| To: | PHILIPS RS NORTH AMERICA LLC (Lillian.Drumheller@philips.com) |
| Subject: | U.S. Trademark Application Serial No. 90374954 - RESPIRONICS - 2020TF50050 |
| Sent: | June 08, 2021 07:47:18 PM |
| Sent As: | ecom103@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90374954
Mark: RESPIRONICS
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Correspondence Address: 465 COLUMBUS AVENUE, SUITE 340
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Applicant: PHILIPS RS NORTH AMERICA LLC
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Reference/Docket No. 2020TF50050
Correspondence Email Address: |
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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 08, 2021
SEARCH OF USPTO DATABASE OF MARKS
MISCLASSIFIED, OVERBROAD AND INDEFINITE IDENTIFICATION OF GOODS AND SERVICES – AMENDMENT REQUIRED
Parts, Fittings, and Accessories
However, while the wording “parts” and “fittings” alone is generally unacceptable for the reasons identified above, the wording “replacement parts therefor” or “structural parts therefor” is acceptable when it follows a definite identification of goods. See TMEP §1402.03(a).
Similarly, the wording “accessories” and “accessories therefor” in in the identification of goods 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).
Class 5
Applicant has classified “adhesive for application to a respiratory mask for creating an air tight seal between the mask and the face to protect patients and healthcare workers from air-borne pathogens” in International Class 5; however, the proper classification is International Class 10. Additionally, the wording is indefinite and must be clarified to specify the type of adhesive, such as tape.
Class 7
The wording “compressor for compressing oxygen and for filling oxygen bottles” in the identification of goods is indefinite and must be clarified because the type of compressor must be specified, i.e. air compressor. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 9
For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first. See id. Generally, a kit is classified in the same international class as the majority of the components in the kit. See id. For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).
If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit. See id. For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).
For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].” See id. Generally, this type of kit is classified in the international class of the product being made. For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).
For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
The wording “wrist worn micro-controller based data logger for use to monitor activity, ambient light and physiological parameters in human subjects” in the identification of goods is indefinite and must be clarified because the nature of the data logger must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifying that the data logger is electronic will resolve the issue.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Finally, the wording “non-downloadable computer software for analyzing data from face and head images and patient questionnaires for use in selecting a respiratory mask or generating a customized respiratory mask design” is misclassified. The correct classification is Class 42. Applicant must also amend the wording to clarify the nature of the software services.
Class 10
The wording “respiratory equipment and monitors therefor, and apparatus that provides variable air pressure to a patient” in the identification of goods is indefinite and must be clarified because the specific respiratory equipment, monitors, and apparatus must be identified by their common commercial names. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “airway pressure devices” in the identification of goods is indefinite and must be clarified because the specific devices must be listed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “pulsating garments for providing pulsating pressure or vibration to the upper body of a person” in the identification of goods is indefinite and must be clarified because the nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “oxygen concentrators” in the identification of goods is indefinite and must be clarified because the goods must be for medical purposes to be properly classified in Class 10. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “capnography sensors” in the identification of goods is indefinite and must be clarified because the medical nature of the sensors must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “masks with gel nasal pillows or with silicone nasal pillows” in the identification of goods is indefinite and must be clarified because the medical nature of the masks must be specified in order for the masks to be properly classified in Class 10. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “sleep apnea diagnostic devices for in-home use” in the identification of goods is indefinite and must be clarified because the specific devices must be listed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “medical apparatus for recording and analyzing sleep-related disorders in infants” in the identification of goods is indefinite and must be clarified because the medical information or data recorded and analyzed must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 35
The wording “data processing services in the nature of data administration using computers” in the identification of services is indefinite and must be clarified because the nature of the “data administration” is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Because the wording “data processing services” is definite and the wording that follows does not clearly limit those services in any way, the wording may be amended to “data processing services” to resolve the issue. Otherwise, the nature of the data administration must be clarified.
Class 38
The wording “communications through a global computer network; communications through the internet” in the identification of services is indefinite and must be clarified because the nature of the communications must be specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 44
The wording “medical training and continuing education in the sleep and respiratory care fields” and “cloud computing services for processing and analyzing face and head images, retrieving and analyzing patient questionnaires, and selecting a respiratory mask or generating a customized face mask design to fit the patient” are misclassified. The training and continuing education services are properly classified in Class 41. The cloud computing services are properly classified in Class 42, and the wording must also be amended to clarify the nature of the cloud services, such as the provision of software.
Suggested Amendments
Applicant may substitute the following wording, if accurate:
Class 5 –
Oxygen for medical use; adhesive for application to a respiratory mask for creating an air tight seal between the mask and the face to
protect patients and healthcare workers from air-borne pathogens
Class 7 –
Oxygen concentrator and compressor for compressing oxygen and for filling oxygen bottles; Air compressor for compressing oxygen and for filling oxygen bottles; all for domestic use
Class 9 –
Batteries and electric rechargeable batteries; electrical rechargeable battery packs; battery kits consisting of [list the contents of the
kits, e.g., batteries, battery chargers, etc.]; battery chargers; parts of the aforesaid goods in this class only, namely, [clarify the nature of the
goods, e.g., battery vent caps, replacement electrical cables for battery chargers, etc.]; wrist worn micro-controller based electronic data logger
for use to monitor activity, ambient light and physiological parameters in human subjects; Downloadable computer software for medical purposes, namely, for
controlling apparatus for treating breathing disorders, and for controlling and managing patient medical information; Downloadable computer software for
use in the field of healthcare, namely, for collecting, processing and managing sleep and respiratory patient data enabling providers to share and exchange information; Downloadable computer software for use in diagnosing sleep disorders; Downloadable computer software for automatically performing sleep
study scoring for use in recording and analyzing data during the sleep of patients; Downloadable computer software programs and application software suited
for smart phones for recording, editing and transmitting data; Downloadable computer software incorporating medical algorithms for controlling positive
airway pressure apparatus for the treatment of respiratory disorders; Downloadable computer software and firmware, namely, operating system programs, data
synchronization programs, and application development computer software programs for personal and handheld computers; downloadable and
non-downloadable computer software for analyzing data from face and head images and patient questionnaires for use in selecting a respiratory mask or generating a customized respiratory
mask design
Class 10 –
Medical and surgical apparatus, equipment and instruments, namely, apparatus for use in the treatment of breathing disorders and replacement parts and fittings therefor; positive airway pressure equipment for the treatment of sleep apneas and replacement parts and
fittings therefor; medical ventilator equipment to assist or replace patient breathing and replacement parts and fittings therefor; medical resuscitators
and replacement parts and fittings therefor; respiratory equipment and monitors therefor, and apparatus that provides variable air pressure to a
patient, namely, [specify the goods, e.g., variable positive airway pressure devices, etc.] and replacement
parts therefor; airway clearance systems and replacement parts and fittings and accessories therefor; a mechanical insufflation-exsufflation device used to clear secretions from the lungs by gradually applying positive pressure to the airway and
rapidly shifting to negative pressure to produce a high expiratory flow from the lung; airway pressure devices, namely, [specify the type, e.g., bi-level positive
airway pressure devices, continuous positive airways pressure devices, etc.]; pulsating garments for providing pulsating pressure or vibration to the upper body of a person being [clarify nature of the goods, e.g., a massage apparatus, etc.]; a pulsating garment and an air pulsating unit connected to the garment for providing pulsating
pressure to the upper body of a person to assist in loosening and eliminating mucus from the lungs, in muscle and nerve relaxation, and in other bodily functions; oxygen concentrators for medical purposes; portable oxygen concentrators and replacement parts and
accessories therefor, for medical applications; medical devices for use in oxygen therapy, namely, oxygen concentrators for in-home, non-neonatal use; capnography sensors being respiratory sensors; a valved holding chamber for use with metered dose inhalers; compressor-nebulizer for respiration therapy and drug delivery; nebulizers
for respiration therapy; respiratory apparatus and instruments in the nature of compressor nebulizers for respiration therapy, drug delivery nebulizers for administering medication in the form of a
mist inhaled into the lungs for treatment of asthma and respiratory diseases and replacement parts therefor; compressor nebulizer devices for respiratory
therapy and replacement parts therefor including nebulizers, compressors, respiratory sensors, mask seals, and masks; nasal masks in the nature of
respiratory masks for medical purposes, as well as replacement parts therefor; respiratory masks for sleep therapy, as well as replacement parts therefor; respiratory mask for use with medical breathing devices, as well as replacement parts therefor; Respiratory masks for medical purposes with gel nasal pillows or with silicone nasal pillows, as well as replacement parts therefor; wrist worn medical device for monitoring physical activity, namely, motion, as an indicator of movement disorders, sleep disorders, or
other medical conditions characterized by movement or lack of it such as level of pain, as well as for monitoring other parameters such as ambient light level, noise levels, temperature, or other
physiological or environmental parameters that aid in diagnosis and in tracking treatment effectiveness; sleep apnea diagnostic devices for in-home use, namely,
[specify the devices, e.g., continuous positive airways pressure devices, etc.]; medical apparatus for recording and analyzing physiological data to
identify sleep-related disorders in infants; adhesive [specify the material, e.g., tape, etc.] for application to a respiratory mask for creating
an air tight seal between the mask and the face to protect patients and healthcare workers from air-borne pathogens
Class 35 –
Compilation and systemization of data in computer databases; data processing services in the nature of data administration using
computers
Class 38 –
Remote electronic transmission of data via communications network and internet for data processing; communications being [clarify nature of services, e.g., transmission of voice, transmission of images, voice over IP services, etc.] through a global computer network; communications being [clarify nature of services, e.g., transmission of voice, transmission of images, voice over IP services, etc.] through the internet; providing access to the internet; providing internet chat rooms; providing user access to computer programs via the internet; providing telecommunications connections to the internet or databases; providing access to computer networks and the internet
Class 41 –
Medical training and continuing education in the sleep and respiratory care fields;
Class 42 –
Computer software design for data processing and data analysis; scientific research for medical purposes; Providing online non-downloadable software for analyzing data from face and head images and patient questionnaires for use in selecting a respiratory mask or generating a customized respiratory mask design; cloud-computing services featuring software for processing and analyzing face and head images, retrieving and analyzing patient questionnaires, and selecting a respiratory mask or generating a customized face mask design to fit the patient
Class 44 –
Services in the field of healthcare, namely, collecting, processing and managing sleep and respiratory patient data enabling providers to share and exchange information for the
purpose of medical treatment and diagnosis; medical training and continuing education in the sleep and respiratory care fields; cloud-computing services for
processing and analyzing face and head images, retrieving and analyzing patient questionnaires, and selecting a respiratory mask or generating a customized face mask design to fit the
patient
Amendment Guidelines
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.
REQUIREMENT – SPECIFY NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
The application identifies goods and services that are classified in at least 9 classes; however, applicant submitted fees sufficient for only 8 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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).
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.
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.
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.
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.
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE
