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:  May 13, 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.

 

SUMMARY OF ISSUES

 

• ADVISORY: PRIOR-FILED APPLICATION
• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
• IDENTIFICATION OF GOODS
• MULTIPLE CLASS APPLICATION REQUIREMENTS

 

ADVISORY: PRIOR-FILED APPLICATION

 

The filing date of pending U.S. Application Serial No. 87869515 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2893284, 5706306, 6316977, 1805200, and 2495129.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Applicant’s mark is EXPLORER in International Class 009 for: “Computer hardware for gathering and processing biopotential signals; Signal processors; Modular electrode reading and recording for medical electrodes; Digital electrode reading and recording for medical electrodes; Analog reading and recording for medical electrodes; Health and wellness devices, namely, devices that monitor electrical signals of a person's neural system; Medical electrodes; Electrodes for medical use; Medical devices for administering stimulation-based therapies; Electrical nerve and muscle stimulators; neurotechnologies and brain mapping; medical electrodes for gathering information to treat diseases associated with autonomous vital functions for use in *IDENTIFICATION neurotechnology; Analytical and medical diagnostic apparatus, namely, medical devices and systems for diagnosing and analyzing patients' medical data retrieved from devices comprised of medical electrodes and electronic control and/or evaluation units therefore used in direct association with medical diagnosis apparatus, telemetry devices for medical applications, wireless receivers, wireless transmitters; Analytical and medical diagnostic apparatus, namely, medical devices and systems for diagnosing and analyzing patients' medical data retrieved from active artificial implanted devices and comprised of medical electrodes and electronic control and/or evaluation units therefore used in direct association with medical diagnosis apparatus, telemetry devices for medical applications, wireless receivers, wireless transmitters, and medical devices for monitoring vital signs; Medical apparatus, signal processors; Medical apparatus, amplifiers and digitizers; Software and computer programs for controlling medical apparatus, including signal processors, amplifiers and digitizers, stimulators, and electrodes, in the field of neurology, neurosurgery, neuroprosthetics, neurophysiology, neuroinformatics and neurotechnology.”

 

The registered marks are as follows:

 

REG. NO.	MARK	GOODS/SERVICES
2893284	NEUROEXPLORER	Class 009: Computer Software used for data analysis in the field of neurophysiology.
5706306	EXPLORER AIR	Class 009: Medical software for operating medical apparatus and instruments for the visual assessment of fluorescence in human tissues during surgical procedures Class 010: Medical apparatus and instruments for the visual assessment of fluorescence in human tissues during surgical procedures
6316977	EXPLORER	Class 010: Spinal implants composed of artificial material; Surgical implants for use in spinal surgery; Spinal devices, namely, interbody cages; Spinal devices, namely, interbody fusion devices; Implantable spinal devices, namely, interbody cages; Implantable spinal devices, namely, interbody fusion devices; all of the foregoing comprising artificial material.
1805200	EXPLORER	Class 010: medical products; namely, medical instrument used for measuring oxygen saturation, cardiac output and right heart ejection fraction
2495129	EXPLORER	Class 010: Medical device for the prevention and treatment of nausea.

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

Comparison of Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Applicant’s mark is EXPLORER in standard character format.

 

The registered marks are as follows:

 

REG. NO.	MARK	FORMAT
2893284	NEUROEXPLORER	Typed drawing
5706306	EXPLORER AIR	Stylized format with a design
6316977	EXPLORER	Standard character format
1805200	EXPLORER	Typed drawing
2495129	EXPLORER	Typed drawing

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is EXPLORER and the marks in reg. nos. 6316977, 1805200, and 2495129 are also EXPLORER. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods.  Id. Therefore, the marks are confusingly similar. 

 

As to the marks in reg. nos. 2893284 and 5706306, NEUROEXPLORER and EXPLORER AIR, respectively, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the applied-for mark is identical in part to both of the registered marks as applicant’s mark, EXPLORER, is incorporated in its entirety within both registered marks, NEUROEXPLORER and EXPLORER AIR.

 

The fact that the mark in reg. no. 5706306 contains a design does not obviate confusion between it and the applied-for mark because when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

In sum, the applied-for and registered mark are highly similar.

 

Comparison of Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Applicant’s goods are in International Class 009 for: “Computer hardware for gathering and processing biopotential signals; Signal processors; Modular electrode reading and recording for medical electrodes; Digital electrode reading and recording for medical electrodes; Analog reading and recording for medical electrodes; Health and wellness devices, namely, devices that monitor electrical signals of a person's neural system; Medical electrodes; Electrodes for medical use; Medical devices for administering stimulation-based therapies; Electrical nerve and muscle stimulators; neurotechnologies and brain mapping; medical electrodes for gathering information to treat diseases associated with autonomous vital functions for use in *IDENTIFICATION neurotechnology; Analytical and medical diagnostic apparatus, namely, medical devices and systems for diagnosing and analyzing patients' medical data retrieved from devices comprised of medical electrodes and electronic control and/or evaluation units therefore used in direct association with medical diagnosis apparatus, telemetry devices for medical applications, wireless receivers, wireless transmitters; Analytical and medical diagnostic apparatus, namely, medical devices and systems for diagnosing and analyzing patients' medical data retrieved from active artificial implanted devices and comprised of medical electrodes and electronic control and/or evaluation units therefore used in direct association with medical diagnosis apparatus, telemetry devices for medical applications, wireless receivers, wireless transmitters, and medical devices for monitoring vital signs; Medical apparatus, signal processors; Medical apparatus, amplifiers and digitizers; Software and computer programs for controlling medical apparatus, including signal processors, amplifiers and digitizers, stimulators, and electrodes, in the field of neurology, neurosurgery, neuroprosthetics, neurophysiology, neuroinformatics and neurotechnology.”

 

The goods of the registered marks are as follows:

 

REG. NO.	MARK	GOODS/SERVICES
2893284	NEUROEXPLORER	Class 009: Computer Software used for data analysis in the field of neurophysiology.
5706306	EXPLORER AIR	Class 009: Medical software for operating medical apparatus and instruments for the visual assessment of fluorescence in human tissues during surgical procedures Class 010: Medical apparatus and instruments for the visual assessment of fluorescence in human tissues during surgical procedures
6316977	EXPLORER	Class 010: Spinal implants composed of artificial material; Surgical implants for use in spinal surgery; Spinal devices, namely, interbody cages; Spinal devices, namely, interbody fusion devices; Implantable spinal devices, namely, interbody cages; Implantable spinal devices, namely, interbody fusion devices; all of the foregoing comprising artificial material.
1805200	EXPLORER	Class 010: medical products; namely, medical instrument used for measuring oxygen saturation, cardiac output and right heart ejection fraction
2495129	EXPLORER	Class 010: Medical device for the prevention and treatment of nausea.

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe “medical apparatus”, which presumably encompasses all goods of the type described, including:

-        Reg. no.  5706306’s more narrow: “Medical apparatus and instruments for the visual assessment of fluorescence in human tissues during surgical procedures”

-        Reg. no. 6316977’s more narrow: “Spinal devices, namely, interbody fusion devices; Implantable spinal devices, namely, interbody cages; Implantable spinal devices, namely, interbody fusion devices; all of the foregoing comprising artificial material.”

-        Reg. no. 1805200’s more narrow: “medical products; namely, medical instrument used for measuring oxygen saturation, cardiac output and right heart ejection fraction”

-        Reg. no. 2495129’s more narrow: “Medical device for the prevention and treatment of nausea.”

See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s goods are legally identical to the above listed goods of the registrants.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

As to reg. no. 2893284, the attached Internet evidence, consisting of webpage screenshots from BioPac Systems, Inc., Brain Products, and DSI, establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See attached evidence from BioPac Systems, Inc. advertising the registrant’s software for data analysis in the field of neurophysiology, as well as the applicant’s electrodes and medical apparatus in the nature of airflow transducers; the attached evidence from Brain Products advertising the registrant’s software for data analysis in the field of neurophysiology, as well as the applicant’s amplifiers and medical electrodes; and the attached evidence from DSI advertising the registrant’s software for data analysis in the field of neurophysiology, as well as the applicant’s medical apparatus in the nature of medical gas pressure regulators and temperature monitoring systems. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

In sum, the applied-for and registered marks are highly similar and the goods of the parties are related. As such, registration is refused under Section 2(d) for likelihood of confusion purposes.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

Identification Contains Open-Ended Terms: The wording “INCLUDING” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). Please note, the reference to “INCLUDING” has been deleted from the identification amendments suggested below.

 

Identification Contains “And/Or”: Applicant has included the term “and/or” in the identification of goods.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, applicant’s use of “and/or” in the identification of goods in Class 009 renders the purpose of applicant’s “analytical and medical diagnostic apparatus” unclear.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language. Please note, the wording “and/or” has been replaced with “and” in the identification amendments suggested below.

 

Misclassified Entries: In its application, applicant did not designate the international class number(s) for applicant’s goods.  Thus, the USPTO conducted a preliminary review and assigned an international class number to them.  See TMEP §1401.03(b).  While the USPTO correctly classified some of applicant’s goods in International Class 009, the USPTO incorrectly classified some goods that should actually be classified in International Class 010.

 

Therefore, applicant may respond by (1) adding International Class 010 to the application and reclassifying these goods in the proper international class, (2) deleting the below entries from the application, or (3) deleting the remainder of the items in the identification and reclassifying the below specified goods in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  Please note, the above entries have been removed from the Class 009 identification amendments suggested below and reclassified in the Class 010 identification amendments. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

-        Applicant has classified “MODULAR ELECTRODE READING AND RECORDING FOR MEDICAL ELECTRODES; DIGITAL ELECTRODE READING AND RECORDING FOR MEDICAL ELECTRODES; ANALOG READING AND RECORDING FOR MEDICAL ELECTRODES” in International Class 009. While further clarification is required to better identify the nature of the goods, apparatus and equipment with a medical purpose is properly classified in International Class 010. 

 

-        The identifications for “HEALTH AND WELLNESS DEVICES, NAMELY, DEVICES THAT MONITOR ELECTRICAL SIGNALS OF A PERSON’S NEURAL SYSTEM; MEDICAL ELECTRODES; ELECTRODES FOR MEDICAL USE; MEDICAL DEVICES FOR ADMINISTERING STIMULATION-BASED THERAPIES” and “MEDICAL ELECTRODES FOR GATHERING INFORMATION TO TREAT DISEASES ASSOCIATED WITH AUTONOMOUS VITAL FUNCTIONS FO RUSE IN NEUROTECHNOLOGY” have been classified in Class 009; however, the correct classification is Class 010.

 

-        The identification for “ELECTRICAL NERVE AND MUSCLE STIMULATORS” has been classified in Class 009; however, the correct classification is Class 010. In addition, this entry requires amendment to further clarify the nature and purpose of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

-        The identifications for “ANALYTICAL AND MEDICAL DIAGNOSTIC APPARATUS, NAMELY, MEDICAL DEVICES AND SYSTEMS FOR DIAGNOSING AND ANALYZING PATIENTS’ MEDICAL DATA RETRIEVED FROM DEVICES COMPRISED OF MEDICAL ELECTRODES AND ELECTRONIC CONTROL AND/OR EVALUATION UNITS THEREFORE USED IN DIRECT ASSOCIATION WITH MEDICAL DIAGNOSIS APPARATUS, TELEMETRY DEVICES FOR MEDICAL APPLICATIONS, WIRELESS RECEIVERS, WIRELESS TRANSMITTERS; ANALYTICAL AND MEDICAL DIAGNOSTIC APPARATUS, NAMELY, MEDICAL DEVICES AND SYSTEMS FOR DIAGNOSING AND ANALYZING PATIENTS’ MEDICAL DATA RETRIEVED FROM ACTIVE ARTIFICIAL IMPLANTED DEVICES AND COMPRISED OF MEDICAL ELECTRODES AND ELECTRONIC CONTROL AND/OR EVALUATION UNITS THEREFORE USED IN DIRECT ASSOCIATION WITH MEDICAL DIAGNOSIS APPARATUS, TELEMETRY DEVICES FOR MEDICAL APPLICATIONS, WIRELESS RECEIVERS, WIRELESS TRANSMITTERS AND MEDICAL DEVICES FOR MONITORING VITAL SIGNS” have been classified in Class 009; however, the correct classification is Class 010.

In addition, these entries require further amendment to better clarify the parts or components of the systems and their purpose. See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  In general, identifications containing the wording “systems” should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d).

Indefinite and/or Overbroad Entries:

 

-        Applicant must clarify the wording “MEDICAL APPARATUS, SIGNAL PROCESSORS” in the identification of goods in International Class 009 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class.  For example, this wording could encompass digital signal processors in Class 009, and/or medical apparatus in the nature of signal processors in Class 010.

 

-        Applicant must clarify the wording “MEDICAL APPARATUS, AMPLIFIERS AND DIGITIZERS” in the identification of goods in International Class 009 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class.  For example, this wording could encompass amplifiers in Class 009 and medical apparatus in the nature of medical digitizers in Class 010, and/or medical apparatus in the nature of medical amplifiers and digitizers in Class 010. Please note, further clarification regarding “DIGITIZERS” is required as the nature of these goods is not clear based on the current identification.

 

-        Applicant must clarify the wording “NEUROTECHNOLOGIES AND BRAIN MAPPING” in the identification of goods in International Class 009 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not identify any form of tangible good. Further, this wording could identify goods in more than one international class.  For example, this wording could encompass downloadable software for use with neurotechnologies for brain mapping purposes in Class 009, and/or medical neurotechnology apparatus for brain mapping purposes in Class 010.

 

-        The identification for software and computer programs in International Class 009 is indefinite and too broad 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).  Downloadable and recorded goods are in International Class 009, whereas providing their temporary, online non-downloadable use is a service in International Class 042.  See TMEP §1402.03(d).

 

In sum, applicant may substitute the following wording, if accurate: 

 

• International Class 009: Computer hardware for gathering and processing biopotential signals; Signal processors; downloadable computer software for use with neurotechnologies for brain mapping purposes; digital signal processors; amplifiers and computer cursor control devices, namely, digitizer tablets; downloadable medical software and computer programs for controlling medical apparatus, namely, signal processors, amplifiers and digitizers, stimulators, and electrodes, for use in the field of neurology, neurosurgery, neuroprosthetics, neurophysiology, neuroinformatics and neurotechnology;
• International Class 010: modular electrode medical apparatus and instruments for reading and recording medical electrodes; digital electrode medical apparatus and instruments for reading and recording  medical electrodes; Analog medical apparatus and instruments for reading and recording medical electrodes; health and wellness devices, namely, devices that monitor electrical signals of a person’s neural system; medical electrodes; electrodes for medical use; medical devices for administering stimulation-based therapies; electro medical rehabilitative and pain management products for clinical and home use, namely, electrical nerve and muscle stimulator; medical neurotechnology apparatus for brain mapping purposes; medical electrodes for gathering information to treat diseases associated with autonomous vital functions for use in neurotechnology; analytical and medical diagnostic apparatus, namely, medical devices and systems consisting primarily of medical electrodes and electronic control and evaluation units that are used in direct association with medical diagnosis apparatus, telemetry devices for medical applications, wireless receivers, and wireless transmitters for diagnosing and analyzing patients' medical data retrieved from medical devices; Analytical and medical diagnostic apparatus, namely, medical devices and systems consisting primarily of medical electrodes and electronic control and evaluation units that are used in direct association with medical diagnosis apparatus, telemetry devices for medical applications, wireless receivers, wireless transmitters, and medical devices for monitoring vital signs to diagnose and analyze patients’ medical data retrieved from active artificial implanted devices; medical apparatus, namely, signal processors; medical apparatus, namely, amplifiers and digitizers.
• International Class 042: providing temporary use of on-line non-downloadable medical software and computer programs for controlling medical apparatus, namely, signal processors, amplifiers and digitizers, stimulators, and electrodes, for use in the field of neurology, neurosurgery, neuroprosthetics, neurophysiology, neuroinformatics and neurotechnology;

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.

If applicant adopts any of the suggested amendments to the identification of goods, then applicant must amend the classification to add the proper international class(es) noted above, i.e., International Class(es) 010 and/or 042. See C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401. See below for discussion of multiple-class application requirements.

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted.  See TMEP §1402.07(e).

If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.

 

(3)       Submit verified dates of first use of the mark anywhere and in commerce for each international class.  See more information about verified dates of use.

 

(4)       Submit a specimen for each international class.  The current specimen shows the mark on “front ends”, a form of “computer hardware”, and is therefore acceptable for the goods in Class 009. Applicant needs a specimen for the goods in Class 010 and services in Class 042. See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

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).

 

(5)       Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”  See more information about verification.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and 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.

 

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 and requirement 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.   

 

/Lucy Ellen Browne/

Lucy Ellen Browne

Examining Attorney

Law Office 125

571-270-0961

lucy.browne@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 May 13, 2021 for

U.S. Trademark Application Serial No. 90323968

 

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. 

 

 

Browne, Lucy

 

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 May 13, 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.”