UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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  76/374498 – BIOTEST and Design

 

This letter responds to the applicant's communication filed on January 16, 2003.  The examining attorney has carefully reviewed the applicant’s arguments and amendments in favor of registration.  The noted prior pending applications have all abandoned and thus no longer remain a potential bar to registration.  The claim of prior registration is acceptable and has been entered into the application record.  As to the remaining issues, the examining attorney has determined the following.

 

Identification and Classification of Goods

In the Office action mailed on July 18, 2002, the examining attorney provided the applicant with very detailed suggestions for amending the identification of goods; however, it appears that the applicant has ignored many of these suggestions and requirements.  Most notably, in numerous places where the examining attorney required that the applicant amend the identification to specify the goods by common commercial name, the applicant failed to do so.

 

For this reason, the identification of goods remains unacceptable as indefinite and includes goods which appear to be incorrectly classified.  TMEP section 1402.01.  The applicant must amend the identification to clarify the exact nature of the goods and to classify the goods correctly.  In addition, the applicant must amend the identification to delete all parentheses.

 

The applicant should use the Office action mailed on July 18, 2002, and the Trademark Acceptable Identification of Goods and Services Manual (http://atlas.gov.uspto.report/netahtml/tidm.html) as references for amending the identification of goods.  Also, when amending the identification of goods, the applicant should also be cognizant of the following:

 

• Preparations and substances used for scientific or research purposes are classified in International Class 1.
• Preparations and substances used for medical or clinical purposes (used in actual treatment or diagnosis) are classified in International Class 5.
• Laboratory equipment (used for scientific or research purposes) is classified in International Class 9.
• Medical, surgical, dental, and veterinary equipment (used in actual treatment or diagnosis) is classified in International Class 10. 
• With respect to kits or systems with goods from various classes, classification is in the class where a predominant number of the items in the kit or system are classified (these items should be listed first).

 

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 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 requirement for clarification of the identification of goods is maintained and made FINAL.

 

Drawing Contains Color

It appears that the applicant wishes to claim color as a feature of the mark as the applicant has submitted a statement indicating in what colors the mark appears and where the colors appear in the mark.  Nonetheless, as stated in the Office action mailed on July 18, 2002, the drawing of the mark must be in black-and-white only.  The drawing of record shows color in the mark.  Therefore, the applicant must submit a new special-form drawing showing the mark clearly and conforming to 37 C.F.R. Section 2.52.  The requirements for a special‑form drawing are as follows:

 

(1) The drawing must appear in black and white; no color is permitted.

 

(2)  Every line and letter must be black and clear.

 

(3)  The use of gray to indicate shading is unacceptable.

 

(4)  The lining must not be too fine or too close together.

 

(5)  The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide.  It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.

 

(6)  If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a).  The Office will enforce these drawing requirements strictly. 

 

The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application.  37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).

 

The requirement for an acceptable drawing is maintained and made FINAL.

 

Specimens

The application consists of four classes of goods; however, it appears that the applicant has submitted only two replacement specimens.  The applicant must indicate for which two classes of goods these replacement specimens were submitted to show use of the mark.  The applicant must also indicate the nature of the specimens (e.g., labels) because the nature is unclear from the application record.  Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.   

 

If the applicant determines that the two replacement specimens are not acceptable in form, the applicant must submit one specimen per class showing the mark as used in commerce in these two classes.  37 C.F.R. §2.56.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

As to the remaining class of goods listed in the original application and the additional class of goods (International Class 9), the applicant must submit one specimen per class showing the mark as used in commerce.  37 C.F.R. §2.56.  If the nature of the specimen is not clear upon review of the specimen, the applicant should indicate the nature of the specimen for the record.  Again, examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

The requirement for specimens of use for all four classes is maintained and made FINAL.

 

Dates of Use for International Class 9

The applicant must submit the date of first use anywhere and the date of first use in commerce for the goods identified in International Class 9.  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).  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify the dates of use.  37 C.F.R. Sections 2.59(a) and 2.71(c).

 

The requirement for dates of use for International Class 9 is maintained and made FINAL.

 

Properly Worded Declaration

The following is a properly worded declaration under 37 C.F.R. §2.20.  If a declaration under 37 C.F.R. §2.20 is required based on the amendments made to the application, the applicant should insert this declaration at the end of the response signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

 

_____________________________

                   (Signature)

 

 

_____________________________

 (Print or Type Name and Position)

 

 

_____________________________

                      (Date)

 

Proper Response to Final Action

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).

 

 

 

 

/Alicia P. Collins/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 ext. 486

(703) 872-9875 (fax)

ecom115@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.