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`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`*79214589*
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`CLICK HERE TO RESPOND TO THIS
`LETTER:
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`http://www.uspto.gov/trademarks/teas/response_forms.jsp
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`
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`U.S. APPLICATION
`SERIAL NO. 79214589
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`
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`MARK: T1
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`CORRESPONDENT
`ADDRESS:
`
` PARK, Seong Jun
`
` 6th Fl., Samsung
`
`Bldg.,
`
` 623, Teheran-ro,
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` Seoul 06173
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` REPUBLIC OF
`
`KOREA
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`APPLICANT:
`OSSTEMIMPLANT CO.,
`LTD.
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`
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`CORRESPONDENT’S
`REFERENCE/DOCKET
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`NO:
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` N/A
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`
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`CORRESPONDENT
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`E-MAIL ADDRESS:
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`OFFICE ACTION
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`STRICT DEADLINE TO RESPOND TO THIS LETTER
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`INTERNATIONAL REGISTRATION NO. 1360991
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`STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR
`EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE
`TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
`WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
`
`In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the
`USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. To do so, enter the U.S. application serial
`number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full
`refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
`
`This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.
`See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
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`SUMMARY OF ISSUES:
`
`Clarification of the Identification of Goods
`Significance of Letter and Number in the Mark
`
`SEARCH RESULTS
`
`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.
`
`The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
`
`However, in order to pursue registration, applicant must address the following issues:
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`Clarification of the Identification of Goods
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`Some of the wording in the identification of goods is indefinite and must be clarified because the specific nature of some of the goods is not
`clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, “apparatus and installations for the production of X-rays, for medical
`purposes” requires clarification because such wording fails to indicate specific goods classified in Class 010. In the identification of goods,
`applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of
`indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words, such wording must be followed
`by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
`
`The following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions in
`bold and/or brackets so long as they are accurate. Applicant should note that the braces-brackets indicate where applicant must insert
`specific types of goods or services. The braces should NOT appear in the amended identification; only the specific goods or services
`
`inserted by applicant. Applicant need not amend identifications other than where specified.
`
`Applicant may consider the following suggestions:
`
`Class 010
`
`Medical devices for dosimetry purposes in the field of radiotherapy; apparatus and installations for the production of X-rays, namely,
`{SPECIFY, E.G, x-ray apparatus, medical x-ray film} for medical purposes; X-ray photographs for medical purposes; X-ray apparatus
`for medical purposes; radiological apparatus for medical purposes; computed tomography [CT] apparatus; X-ray CT scanners; X-ray
`diagnostic apparatus; medical apparatus and instruments for displaying diagnostic tests, namely {SPECIFY, E.G, mounts for x-ray
`negatives for medical purposes}; medical apparatus and instruments, namely {SPECIFY, E.,G.., radiological apparatus for medical
`purposes, etc.}; peripheral devices being structural components of medical CT scanners; X-ray tubes for medical purposes; X-ray
`appliances for dental purposes; X-ray sensors for dental purposes; X-ray apparatus for dental imaging; dental CT scanners; structural parts
`and fittings of dental CT scanners; movable apparatus and installations, namely {SPECIFY, E.,G x-ray apparatus, etc.} for the production
`of X-rays, for medical or dental purposes; dental apparatus and instruments, namely {SPECIFY, E.,G milling apparatus, apex locator,
`etc.}; X-ray generator sold as a component of x-ray apparatus for medical or dental purposes.
`
`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). Additionally, for applications filed under Trademark Act Section 66(a), the
`scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of
`the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from
`that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a)
`application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP
`§1401.03(d).
`
`For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S.
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`Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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`Significance of Wording in the Mark
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`Applicant must specify whether the wording “T1” has any significance in the medical trade or industry or as applied to the goods described in
`the application, or if such wording is a “term of art” within applicant’s industry.
` See 37 C.F.R. §2.61(b); TMEP §814.
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`Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d
`1917, 1919 (TTAB 2008); In re DTI P’ship LLP , 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
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`WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be
`personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate
`officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or
`her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys
`include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S.
`commonwealths or U.S. territories. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the
`proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R.
`§2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature,
`or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
`
`In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an
`amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-
`
`.03(b), 608.01.
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`DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to
`designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37
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`C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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`/CarynGlasser/
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`Trademark Examining Attorney
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`Law Office 105
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`Phone: (571) 270-1517
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`Fax: (571) 270-2517
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`caryn.glasser@uspto.gov
`
`TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.
`For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned
`trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the
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`response.
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`PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
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`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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