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  76/374498 – BIOTEST and Design

 

This letter responds to the applicant's communication filed on October 20, 2003.  The examining attorney has carefully reviewed the applicant’s arguments and amendments in favor of registration and has determined the following.

 

Lining Statement

The new drawing appears to be lined for color.  The applicant must include a statement that the mark is lined for the color red.  37 C.F.R. §§2.37 and 2.52(a)(2)(v); TMEP §807.09(b).

 

Identification and Classification of Goods

The identification of goods remains unacceptable as indefinite and includes goods which have been 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.  The applicant must also delete all parentheses in the identification.  Items that have been incorrectly classified are shown below with a “strikethrough” and should be deleted where shown. 

 

The applicant is reminded that only instruments, apparatus, and equipment which are used in the actual treatment or diagnosis of patients are classified in International Class 10.  For instance, the applicant has classified “air sampler, agar strips and anemometer for determination of air borne germs and for sanitary and hygiene monitoring” in International Class 10.  As these goods are not used in the actual treatment or diagnosis of patients, they should not be classified in International Class 10.

 

The applicant may adopt the following identification, if accurate:

 

In-vitro diagnostic preparations for scientific purposes; test kits comprising reagents, sera, monoclonal and polyclonal antibodies, natural and recombinant antigens, and microtiter plates, and reagents for scientific and research purposes; systems for determining resistance for scientific purposes comprising nutrient media, cell culture media, and dried media; buffers, salts, solvents [MUST indicate use, e.g., for scientific and research purposes]; test kits comprising buffers, salts, solvents and reagents for industrial and scientific purposes for hygiene monitoring on surfaces, in air and liquids, and systems for identification of germs for scientific and research purposes comprising nutrient media, buffers and salts; plates and multiwell plates (microtiter plates), especially for cell typing, blood and virus diagnostics; DNA probes for tissue typing, germ or pathogen identification and blood group determination, in INT. CLASS 1;

 

Pharmaceutical and veterinary preparations and products for treating immune insufficiencies, especially autoimmune insufficiencies, cancer, virus infections, conditions of virus reactivation, anemia, protein anemia, immune globulin anemia, blood coagulation disorders, and deficiencies in blood coagulation factors, or for preventing rejections in transplantation medicine; food for babies; medical plasters; materials for wound, burn or surgical dressing; pharmaceutical preparations for hematology, oncology, transplantation medicine, nephrology, pediatrics, for intensive care medicine namely blood products, immune globulin preparations, globulin preparations, coagulation factors; medicines for use in transplantation procedures and for influencing blood coagulation; immune globulin preparations for treating immune insufficiencies, especially autoimmune insufficiencies, cancer, virus infections, conditions of virus reactivation, anemia, protein anemia, immune globulin anemia, blood coagulation disorders, and deficiencies in blood coagulation factors, or for preventing rejections in transplantation medicine; serum preparations, and serum proteins and solutions comprising the same for medical use; human albumin for medical use; blood products for medical use, namely blood plasma; blood substitutes; plasma substitutes and plasma expanders; vaccines, especially on basis of immune globulines; blood coagulation preparations, especially coagulation factors for clinical and medical laboratory use; antibiotics; narcotics for use in the treatment of [MUST specify disease, illness and/or condition goods used to treat]; medicines for treating the central nervous system; medicines for treating heart and circulation diseases; medicines for treating the respiratory system; medicines for urological treatment; medicines for treatment of digestive organs and corresponding/adjoining glands; hormones; vitamins; immunosuppressive, anti-inflammatory, antiallergic, hyposensitizing and detoxifying medicines for medical uses for [MUST indicate specific use for hyposensitizing and detoxifying medicines]; dermatological, ophtalmological and otological medicines; in-vivo and in-vitro diagnostic preparations for clinical or medical purposes and [MUST specify use, e.g., clinical or medical] laboratory use; antibodies, namely mono- and polyclonal antibodies for use in in-vivo clinical and medical diagnostics and for patient therapy; in vitro diagnostic agents for medical purposes, especially for determination of proteins, such as antibodies, monoclonal antibodies or immune globulins, or for determinations of nucleic acids, for blood group diagnostics and antibody determination, tissue typing, cell diagnostics, microbiological diagnostics, and determination of toxic compounds and sanitary and hygiene monitoring; test kits comprising ready to use nutrient media for microorganisms, especially bacteria, and reagents for medical and laboratory uses, especially for blood group diagnostics, antibody determination, tissue typing, cell diagnostics, microbiological diagnostics, determination of toxic substances; test kits comprising monoclonal and polyclonal antibodies and natural and recombinant antigenes, for tests on serological and immune genetic basis, and reagents therefor for human and veterinary medical laboratory purposes; immunoassays such as ELISA's, consisting of reagents, sera, monoclonal and polyclonal antibodies, natural and recombinant antigens, and microtiter plates, and reagents therefor for human and veterinary medical laboratory purposes; diagnostic preparations for human or veterinary medical uses in the treatment of infections; media for bacteriological cultures, namely ready-to-use culture media and nutrient media and ingredients thereof, in INT. CLASS 5;

 

Plates and multiwell microtiter plates for cell typing, blood and virus diagnostics; blood warmers; apparatus, namely, incubator, cell sorter, cell counter, shakers, pipettes, plates and vials for cell recovery and for handling of cells, including disposable materials; measuring and surveying apparatus, namely, sample holder, reader, photometer, centrifuge, shaker, incubator, washer, particle counter and air sampler for removal, determination and quantification of microorganisms in air, liquids and on surfaces; measuring and surveying kits/systems comprising sample holder, reader, photometer, dipsticks, test strips, and agar strips for determination and quantification of substances, namely, blood sugar, blood and respiratory alcohol, toxic substances, oxygen and blood constituents such as hemoglobin; kits/systems comprising air samplers, particle counters, anemometers, and agar strips for determination of air borne germs and for sanitary and hygiene monitoring; laboratory robot for automated processing of microtiter plate based assays like ELISAs, DNA hybridization assays and cell agglutination tests; kits/systems comprising air samplers, particle counters, anemometers and agar strips for determination of air borne germs and for determination of particle size and number in air; kits/systems comprising air samplers, sample holders and reader for clean room air monitoring; all the foregoing for use in [MUST specify nature of use, e.g., scientific, research] laboratories, in INT. CLASS 9;

 

Medical apparatus for clinical or diagnostic use, namely, apparatus for serological blood typing, blood grouping or serological detection of blood groups; laboratory robot for automated processing of microtiter plate based assays like ELISAs, DNA hybridization assays and cell agglutination tests; agar strips, air samplers, particle counters and anemometers for determination of air borne germs and for determination of particle size and number in air; air samplers, sample holders and reader for clean room air monitoring; bottles and containers specially designed for storage and conservation of solutions for transfusions and infusions; transfusion and infusion apparatus and devices, namely, containers, syringes, catheters, transdermal delivery systems comprised of [MUST specify primary components of systems]; blood warmers [MUST indicate use, e.g., for clinical or diagnostic]; apparatus for cell recovery and for handling of cells, including disposable materials, namely, [MUST specify goods by common commercial name] for [MUST indicate use, e.g., clinical or diagnostic use]; measuring and surveying apparatus namely sample-holder, reader, photometer, centrifuge, shaker, incubator, washer, particle counter and air sampler for (micro) determination, removal and quantification of microorganisms in air, liquids and on surfaces; measuring and surveying apparatus [MUST indicate use, e.g., for clinical or diagnostic use], namely, sample holder, reader, photometer, dipsticks, test strips, and agar strips for determination and quantification of substances, namely, blood sugar, blood and respiratory alcohol, toxic substances, oxygen and blood constituents such as hemoglobin; air sampler, agar strips and anemometer for determination of air borne germs and for sanitary and hygiene monitoring; plates and multiwell microtiter plates for cell typing, blood and virus diagnostics [MUST indicate use, e.g., for clinical or diagnostic use], in INT. CLASS 10.

 

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

 

Telephone for Assistance

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

 

 

 

 

/Alicia P. Collins/

Trademark Examining Attorney

Law Office 115

(703) 308-9115 ext. 486

(703) 872-9217 (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.