To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`KCI LICENSING, INC. (ipdocket@dykema.com)
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`U.S. TRADEMARK APPLICATION NO. 87045464 - T.R.A.C. - 709800.1389A
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`9/6/2016 2:02:29 PM
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`ECOM107@USPTO.GOV
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
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`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`U.S. APPLICATION SERIAL NO.   87045464
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`           
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`MARK: T.R.A.C.
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`CORRESPONDENT ADDRESS:
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`       PAMELA B. HUFF
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`  
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`       DYKEMA GOSSETT PLLC
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`         112 EAST PECAN STREET, SUITE 1800
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`           SAN ANTONIO, TX 78205
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`    
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`   
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`*87045464*
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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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`VIEW YOUR APPLICATION FILE
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`APPLICANT: KCI LICENSING, INC.
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`    
`CORRESPONDENT’S REFERENCE/DOCKET NO :       
`CORRESPONDENT E-MAIL ADDRESS:   
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`  709800.1389A
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`   
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`ipdocket@dykema.com
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`OFFICE ACTION
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`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`ISSUE/MAILING DATE: 9/6/2016
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`The assigned examining attorney has reviewed the referenced application and determined the following.
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`SEARCH RESULTS
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`The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under
`Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  However, before the mark can be published, the applicant must address the
`following.
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`SUMMARY OF ISSUES:
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`Identification of goods
`Specimen
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`IDENTIFICATION OF GOODS
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`The wording in the identification of goods is indefinite and must be clarified.  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 as “accessories,” “apparatus,” “components,” “devices,”
`“equipment,” “materials,” “parts,” “systems,” or “products,” 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).
`
`ee 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “wound healing devices in the nature
`of (specify type of devices) and parts and accessories, namely, (specify type of parts and accessories) for pump units for promoting wound
`healing.”
`
`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.
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`SPECIMEN
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`Registration is refused because the applied-for mark, as used on the specimen of record, does not function as a trademark to indicate the source
`of applicant’s goods and to identify and distinguish them from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see
`In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1827-28 (TTAB 2012); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715 (TTAB 1987); TMEP
`§§904.07(b); 1202 et seq.
`
`The applied-for mark, as shown on the specimen, does not function as a trademark because it merely demonstrates that the current product can
`only be used with the TRAC systems, rather than as a source indicator of the goods in the current application.
`
`Applicant may respond to this refusal by submitting a substitute specimen or amending applicant’s basis to intent to use under Section 1(b) for
`each applicable international class.
`
`Submitting a substitute specimen:  Applicant may submit a substitute specimen that shows the applied-for mark used in commerce as a
`trademark for the goods in the application, and the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “
`The substitute specimen was in use in commerce at least as early as the filing date of the application.”   37 C.F.R. §2.59(a); TMEP §904.05;
`see 37 C.F.R. §2.193(e)(1). 
`If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the
`
`amended dates.  37 C.F.R. §2.71(c); TMEP §904.05.  
`
`Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or
`packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens
`for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP
`§904.03(i).
`
`To submit a verified substitute specimen online using the Trademark Electronic Application System (TEAS), applicant should (1) answer “yes”
`to the TEAS response form wizard question to “submit a new or substitute specimen,” and then do the following for each relevant class for
`which a substitute specimen is being submitted:  (2) attach a jpg or pdf file of the substitute specimen, (3) describe what the specimen consists of,
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`and (4) select the statement that “The substitute specimen(s) was in use in commerce at least as early as the filing date of the application.”
`
`Amending to Section 1(b):  If applicant cannot provide an acceptable substitute specimen, applicant may amend the application basis to intent
`to use under Section 1(b), for which no specimen is required, and the refusal will be withdrawn.  See TMEP §806.03(c).  However, if applicant
`amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing
`an acceptable allegation of use with a proper specimen.  See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  If the same
`specimen is submitted with an allegation of use, the same refusal will issue.
`
`To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: 
`“ Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the
`
`application filing date.”   37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).  
`
`To amend to Section 1(b) online using TEAS, applicant should (1) answer “yes” to the TEAS response form wizard question to “change filing
`basis,” and then do the following for each relevant class for which the filing basis is being amended:  (2) uncheck the box for “Filing Basis
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`Section 1(a),” (3) delete the use dates, and (4) check the box for “Filing Basis Section 1(b).”   
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`RESPONDING
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`If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-
`mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to
`this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-
`.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in
`this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02,
`709.06.
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`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application
`online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
`Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
`and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b),
`2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
`$50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain
`situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without
`
`incurring this additional fee.    
`
`/Midge F. Butler/
`
`Trademark Attorney
`
`Law Office 107
`
`571 272 9137
`
`midge.butler@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.
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`All informal e-mail communications relevant to this application will be placed in the official application record.
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`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
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`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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` 
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`

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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`KCI LICENSING, INC. (ipdocket@dykema.com)
`
`U.S. TRADEMARK APPLICATION NO. 87045464 - T.R.A.C. - 709800.1389A
`
`9/6/2016 2:02:31 PM
`
`ECOM107@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 9/6/2016 FOR U.S. APPLICATION SERIAL NO. 87045464
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 9/6/2016 (or sooner if specified in the Office action).  For information
`regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System
`(TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
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`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
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`“fees.”   
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`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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