UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/485999
APPLICANT: Amersham Biosciences AB
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CORRESPONDENT ADDRESS: FRANK P. PRESTA NIXON & VANDERHYE P.C. 1100 NORTH GLEBE RD., 8TH FLOOR 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: KVICK
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CORRESPONDENT’S REFERENCE/DOCKET NO: 3438-295
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 76/485999
This letter responds to the applicant’s communication filed on August 28, 2003.
Applicant was requested to amend the identification of goods by listing the major parts of the system. The amendment to identification of goods submitted August 28, 2003 has been reviewed, but found unacceptable.
For the reasons stated below, the request to amend the identification of goods is maintained and made FINAL.
The Trademark Act requires a written application “specifying” the goods or services on or in connection with which an applicant uses, or has a bona fide intention to use, the mark in commerce. 15 U.S.C. § § 1051 (a)(1)(A) and 1051(b)(1)(A). To “specify” means to name in an explicit manner. Additionally, Trademark Rule 2.33(a)(1)(v), 37 C.F.R. § 2.33 (a)(1)(v), requires that the application specify the “particular” goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark. The identification of goods or services should set forth common names, using terminology, which is generally understood. For those product or services, which may not have common names, language, which is as clear and succinct as possible, should be used. Technical or esoteric language and lengthy descriptions of characteristics or use are not appropriate.
An acceptable identification of goods or recitation of services is required for three (3) reasons. First, it is important for the examining attorney to understand the exact nature of the goods and services for which registrations is sought, so that the attorney may properly analyze the application in accordance with the law and USPTO practices and procedures. Secondly, the language must be clear and acceptable for proper classification. Finally, the scope of the identification must be clear so that marks may be properly compared, particularly for Section 2(d) likelihood of confusion purposes. 15 U.S.C. § 1051(a)(1)(A) and 1051(b)(1)(A).
The goods listed in the application when filed were:
Cross flow filtration and separation system for the separation and
concentration of biological solutions in the biopharmaceutical and
biotechnology fields.
Applicant was requested to amend the identification of goods by listing the major parts of the system. TMEP § 1402.03(a).
Applicant’s amendment filed August 28, 2003 consist of the following:
Flow manifold, microporous membranes, product reservoir,
pump, valves, gauges and piping for cross-flow filtration,
separation and concentration of biological solutions in the
biopharmaceutical and biotechnology fields.
Clearly, this amendment is unacceptable.
The wording “flow manifold” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
The wording “product reservoir” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.
Applicant should amend the identification of goods in the following form:
Cross flow filtration and separation system comprising… for the
separation and concentration of biological solutions in the
biopharmaceutical and biotechnology fields
The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment. 37 C.F.R. §2.74(b).
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. §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.
/Amos T. Matthews/
Examining Attorney
Law Office 108
(703) 308-9108 ext. 293
(703) 746-8108 (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 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.