Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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  76/346743

 

This letter responds to the applicant’s communication filed on November 12, 2003.

 

The applicant’s foreign registration and accompanying translation are both acceptable.

 

Identification of Goods

 

The identification of goods in International Classes 1 and 42 are both acceptable.

 

The wording “aci-ds,” “veterinary preparation for the treatment of pets and farm animals” and “diagnostic and testing apparatus for testing animal cells for veterinary use” in the identification of goods is unacceptable as indefinite.

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The identification of goods in International Classes 5 and 10 should be amended to read as follows, if accurate:

 

Medical diagnostic chemical agents for characterizing and examination of diseases, namely, tumors, coronary heart diseases particularly restenosis, minimal residual diseases, infectious diseases, auto-immune diseases; pharmaceutical preparations for the treatment of tumors, coronary heart diseases particularly restenosis, minimal residual diseases, infectious diseases, auto-immune diseases and veterinary preparations for the treatment of [specify type of pets and farm animals, e.g.  cows, cats, horse]; pharmaceutical preparations for diagnosis and analysis of tumors, coronary heart diseases particularly restenosis, minimal residual diseases, infectious diseases, auto-immune diseases; pharmaceutical preparations for diagnosis and analysis of eukaryotic cells, mammalian cells, and human cells, of cells of microscopic small biopsies of animal and human tissues, of cells out of tissue samples prepared with a laser, of cells isolated with FACS or with receptor/ligand binding, of cells of chemical fixed tissue, of micrometastatic cells, of bone marrow cells, of samples from body fluids, particularly amniotic fluid, from liquor, blood, lymph, urine or bowel movement, of stem cells, cloned single cells of differentiated stages from specific cells; eukaryotic cell culture lines, namely, animal cell culture lines, particularly mammalian cell culture lines and human cell culture lines, green plant cell culture lines, rhodophyta cell lines, alveolate cell culture lines, stramenopiles cell culture lines, protist cell culture lines, fungi cell culture lines for medical purposes; cultures of microorganisms for medical purposes; nucleic acids for medical purposes in International Class 5.

 

And

 

Medical diagnostic instruments, namely, syringe, needle, biopsy-needle, array, particularly DNA-array, array reader, scanner, imaging devices, hybridization machine, hybridization chamber, thermocycler, centrifuge, reaction tubes, centrifuge tubes, filter, rotator, mixer, beads, FACS, laser, particularly laser for microdissections, balloon instruments, magnetic devices for diagnosing tumors, coronary heart diseases particularly restenosis, minimal residual diseases, infectious diseases, auto-immune diseases; diagnostic and testing apparatus for medical purposes, namely, syringe, needle, biopsy-needle, array, particularly DNA-array, array reader, scanner, imaging devices, hybridization machine, hybridization chamber, thermocycler, centrifuge, reaction tubes, centrifuge tubes, filter, rotator, mixer, beads, FACS, laser, particularly laser for microdissection, balloon instrument, magnetic devices for testing for eukaryotic cells, cells of microscopic small biopsies, of cells out of tissue samples prepared with a laser, of cells isolated with FACS or with receptor/ligand binding, of chemical fixed tissue, of micrometastatic cells, of bone marrow cells, of samples from body fluids from amniotic fluid, liquor, blood, lymph, urine or bowel movement, of stem cells, cloned single cells or differentiated stages from specific cells of human tissues; medical diagnostic and testing apparatus, namely, [specify particular apparatus] for testing animal cells for veterinary use in International Class 10.

 

This requirement is continued and made FINAL.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

Response

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

 

 

 

/Charles L.Jenkins,Jr./

Trademark Examining Attorney

Law Office 105

(703)308-9105 ex. 142

(703)746-3022 fax

ecom105@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.