UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  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. Section 1052(d).  TMEP section 704.02.  Please be advised that this determination was based, in part, upon the applicant’s representations concerning the subject matter of the printed matter in International Class 16.  If the subject matter in the identification of goods is broader than anticipated by the applicant, new issues (including potential Section 2(d) refusals) may arise.

 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

 

Serial Number  76/512726

 

 

The following issues were discussed in communication with Deborah Robinson for D. Michael Young on November 7, 2003.

Unacceptable Identification Of Goods – International Classes 1 and 5

The identification of goods in International Classes 1 and 5 are indefinite, and the identifications must be specific and definite.  TMEP sections 1402 and 1402.03.     As a general rule, all chemicals must be identified by their specific use or by their chemical name.  As written, the identifications of goods could include a wide variety of goods used for a wide variety of purposes.  For example, the terms “chemical, biochemical and biological products” as well as  “products… for use in industry”  could include an infinite number of goods for an infinite number of industries.  Additionally, reagents are classified more particularly, based upon their purpose or use. 

 

The identification of goods must be specific and definite.  The applicant must specify the nature of the goods and indicate their use or function.    A listing of several suggested identifications are set forth subsequently herein. 

 

 

Unacceptable Identification Of Goods – International Class 9

The identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial name of the goods or to indicate their nature.  TMEP section 1402.     For example, cartridges could be capillary cartridges or separation and purification cartridges.  Additionally, the applicant must indicate that PCR is an abbreviation for polymerase chain reaction (if accurate).  The identification of goods must be specific and clearly understood.  Moreover, the term “industry” could include an infinite number of uses.  If the applicant’s goods are for scientific and research purposes, then the identification must indicate this fact with specificity.  Finally, the  goods include computer software for use with laboratory instruments.  The wording the applicant has used to identify the goods is unacceptable as indefinite.  The applicant must indicate not only that the goods are computer programs for use with laboratory instruments but also the purpose or function of the program.  TMEP section 1402.03(d). This additional information is necessary to permit this Office to reach judgments concerning possible conflicts between the applicant's mark and other marks.  See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). 

 

 

Unacceptable Identification Of Goods – International Class 10

As discussed previously herein, the applicant must indicate that PCR is an abbreviation for polymerase chain reaction (if accurate).  The identification of goods must be specific and clearly understood. 

 

 

Unacceptable Identification Of Goods – International Class 16

The wording "printed matter" in the identification of goods  is unacceptable as indefinite.  The applicant must amend the identification to indicate whether the goods are pamphlets, brochures, newsletters, journals, magazines or other specific types of publications.  TMEP section 1402.03(e).  Additionally, the applicant must indicate the subject matter of the publication(s).

 

Recitation Of Services Too Broad – International Class 42

The recitation of services is too broad because it could include a variety of services classified in several international classes.  TMEP section 1402.11.   The applicant must specify the nature of the consulting services.  If the applicant is providing technical and/or scientific consultation, then said consultation services are properly classified in International Class 42.  However, if the applicant is providing business consultation for others relating to the establishment of a PCR laboratory, then said services are properly classified in International Class 35.

 

 

Suggested Identification Of Goods And Recitation Of Services

The applicant may adopt any of the following, if accurate:

 

Chemical products for use in industry and science as well as in agriculture, horticulture and forestry, namely, (specify type of chemical and/or specific use, e.g., chemicals for use in the manufacture of [indicate general nature item, e.g., adhesives, paper, leather or indicate for a wide variety of goods, if accurate]); biochemical and biological products for use in industry and science as well as in agriculture, horticulture and forestry, namely, (specify type of biochemical and biological products and/or specific use, e.g., biochemicals namely, precursors for in vitro genetic engineering use); diagnostic reagents for scientific or research use  in International Class 1.

 

 

Chemical, biochemical and biological products and reagents for medical and veterinary use, namely, (specify type of products and/or specific use, e.g., chemical conductors for use with EKG electrodes, biological tissue intended for subsequent implantation [indicate specific type, e.g., bone, skin], clinical medical reagents, diagnostic reagents for clinical or medical laboratory use; diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology)  in International Class 5.

 

 

Scientific instruments and apparatus and laboratory apparatus for research purposes, for a variety of industries including agriculture, horticulture and forestry, namely, laboratory instruments for polymerase chain reaction, also known as PCR, analysis; dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, capillary cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, capillary cartridges, pipettes and container; computer software and computer hardware for use with laboratory instruments, namely, [specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc.] in International Class 9.

 

 

Medical and veterinary apparatus for diagnostic purposes, namely, apparatus for polymerase chain reaction, also known as PCR,  analysis in International Class 10.

 

 

Printed matter, namely, [specify nature of printed matter, e.g.,  pamphlets, brochures, newsletters, journals, magazines] in the field of [specify subject matter, e.g., scientific instruments and apparatus and laboratory apparatus for research purposes as well as medical and veterinary apparatus for diagnostic purposes, namely, instruments for polymerase chain reaction, also known as PCR, analysis; dispensers for taking up, treatment, dosage and distribution of receptacles, capillary tubes, capillary cartridges, control solutions, pipettes, buffers and reagents; disposable articles for laboratory instruments, namely, receptacles, capillary tubes, capillary cartridges, pipettes and container] in International Class 16.

 

Business consultation for others relating to the establishment of a PCR laboratory, namely, polymerase chain reaction  laboratory in International Class 35.

 

 

Technical scientific consultation for others relating to the establishment of a PCR laboratory namely, polymerase chain reaction laboratory in International Class 42

 

 

Additions To Identification Not Permitted

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. Section 2.71(a); TMEP section 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.

 

The applicant may wish to consult the U. S. Patent and Trademark Office Goods and Services Manual, an on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at:  http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

 

Insufficient Fee

The application identifies goods and services that may be classified in seven international classes, however, the applicant has only paid for six international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1403.01. 

 

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.  37 C.F.R. Section 2.6(a)(1). 

 

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003. 

A final rule amending the Rules of Practice in Trademark Cases to provide for this fee increase was published in the Federal Register on November 27, 2002 (67 Fed. Reg. 70,847 (2002)). <http://a257.g.akamaitech.net/7/257/2422/14mar20010800/edocket.access.gpo.gov/2002/02-30086.htm>>

 

 

Requirements For A Combined Application

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services 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(a); 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.  

 

 

 

Advisory - Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003. 

Electronic Responses To Office Actions

A response will only be accepted by the ecom110@uspto.gov  mailbox IF:

 

1. The entire response is e-mail text. The response itself cannot be an attachment.

 

2. The serial number must be listed in the "subject" line.

 

3. It must be signed electronically.

 

4. Any specimens must be sent in only JPG or GIF formats.

 

5. Every issue must be addressed.

 

 

 

Applicant’s Response

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

For your convenience, the Trademark Status Line (703) 305-8747 has been established for immediate case status inquiry.  This service is available Monday through Friday from 6:30 a.m. until Midnight Eastern time.  Case status inquiry is also available through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov.

 

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

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(703) 308-9110 ext. 422

(703) 746-8110 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.

 

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