Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   76/342530      

 

NOTICE OF SUSPENSION

 

Action on this application is suspended pending the disposition of:

 

                        - Application Serial No(s). 78035663

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application.  See 37 C.F.R. §2.83.  A copy of information relevant to this pending application(s) was sent previously.  The applicant may request that the application be removed from suspension by presenting arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  The applicant's election to present or not to present arguments at this time will not affect the applicant's right to present arguments later.

 

DISCLAIMER

The disclaimer of “medical imaging apparati, software and services” must be deleted from the application.  This language is not a part of the mark and therefore should not be disclaimed.

 

IDENTIFICATION OF GOODS AND SERVICES

The applicant’s Class 35 and Class 42 identifications are acceptable as amended.

 

The Class 1 identification now contains goods which should be classified in a class other than Class 1.  “Solid supports, namely, chip supports, beads, glass slides, filters, micro titers, plates and universal constant pore glass coated with synthetic nucleic acids” are all laboratory equipment and are properly classified in Class 9.  The applicant must delete these goods or add Class 9 to the application.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods/services that are not within the scope of the goods/services recited in the present identification.

 

The application identifies goods/services that may be classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01. 

 

The fee for filing a trademark application is $335 for each class.  37 C.F.R. Section 2.6(a)(1). 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  The fee for filing a trademark application is $335 for each class.

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application.  37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b).

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above.  37 C.F.R. Sections 2.59(a) and 2.71(c).

 

 

/Kelley L. Wells/

Kelley L. Wells

Examining Attorney

Law Office 105

(703) 308-9105x124

(703) 872-9825 fax

ecom105@uspto.gov