UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/396372
APPLICANT: Oxford BioMedica plc
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: PLENTIVECTOR
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CORRESPONDENT’S REFERENCE/DOCKET NO: 30218-01
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/396372
This letter responds to applicant’s communication filed on 7/12/04.
This application is removed from suspension.
ONLY THE FOLLOWING REMAINS AT ISSUE:
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Applicant uses the term “process” in the Class 40 identification of services. A process or system is only a way of doing something, and does not generally constitute a service. The name of a system or process does not function as a service mark unless it is also used to identify and distinguish the services listed in the application, and to indicate the source of those services. In re Hughes Aircraft Co., 222 USPQ 263 (TTAB 1984).
Applicant may substitute the following wording, if accurate: material treatment for others, namely, chemical synthesis of ingredients used in the manufacture of finished biochemical products for applications in biotechnology. TMEP §§1402.01 and 1402.03.
The identification of services needs clarification because it is too broad and could include goods classified in other international classes. Applicant may substitute the following wording, if accurate: scientific and medical product research and development; genetic engineering services for scientific and medical research use; biotechnology services, namely, research and development of new products in the field of biotechnology
“Medical services” are classified in Class 44.
Proper identificaion and classification is required. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
Combined Applications
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on <an intent to use the mark in commerce under Trademark Act Section 1(b)/a foreign registration under Trademark Act Section 44(e)/an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e)>:
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
The above requirements are made FINAL.
If applicant does not respond within six months of the mailing date of this final action, then the services to which the final requirements apply will be deleted from the application. The application will proceed forward for the remaining services. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).
Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
My Law Office will move on October 28, 2004. To reach me by phone after that date call (571) 272-9192.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9105.
/Fred Mandir/
Examining Attorney
Law Office 105
(703) 308-9105 ext. 151
(703) 872-9825 (fax)
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 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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.