UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION NO. 5

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

Serial Number 76/262326

 

This letter responds to applicant’s communication filed on March 21, 2005.

 

Resolved Issues:

 

• Applicant paid for the second class of goods added to the application on February 4, 2002; therefore, the requirement to submit additional filing fees is WITHDRAWN. 

 

• Applicant’s certificate of foreign registration is ACCEPTABLE, except as indicated below.

 

New Issue:

 

Application, as Amended, Exceeds Scope of Foreign Registration

 

The identification of goods and/or services in the application for the Section 44 basis is not acceptable because it designates goods and/or services that are broader in scope than the identification set forth in the foreign registration.  37 C.F.R. §2.32(a)(6).

 

The following wording exceeds the scope of the goods in the foreign registration:  “Sterilization machines, namely, steam autoclaves for sterilization of medical instruments.” This wording is beyond the scope of the foreign registration because, as currently worded, it appears to refer to a medical device or a device used in the medical or healthcare field.  However, the foreign registration is limited to devices in the electronics, semiconductor, chemical and biotechnology industries.  As shown by the definition of biotechnology below, “biotechnology” does not incorporate the medical or healthcare field.  If applicant chooses to amend the identification of goods in the application to correspond to the foreign registration, then these goods and/or services must be deleted.

 

Applicant must either (1) amend the identification of goods in the application to correspond to the goods and/or services identified in the foreign certificate of registration, or (2) delete the Section 44 basis for the goods beyond the scope of the foreign registration and rely solely on the Section 1(b) basis for those goods.  15 U.S.C. §1051(b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972).  If the applicant would like to adopt the second alternative, it may adopt the following identification of goods: 

 

1. [Section 1(b) and Section 44(e)] Machines and devices, namely, [specify common commercial name for machines and devices, or the applicant may state “electronic apparatus” if a common commercial name does not exist] for creating activated chemical species for use in the semiconductor industry, for surface treatment and activation of plastics and sterilization of medical equipment, and for the production and refinement of membranes and filters for use in the biotechnology industry (International Class 9). 

 

2. [Section 1(b)] Sterilization machines, namely, steam autoclaves for sterilization of medical instruments (International Class 10). 

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

bi·o·tech·nol·o·gy

 
bi·o·tech·nol·o·gy (bì´o-tèk-nòl¹e-jê) noun

1.    The use of microorganisms, such as bacteria or yeasts, or biological substances, such as enzymes, to perform specific industrial or manufacturing processes. Applications include the production of certain drugs, synthetic hormones, and bulk foodstuffs as well as the bioconversion of organic waste and the use of genetically altered bacteria in the cleanup of oil spills.

2.    a. The application of the principles of engineering and technology to the life sciences; bioengineering. b. See ergonomics.

— bi´o·tech¹ni·cal (-nî-kel) adjective

— bi´o·tech´no·log¹i·cal (-ne-lòj¹î-kel) adjective[1]

 

Maintained Issues:

 

Request for Information

 

Applicant must respond to the requirement to state whether the wording “R3T” has any significance in the electronics, semiconductor, biotechnology or chemical trade or industry or as applied to the goods/services described in the application.  37 C.F.R. §2.61(b).  This requirement is MAINTAINED. 

 

Indefinite Goods

 

The requirement that the applicant amend the identification of goods in International Class 9 is also MAINTAINED.  The wording “machines and devices” must be clarified.  The applicant may adopt the proposed identification of goods, above, if accurate.  TMEP §1402.01.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

If the applicant has any questions concerning this Office action, please telephone the assigned examining attorney.

 

/ELIZABETH J. WINTER/

Trademark Attorney-Advisor

USPTO, Law Office 113

(571) 272-9240

FAX Questions (571) 273-9240

FAX Responses (571) 273-9113

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.