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  76/386202

 

This letter responds to the applicant’s communication filed on March 5, 2003.

 

The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Applicant’s substitute specimens and signed declaration have been accepted and entered into the record. However, applicant’s amended identification of goods is still indefinite because it includes goods that could fall in additional classes. The following goods must be amended as indicated below. This requirement is maintained and made FINAL.

 

The following goods in International Class 3 must be amended and/or re-classified. The goods indicated as “wipes” must be amended to read “disposable wipes impregnated with chemicals or compounds for personal hygiene,” if accurate. The goods indicated as “disinfectants” must be more specifically identified. Applicant can amend these goods to read “disinfectant soap”, if accurate. The goods indicated, as “laboratory water bath deodorizing cleansers” must be re-classified in International Class 5.

 

The following goods in International Class 5 must be amended as indicated below. Specifically, “cotton swabs” and “foam tipped swabs” must be amended to read “cotton swabs for medical/laboratory purposes” and “foam tipped swabs for medical/laboratory use”, if accurate.

 

The following goods in International Class 9 must be amended and/or re-classified as indicated below. The goods indicated, “spill response kits” must be amended to read, “spill response kits composed of [indicate specific items]”. The goods indicated as “stop watches and clocks” must be re-classified in International Class 14. The goods indicated as “glucose tolerance beverages” must be amended to read “glucose tolerance beverages for use in medical testing” and re-classified in International Class 5. The goods indicated as “blood bank saline” must be amended to read “blood bank saline for medical purposes” and must be re-classified in International Class 5.

 

The goods in International Class 11 must be amended to read, “laboratory sinks; safety station showers; laboratory plumbing fixtures, namely, eyewash sprayers, face wash sprayers, faucet sprayers; and first aid stations consisting of overhead shower, eye/wash sprayer, eyewash/facewash bowl and pipes and fittings therefore sold as a unit in International Class11.”

 

The following goods in International class 16 must be amended and/or re-classified as indicated below. These goods may be amended to read as follows, “stationery for laboratory use, namely, pens, paper labels, paper tags, cardboard mailing cartons, biohazard mailing envelopes and boxes, insulated envelopes and boxes, rulers, paper tape, paper waste and storage bags and boxes, and paper sterilization pouches; lens cleaning papers, printed paper emergency signs; cardboard laboratory containers, namely, storage bins, dispenser bins, pill boxes, specimen boxes, waste containers and boxes”. The goods indicated as “laser pointers” must be re-classified in International Class 9. Further, the goods indicated as “disposable paper cups” must be re-classified in International Class 21.

 

If the applicant adopts the suggested amendment to the identification of goods, the applicant must amend the classification to International Classes 3, 5, 9, 11, 14, 16, and 21.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(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. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

(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. §§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), where such statement was not included for the goods or services in the original application.

 

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

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  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). 

 

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

 

 

 

 

/Mark T. Mullen/

Examining Attorney

Law Office 111

(703) 308-9111 ext.119

ecom111@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.