” The word “including” in the identification of goods is indefinite and must be clarified by (1) specifying the common commercial or generic name for these goods, or (2) deleting this wording.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar goods,” “and related goods”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). The applicant must list each prophylaxis by its common commercial name as in “tooth prophylactics.”

 

“Etchings for pharmaceutical purposes” is unclear. This wording does not appear in the Manual of Acceptable Identifications and appears only once on the Principal Register. The applicant must supply the common commercial name of this item, or a brief explanation. It should be noted that the Manual does not show that any etching products belong in Class 5.

 

“Drill bath preparations for dental drills” is unclear. If this is a sterilizing preparation, that must be stated as in “sterilizing preparations, namely, drill bath preparations for sterilizing dental drills” in Class 5.

 

“Chemico-pharmaceutical preparations for hygienic purposes except preparations related to extracorporal blood treatment” is extremely confusing, because it states what the products are not, rather than naming what they are. The applicant must amend this wording clearly to identify goods in Class 5.

 

“Floating liquid for fecal analysis in animals” is unclear. Both the method and purpose of detection for such goods must be stated as in “chemically treated papers for use in the detection of fecal occult blood.”

 

“Color spray for dental purposes” is unclear. The applicant must state the purpose of this item, so that the examining attorney can determine whether it belongs in Class 3 or Class 5. “Home dental care products for dogs and cats, namely, non-medicated dental spray” belongs in Class 3.

 

“Sprays for dental purposes, namely, occlusion spray” is unclear. The applicant must explain the purpose of this item, and whether it is medicated or non-medicated.

 

“Sprays for dental prostheses” is unclear. The applicant must explain the purpose of this item, and whether it is medicated or non-medicated.

 

“Dental scan fluid for displaying dental surfaces” is unclear. The applicant must explain the purpose of this item, and whether it is medicated or non-medicated.

 

“Tissues impregnated with pharmaceutical lotions” is unclear. The applicant must replace “pharmaceutical lotions” with wording that clearly states the purpose of the goods such as “tissues impregnated with antibacterial preparations.”

 

“Prostheses finish” is unclear. The applicant must supply the common commercial name of this item, or a brief explanation, to enable proper classification.

 

“Scan fluid” is unclear. The applicant must supply the common commercial name of this item, or a brief explanation, to enable proper classification.

 

“Scan spray glaze spray” is unclear. The applicant must supply the common commercial name of this item, or a brief explanation, to enable proper classification.

 

“Rapid surface disinfection” appears to identify services. The applicant must state what is being disinfected. “Medical waste, blood and bodily fluid disinfection services” belong in Class 37.

 

“Die spacer” is unclear. The applicant must provide the common commercial name of this item, or a brief explanation. The explanation should include whether the item is medical or non-medical as well as its purpose.

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 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.

 

Because it is possible that, when properly identified, the applicant’s goods and services will belong in more international classes than currently are of record, information about adding classes to an application is set forth below:

 

Combined Applications

 

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

 

General Information

 

Response guidelines.  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.

 

 

 

 

 

 

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

 

 

/Doritt Carroll/

Trademark Examining Attorney

Law Office 116

571-272-9138

doritt.carroll@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 January 14, 2021 for

U.S. Trademark Application Serial No. 90163674

 

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. 

 

 

/Doritt Carroll/

Trademark Examining Attorney

Law Office 116

571-272-9138

doritt.carroll@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 January 14, 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.”