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  76/463480.  This letter responds to the applicant’s communication of April 29, 2004.  The foreign registration is acceptable, and the intent-to-use basis is deleted.  The following issues remain outstanding.

 

Identification of Goods and Services

The identification of goods and services is unacceptable because the following terms are indefinite: and/or; kits; preparations for sanitation; homeopathic remedies; medical plastics, namely, sanitary preparations; veterinary preparations for the use in the treatment of pets, livestock, wild animals, breeding animals, and zoo animals; food for elderly people; (stored); implants; scientific and technological services; designer services; services for biologists…; and single nucleotide polymorphism kit known as SNP analyses.  More definite wording for these terms is given below.  Regarding the wording “and/or,” "or" suggests that the mark intends to identify either of the identified goods, but not both.  If the applicant does not intend to identify both types of goods, then one of them should be deleted from the identification.  If the applicant intends to identify both of the goods, the applicant should use only the word “and.” 

 

The applicant may adopt the following identification, if accurate:

 

• Chemicals used in industry and science, agriculture, horticulture and forestry, namely proteins, peptides, nucleic acids and polynucleotides; proteins and recombinant proteins for scientific research use; antibodies for scientific research use; DNA probes for scientific research use; oligonucleotides for scientific research use; antisense constructs for scientific research use; arrays of nucleic acids and proteins on a carrier material for scientific research use; single nucleotide polymorphism kits, also called SNP kits comprising at least one oligonucleotide or a plainclothes; expression profiling kits comprised of [indicate components] for scientific research use, in particular by use of PCR, immunohistochemistry or arrays; kits comprised of [indicate components] for indication of specific therapy approaches for scientific research use, in particular FISH, arrays, PCR and iminunohistochemistry; kits comprised of [indicate components] for detection of predisposition for particular diseases for research purposes, in particular by using PCR, MALDITOF and oligo hybridization; cartilage cells for scientific research use, in particular implantable cartilage cells; fat cells for scientific research use, in particular implantable fat cells; adult and fetal stem cells for scientific research use; kits comprised of [indicate components] for purification and/or separation of nucleic acids; kits for purification and/or separation of nucleic acids for scientific research use (Class 1)

·        Pharmaceutical and veterinary products, namely, preparations for sanitation, namely, [indicate specific preparations, e.g., all-purpose disinfectant]; slimming, appetite suppressants, pharmaceuticals for acidosis therapeutics, analeptic antihypoxaemics; analgesics and antirheumatic drugs, pharmaceuticals functioning antihelminitics, antiallergics, antianemia drugs, antiarrhythmics, antibiotics and antiinfectives, antidementics, nootropics, antidiabetics, antidotes for the treatment of poisoning, antiemetics and antivertiginosics, antiepileptics, antihemorrhagics, antifibrinolyrics, hemostatics, antihypertonics, antihypoglycemics, antihypotonics, anticoagulants, antimycotics, pharmaceuticals functioning as antiparasitics, antiphiogistics, antitussives, expectorants for use in atherosclerosis, belneotherapeutics and pharmaceuticals for thermal therapy, pharmaceuticals functioning as beta receptor blocking agents, pharmaceuticals for calcium channel blocking and inhibiting of the renin angiotensin-system, pharmaceuticals functioning as broncholytics, antiasthmetics cholagoguegics and for use in biliary tract therapeutics; pharmaceuticals functioning as cholinergics, corticoids, dermatics; all purpose disinfectants and antiseptics; pharmaceuticals functioning as dietetic agents and in alimentary therapeutics; pharmaceutical preparations functioning as diuretics, as agents for favoring blood flow, as withdrawal agents, as fibrinolytics, to treat gout, the flu and catarrhal fever; pharmaceuticals for the treatment of gynecological illnesses, namely, menstrual cramps, hemorrhoids, hepatitis; pharmaceuticals functioning as hypnotics and sedatives; pharmaceuticals to treat cardiac ailments; pharmaceuticals for use in caries and paraodontosis; dental preparations, namely, dental abrasives; laxatives, pharmaceuticals functioning as antilipaemics, local anesthetics, neural therapeutics, gastro-intestinal preparations, pharmaceuticals to treat migraines; pharmaceutical preparations for use in mouth and pharyngeal therapeutics; pharmaceuticals for use as muscle relaxants; pharmaceuticals for the treatment of addiction to narcotics; pharmaceuticals for use in neuropathology; ophthalmic pharmaceuticals for treating blindness, conjunctivitis, cataract, glaucoma, retinal detachment, style, chalazion, dacryoadenitis, corneal clouding, keratitis, gasserian ganglionitis, vitreous opacity, amaurosis, retinopathy, central retinal artery occlusion, retinoblastoma, melanoma, optic neuritis, optic nerve atrophy; pharmaceuticals for use in osteoporosis and calcium metabolism modification; pharmaceuticals for the treatment of Parkinson's Disease and disturbances of the extra pyramidal system; pharmaceuticals for psychotropic, rhinologic and sinostic purposes; pharmaceuticals functioning as roborants and tonics; pharmaceuticals for use in thyroidal therapeutics; pharmaceuticals functioning as spasmolytics and inhibitors ofthrombocyte aggregation; pharmaceuticals for the treatment of tuberculosis; pharmaceuticals functioning as alternants, urologics and venous agents; vitamins; pharmaceuticals for use as cytostatics and antineoplastic agents; homeopathic remedies for the treatment of [indicate specific diseases or conditions treated], and medical plastics, namely sanitary preparations, namely, [indicate specific types of sanitary preparations, e.g. all-purpose disinfectants]; veterinary preparations for the use in the treatment of [indicate diseases or conditions treated, e.g., distemper] in pets, livestock, wild animals, breeding animals and zoo animals; dietetic substances adapted for medical use, namely food for elderly people who require medically restricted diets; medical plasters; materials for dressings, namely wound, burn and surgical dressings; all-purpose disinfectants; preparations for destroying vermin; fungicides for domestic or agricultural use; herbicides for domestic or agricultural use; wound medicines; wound ointment; wound spray; wound tincture; wound fleece; fleece against restenosis, in particular after vascular surgery; medicaments against artherioscierosis; medicaments against restenosis; medicaments for tissue regeneration and tissue replacement; medicaments for cartilage regeneration; pharmaceutical and veterinary preparations for diabetes treatment; pharmaceutical and veterinary preparations for diabetes prophylaxis; implantable cartilage cells; implantable fat cells; adult and fetal stem cells for medical or diagnostic use; medicaments against obesity; pharmaceutical and veterinary preparations for pets, livestock, wild animals, breeding animals and zoo animals against tumors. gene therapeutic preparations against tumors; pharmaceutical and veterinary preparations for use in pets, livestock, wild animals, breeding animals and zoo animals against endometriosis; pharmaceutical and veterinary preparations pets, livestock, wild animals, breeding animals and zoo animals for tissue modeling for medical or diagnostic use; recombinant proteins for medical or diagnostic use; antibodies for medical or diagnostic use; DNA probes for medical diagnostic use; target oligonucleotides for medical or diagnostic use; antisense constructs; small molecules for medical or diagnostic use; anticalines for medical or diagnostic use; aptamers for medical or diagnostic use; spiegelmers for medical or diagnostic use; ribozymes for medical or diagnostic use; RNAi for medical or diagnostic use; specific oligonucleotides for medical or diagnostic use; DNA probes for medical or diagnostic use; single nucleotide polymorphism kits known as SNP kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use; expression profiling kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use, in particular by use of PCR immunohistochemistry or arrays; kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use for indication of specific therapy approaches, in particular FISH arrays, PCR and immunohistrochemistry; kits comprised of protein, peptides, nucleic acids, oroligonucleotides for medical diagnostic use for detection of predisposition for particular diseases, in particular by using PCR, MALDITOF, and oligo hybridization; kits comprised of proteins, peptides, nucleic acids or oligonucleotides for medical diagnostic use for purification and/or separation of nucleic acids (Class 5)

·        Scientific control apparatus and instruments, namely microscopes, ELISA readers, scanners, fluorescence readers, and phosphorimagers; apparatus for recording, transmission or reproduction of sound or images, namely cameras, ELISA readers, scanners, fluorescence readers, phosphorimagers; prerecorded magnetic data carriers featuring biological data of a sample or group of samples; data processing equipment, namely ELISA readers, scanners, fluorescence readers, phosphorimagers; computers; stored computer programs for use in database management, for use as a spreadsheet, for word processing or analysis of biological data of a sample or group of samples; stored computer software for use in database management, for use as a spreadsheet, for word processing or analysis of biological data of a sample or group of samples; programs, in particular computer programs for analysis of patterns of surfaces, in particular of patterns of arrays of nucleic acids and proteins on carrier materials; automated expression profiles, namely software for analysis of expression profiles (Class 9)

·        Surgical, medical , dental and veterinary instruments and apparatus, namely medical tubing, syringes and [indicate type of implants, e.g., surgical, dental] implants for the administration of fluid, gels, solids and solidifying systems; artificial limbs; orthopedic articles, namely [indicate type of implants, e.g., bone] implants and neck braces (Class 10)

·        Treatment of materials, namely custom construction of therapeutically useful substances into liposomes; custom construction of therapeutically useful substances in carrier substances; custom manufacture of recombinant proteins for third parties; custom manufacture of antibodies for third parties; custom manufacture of gene and tissue arrays for third parties; custom manufacture of specific oligonucleotides for third parties; custom cultivation of cells, in particular of animal and/or human cells for third parties; custom manufacture of functional nucleic acids, in particular ribozymes, aptamers, spiegelmers, RNAi and antisense oligonucleotides for third parties (Class 40)

·        Scientific and technological services, namely, [indicate specific services] and research as well as designer services, namely, [indicate specific designer services], namely in the field of biology, biotechnology, biochemistry, genetics, chemistry, medicine, veterinary medicine and pharmacy; industrial analysis and research services, namely in the field of biology, biotechnology, biochemistry, genetics, chemistry, medicine, veterinary medicine and pharmacy; design and development of computer hardware and software; services, namely, [indicate specific services] for biologists, biochemists, chemists, physicians, veterinarians, pharmacists, geneticists, cytogeneticists, molecular biologists, molecular geneticists, biotechnologists and users/manufacturers of biochips, namely in the field of biology, biotechnology, biochemistry, genetics, chemistry, medicine, veterinary medicine and pharmacy; scientific research in the nature of construction of viral vectors, namely for medication; expression profile analyses, namely by PCR, immunohistochemistry or array hybridization; mapping of genes, in particular of chromosomes and gene libraries; hybridizations of gene libraries; single nucleotide polymorphism kit known as SNP analyses; performing FISH, arrays, PCR analysis, immunohistochemistry analysis; scientific research in the nature of detection of predisposition for developing particular diseases, in particular by using PCR or oligo hybridization; designing computer programs for others for scientific and technological services and research; designing computer programs, namely computer programs for industrial analysis and research activities; providing a data base on the subject of genetics, biology, pharmacy, biotechnology, medicine, veterinary medicine, biochemistry and chemistry by collecting, storing and offering of software, data, images, audio and video; providing non-downloadable software on the subject of chemical, pharmaceutical, biotechnological, biological, medical and veterinary research services, namely legal or consulting services relating to exploitation concepts for biotechnological inventions and biotechnological know-how; scientific research in the nature of design and realization of animal experiments and design and realization of therapy studies, and analysis for specific therapy approaches (Class 42)

·        Medical and veterinary services; health care for humans and animals; beauty salons; grooming salons for animals; plastic tissue regeneration; cosmetic tissue modeling and tissue regeneration (Class 44)

 

TMEP section 1402.01.  The applicant should note that, although 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(b); TMEP section 1402.01.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

For additional information regarding acceptable wording, the Trademark Manual of Acceptable Identifications and Classifications for Goods and Services is accessible on the World Wide Web at http://atlas.gov.uspto.report/netahtml/tidm.html.

 

Additional Classes of Goods and Services

If the applicant were to include more than seven classes in the application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods and services by class with the classes listed in ascending numerical order.  TMEP section 1403.01.

 

(2)     The applicant must submit a filing fee for each class of goods and services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1403.01.  Currently, the fee for filing a trademark application is $335 for each class of goods or services.

 

Applicant's Response

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). 

 

 

/Leigh Caroline Case/

Trademark Attorney

Office fax: (703) 872-9875

Office phone: (703) 308-9105 x 148

 

 

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.

 

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.