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:  June 23, 2021

 

 

This is further to the response entered into the record on June 23, 2021.

STATUS:  Registration was refused pending:  a) a copy of the foreign registration certificate supporting the 44(e) filing basis; b) a requirement to amend indefinite wording in Class 10.  The examining attorney has reviewed the response and determined the following.

 

FOREIGN REGISTRATION CERTIFICATE:  The applicant must submit an English translation of the foreign registration.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

The document seems to be partially translated, but for example, the identification of goods is not translated into English. 

 

CLASS 10 IDENTIFICATION:  The reference to “medical instruments incorporating lasers” in Class 10 requires further clarification.  Applicant amended the wording to “ Medical instruments incorporating lasers for use in urological treatment,” but kept the unaccpetable wording “medical instruments incorporating lasers” in the identification. 

As noted in the first Office Action, the wording “medical instruments” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Applicant may substitute the following wording, if accurate:  “medical instruments incorporating lasers for use in {indicate type of surgery or purpose}.”

 

 

 

 

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

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

 

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 June 23, 2021 for

U.S. Trademark Application Serial No. 90175616

 

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. 

 

 

/Giselle Agosto-Hincapie/

Examining Attorney Advisor

Trademarks Law Office 102

giselle.agosto@uspto.gov (Informal inquires only)

571-272-5868

 

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 June 23, 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.”