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:  March 03, 2022

 

 

 

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

 

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:

 

• Claim and Description of color not acceptable as is
• Disclaimer required

 

Examiner’s Amendment Suggested

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

Claim and Description of Color Not Acceptable

 

Applicant must provide an amended claim of colors and description of the mark that includes all the colors/ shown in the mark.  Specifically, all of the colors claimed have been omitted in the description.  Additionally, generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii).  “Jelly bean” is not a generic color name.  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  TMEP §807.07(d)(ii). 

 

A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the description a statement that black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark.  See TMEP §807.07(d).

 

The following color claim and description is suggested, if accurate:

 

The colors gray and blue are claimed as a feature of the mark in the U.S. application.

 

The mark consists of a gray fading horizontal oval with a transparent crescent cutout along the top and a smaller transparent oval containing a stylized gray checkered design in the center, the larger oval fading into the stylized blue literal element “ALLY” in capital letters, above the literal blue element “ADAPTIVE CATARACT TREATMENT SYSTEM” in small capital letters.  The white areas including the “transparent” areas are background and not claimed as a feature of the mark.

 

Disclaimer Of Descriptive Wording

 

Applicant must disclaim the wording “ADAPTIVE CATARACT TREATMENT SYSTEM” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The terms in the mark are defined as:

 

ADAPTIVE:  providing, contributing to, or marked by adaptation : arising as a result of adaptation.  To adapt means “to make fit (as for a new use) often by modification.”

 

CATARACT:  a clouding of the lens of the eye or of its surrounding transparent membrane that obstructs the passage of light.

 

TREATMENT:  the action or way of treating a patient or a condition medically or surgically : management and care to prevent, cure, ameliorate, or slow progression of a medical condition.

 

SYSTEM:  a group of devices or artificial objects or an organization forming a network especially for distributing something or serving a common purpose.

 

http://lensar.com/allyvirtualdemo:  The ALLY™ Adaptive Cataract Treatment System marries LENSAR’s superior imaging, a next generation femtosecond laser, and astigmatic management technology with Oertli’s Swiss-engineered phacoemulsification technology in one small, integrated cataract treatment system that:  Fits in every OR in-office surgical suite with compact, dual-function design…Enables a sterile procedure to increase efficiency with faster procedure times and better patient and surgeon experience…Uses Adaptive Intelligence™ to optimize the femtosecond laser and phacoemulsification treatments with the goal of reducing overall energy delivered in the eye.

 

http://biotuesdays.com/2022/03/01/fda-accepts-lensar-510k-submission-for-ally/:  “He said the vast majority of cataract surgeons performing FLACS procedures rely on aging femtosecond lasers. ALLY’s design includes a small footprint, enhanced ergonomics, superior imaging, dual-pulsed laser, and advanced astigmatism management tools, which “we believe, if cleared, would set the new standard of femtosecond laser cataract technology,” he added.”

 

Based on the above evidence, the term “ADAPTIVE CATARACT TREATMENT SYSTEM” immediately informs potential doctors and/or patients that the group of devices will modify itself or  adapt to whatever cataract treatment necessary.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “ADAPTIVE CATARACT TREATMENT SYSTEM” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Questions?

 

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.    

 

 

/Amy E. Thomas/

Examining Attorney

Law Office 110

U.S. Patent & Trademark Office

571-272-9171

Amy.Thomas@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 March 03, 2022 for

U.S. Trademark Application Serial No. 90759319

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 to ensure you receive important USPTO notices about your application.

 

·       Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”  Verify the correspondence originated from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact the Trademark Assistance Center.

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.