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 09, 2021

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on May 13, 2021.

 

In a previous Office action(s) dated March 5, 2021, applicant was required to satisfy the following requirement(s): amend the identification of goods, provide a translation of foreign wording in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: provide a translation of foreign wording in the mark.  See TMEP §§713.02, 714.04. 

 

Applicant must now respond to the following issue, which is maintained and continued.

 

SUMMARY OF ISSUES:

• MAINTAINED AND CONTINUED: Identification of Goods

 

 

MAINTAINED AND CONTINUED: Identification of Goods

 

The identification of goods must be amended because some of the wording is indefinite and/or overly broad.

 

The wording “perfusion systems comprised of power supply units, roller pumps and monitoring device for perfusion systems, and replacement parts for perfusion systems” in the identification of goods for International Class 10 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d).  For example, “lawn-care systems comprised of herbicides, pesticides, and lawn sprinklers” are in International Class 5, and “lawn-care systems comprised of lawn mowers and herbicides” are in International Class 7.

 

Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

In this case, “power supplies” belong in International Class 9. If power supplies are the primary components of the systems, applicant’s systems must be classified in International Class 9. Additionally, the type of pump, the nature of “monitoring device” included in the systems and the nature of “replacement parts” are unclear.

 

The wording “perfusion charting software” is indefinite and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a). 

 

Applicant may specify that the software is “recorded,” if accurate.

 

To address the indefinite and overly broad discussed above, applicant may adopt any or all of the following identification of goods, if accurate.  Suggested changes are indicated in bold, strikethrough, and underlined fonts.  If adding international classes, applicant must follow the multiple-class application requirements detailed below:

 

International Class 9:           Perfusion systems comprised of power supplies, {specify common commercial names of “roller pumps” and “monitoring device”}; replacement parts for perfusion systems in the nature of {specify common commercial names of goods in Class 9, e.g., power supplies}.

 

International Class 10:            Medical apparatus and instruments for treating cardiovascular disease and their accessories in the nature of cardiac pacemakers, cardiac probes, cardiac electrodes, artificial cardiac valves, apparatus for cardiac defibrillation, cardiac event recorders, cardiac valves for surgical prostheses, medical apparatus to improve cardiac performance through aortic flow therapy, and catheters for use in cardiac ablation; heart and lung machines, namely, cardiopulmonary bypass machines for taking over the functions of the body's heart and lungs during open heart or traditional surgery; perfusion systems comprised of power supply units, roller pumps and monitoring device for perfusion systems, and replacement parts for perfusion systems; perfusion data management systems comprised of heart monitors, respiration monitors, computer hardware, and real-time perfusion charting recorded software that generates, stores and manages a completely digital perfusion record, and replacement parts for heart monitors, respiration monitors, and related computer hardware.

 

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

 

 

 

Multiple class application requirements

 

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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class.  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.

 

 

 

Responding to this Office action

 

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.    

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@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 June 09, 2021 for

U.S. Trademark Application Serial No. 90227474

 

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. 

 

 

/April Reeves/

April E. Reeves

Examining Attorney

Law Office 124

(571) 272-3681

april.reeves@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 June 09, 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.”