UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/477112
APPLICANT: Amersham Biosciences AB
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CORRESPONDENT ADDRESS: FRANK P. PRESTA NIXON & VANDERHYE PC 1100 NORTH GLEBE RD, 8TH FL ARLINGTON, VA 22201-4714
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom108@uspto.gov
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MARK: GRANDSTAND
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CORRESPONDENT’S REFERENCE/DOCKET NO: 3438-290
CORRESPONDENT EMAIL ADDRESS:
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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 76/477112
The assigned examining attorney has reviewed the referenced application and determined the following:
The examining attorney has searched the Trademark Office records and has found no similar registered or pending mark which would bar registration under Trademark Act §2(d), 15 U.S.C. §1052(d). TMEP §704.02.
IDENTIFICATION OF GOODS
The word “system” in the identification of goods is unacceptable because it is indefinite. The applicant must amend the identification to specify the goods comprising the system. TMEP §1402.01.
The applicant must use the common commercial names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If the applicant chooses to use indefinite terms such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” those words must be followed by the word “namely” and the goods listed by their common commercial names. TMEP §§1402.01 and 1402.03(a).
While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.
For assistance in preparing identifications, the applicant is urged to access the online Acceptable Identification of Goods and Services Manual at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
In order to allow proper examination of the application, the applicant must submit a photograph of the goods, as well as advertisements or promotional materials. If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the goods. 37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).
The applicant has filed asserting use in commerce under Trademark Act §1(a), 15 U.S.C. §1051(a), and claiming priority under §44(d), 15 U.S.C. §1126(d), based on a foreign application. Under these circumstances, the applicant may rely solely on use in commerce as the basis for registration and not the expected foreign registration, and still claim the benefit of the priority filing date. If the applicant chooses to do so, the examining attorney will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration. Of course, the application must be in condition for publication in all other respects. If the applicant wishes to proceed relying on use in commerce as the sole basis for registration, with the claim of priority, the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b).
If the applicant does not so indicate, the examining attorney will assume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit the certification or certified copy of the foreign registration and, if appropriate, an English translation. It is customary for the translator to sign the translation. TMEP §§1004.01 and 1004.01(b).
/Sue Carruthers/
Examining Attorney, Law Office 108
Phone: 703.671.9735
Fax: 703.746.8108 (formal responses only)
E-mail: ecom108@uspto.gov (formal responses only)
sue.carruthers@uspto.gov (informal communications)
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.