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:  February 19, 2021

 

 

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.

 

 

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.

 

 

SUMMARY OF ISSUES:

• Sections 1 & 45 Refusal – Specimen Does Not Show Use with Services
• Indefinite Identification of Services

 

 

SECTIONS 1 & 45 REFUSAL – SPECIMEN DOES NOT SHOW USE WITH SERVICES

 

Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the services specified in the application in International Class 45.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

Specifically, the specimen of use for the services identified as “customizing airway and bleed stoppage kits” show that applicant uses the applied-for mark online retail store services featuring, for example, a Curaplex branded bleed stoppage kits as well as with goods that may be included in an airway kit.  The specimens do not show, however, that applicant uses the mark to offer services in which it customizes kits to the order and specification of consumers.  Therefore, the specimens of use do not show with the identified “customizing airway and bleed stoppage kits” servces.

 

Examples of specimens.  Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response.  See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)       Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)       Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage. 

 

 

INDEFINITE IDENTIFICATION OF SERVICES

The identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant has classified “peak flow meters” in International Class 9; however, the proper classification is International Class 10.  These goods have been moved to International Class 10 in the suggested amended identification of goods and services provided below.

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of goods and/or services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of goods and/or services.  TMEP §1402.01(a).  An applicant should not use colons, periods, exclamation points, and question marks in an identification.  Id.  In addition, applicants should not use symbols in the identification such as asterisks (*), at symbols (@), or carets.  Id.

 

In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo).  Id.  Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners).  Id. 

 

The goods identified as “oxygen delivery supplies, namely, . . . equipment covers and setup bags” are indefinite.  If these goods are in the nature of fitted covers and specially adapted bags for oxygen delivery equipment, such goods are properly classified in International Class 10 and applicant may so specify.

 

Applicant must clarify the nature of the “heat and moisture exchangers” by specifying that they are for medical use.

 

The goods identified as “oxygen delivery supplies, namely, . . . filters” are indefinite.  If these goods are in the nature of air filters for medical ventilators or nasal filters for medical use, such goods are properly classified in International Class 10 and applicant may so specify.

 

The goods identified as “oxygen delivery supplies, namely, . . . humidification solutions” are indefinite.  If these goods are in the nature of solutions for use in humidification apparatus for medical purposes, such goods are properly classified in International Class 10 and applicant may so specify.

 

The goods identified as “oxygen delivery supplies, namely, . . . nose clips” are indefinite.  If these goods are in the nature of therapeutic nose clips, such goods are properly classified in International Class 10 and applicant may so specify.

 

The nature of the goods identified as “oxygen delivery supplies, namely, . . . nasopharyngeal airway, cricothyrotomy, pulmonary function test filters is not clear.  If these goods are in the nature of filters for use in nasopharyngeal airway, cricothyrotomy, pulmonary function testing medical equipment, such goods are properly classified in International Class 10 and applicant may so specify.

 

The goods identified as “oxygen delivery supplies, namely, . . . pressure infusers” are indefinite.  If these goods are in the nature of intravenous (IV) pressure infusers or pressure infusers used to control the pressure of infusion bag fluids in administering intravenous fluids, such goods are properly classified in International Class 10 and applicant may so specify.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 10 for “pulse oximetry accessories.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it 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.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).  The second instance of these goods has been deleted from the suggested amended identification of goods set forth below.

 

The identification for “pulse oximetry accessories” in International Class 10 is indefinite and too broad and must be clarified because this wording does not make clear the nature of the type of accessory and could include goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  Applicant must either (1) specify the common commercial or generic name for each accessory item, or (2) delete this wording from the identification.  See TMEP §§1402.01, 1402.03(a). 

 

The goods identified as “oxygen delivery supplies, namely, . . . positive airway pressure” are indefinite.  If these goods are medical apparatus in the nature of continuous positive airway pressure (CPAP) devices, such goods are properly classified in International Class 10 and applicant may so specify.

 

Applicant must clarify that the goods identified as “atomization barrier or procedural oxygen device” is a medical device.

 

The goods identified as “oxygen delivery supplies, namely, . . . skin protection” are indefinite.  If these goods are in the nature of protective sleeves used with orthopedic bracing systems to protect skin from abrasions, such goods are properly classified in International Class 10 and applicant may so specify.

 

The goods identified as “oxygen delivery supplies, namely, . . . wound care” are indefinite.  If these goods are in the nature of wound drainage apparatus or wound irrigation apparatus, such goods are properly classified in International Class 10 and applicant may so specify.  Furthermore, if these goods are in the nature of wound dressings, such goods are properly classified in International Class 5 and applicant may so specify.

 

The services identified as “customizing airway and bleed stoppage kits” are indefinite.  If these services are in the nature of customizing medical care airway and bleed stoppage kits, such services are properly classified in International Class 44 and applicant may so specify.

 

Applicant may adopt the following wording, if accurate:

 

International Class 5 – Wound dressings

 

International Class 10 – Medical products in the nature of emergency and acute care products, namely, resuscitation bags, small volume nebulizers, open suction catheters, closed suction catheters, laryngoscope blades, laryngoscope handles, tracheostomy ties, cannulas, valve and spring tee adapters used to deliver medication via a nebulizer, carbon dioxide detectors for carbon dioxide monitoring; Medical products in the nature of oxygen delivery supplies, namely, cannulas, tubing and masks, fitted covers and specially adapted setup bags for oxygen delivery equipment, endotracheal tubes, heat and moisture exchangers for medical use, air filters for medical ventilators, solutions for use in humidification apparatus for medical purposes, metered dose inhaler spacer, therapeutic nose clips, intravenous (IV) pressure infusers, pulse oximetry sensors, medical apparatus in the nature of continuous positive airway pressure (CPAP) devices, atomization barrier or procedural oxygen medical device, protective sleeves used with orthopedic bracing systems to protect skin from abrasions, wound drainage apparatus; Medical products in the nature of oxygen delivery supplies, namely, filters for use in nasopharyngeal airway, cricothyrotomy, pulmonary function testing medical equipment; Peak flow meters

 

International Class 44 – Customizing medical care airway and bleed stoppage kits

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  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 and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

 

ADVISORY – RESPONSE ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@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 February 19, 2021 for

U.S. Trademark Application Serial No. 90314879

 

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. 

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@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 February 19, 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.”