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. 

 

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  76/546492

 

The following issues were discussed in communication with Mr. Kirill Y. Abramov on  February 22, 2005.  In a prior action, the applicant was required to 1) amend the identification of goods/services; 2) submit a disclaimer; 3) submit a sigifinicance, if any of wording in the mark; and 4) make a determination regarding a potential duplicate mark. Items 2-4 are accepted and made of record.  The applicant’s amendments are not acceptable because the wording either 1) does not specify the nature of the goods/services or 2) is indefinite because it is overbroad indicating that the applicant’s goods may be in more classes than the ones identified in the application.

 

The applicant will amend the goods as follows, if accurate:

 

Class 1:  Diagnostic reagents and test kits, comprising [the applicant must specify the nature of the goods, e.g. diagnostic reagents] for scientific and medical use.

 

If the applicant deletes the wording “medical,” the applicant may maintain all the other wording as amended in Class 1.

 

If the applicant maintains the wording “medical” and the test kits include anything beyond diagnostic reagents or  test paper, the test kits and the components are likely classified in Class 5. The applicant must therefore amend the wording to indicate the components and add Class 5.

 

Class 9:              Molecular and atomic detection and laboratory equipment, namely, capillary,

           pumped, electrophoretic flow, laser equipment, namely, [the applicant must specify the nature of the “equipment” by its common commercial name; the applicant may delete the wording equipment and amend laser to lasers if accurate] or combination thereof; measuring apparatus, namely, capillary, pumped, electrophoretic flow, laser apparatus, namely, [the applicant must specify the common commercial name of the apparatus, e.g. lasers, electronic sensors, electric gauges] or a combination thereof, for use in product research and development, separation, detection, purification and diagnostic processes.

 

Multiple Class Application Requirements – Intent to Use Application

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees are insufficient to cover all the classes in the application.  Specifically, the application identifies goods and/or services that are classified in at least THREE international classes, however applicant paid the fee for only TWO class(es).

 

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. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.

 

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.

 

Drawing Contains Color.

 

The applicant has claimed color in the drawing/mark.  The applicant states in the original application: "The mark consists of the word "Singulex" in orange lettering, except for the letter "g" in the word "Singulex" which is red in color. The mark also includes the words 'Direct Molecular Detection" which are light blue in color."

 

Requirements for a Special Form Drawing Where Color is Claimed:

 

The drawing must appear in color if color is claimed as a feature of the mark.

 

Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used. 

 

All lines must be clean, sharp and solid, and must not be fine or crowded.

 

The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide. If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.  The Office strictly enforces these drawing requirements.

 

If an applicant is filing a special form drawing electronically, the applicant must attach to the electronic submission a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c).  That is, the image must be in .jpg format (the Office recommends that the digitized image of the mark have a length and width of no smaller than 250 pixels and no larger than 944 pixels.  37 C.F.R. §2.53(c); 69 Fed. Reg. 59,809); All lines must be clean, sharp and solid, must not be fine or crowded, and must produce a high quality image when copied.  37 C.F.R §2.53(c).  

 

If the applicant is claiming color, as previously stated above, the Office began accepting color drawings on November 2, 2003.  As of that date, the Office no longer accepts black and white drawings with a color claim, or drawings that possibly show color by use of some pattern, as is the case with this applicant’s drawing.  37 C.F.R. §2.52(b)(1).Color drawings must be accompanied by the following:  (1) a color claim naming the colors that are a feature of the mark; and (2) a separate statement describing where the color(s) appear on the mark.  A color drawing will not publish without both of these statements. 

 

A properly worded color claim would read as follows: The color(s) orange, red and blue are claimed as a distinctive feature of the mark.

 

 

If this is a color drawing, then the applicant may supplement the required written description of the color contained in a mark with a reference to a commercial color identification system.  The Office does not endorse or recommend any one commercial color identification system.  The written description of the mark must include a generic description of the color, in addition to the reference to the commercial color identification system.

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

The undersigned’s Law Office 116 in particular relocated on October 18, 2004; this is when the undersigned’s phone number changed from (703) 308-9113 to (571) 272-9151 and the fax number changed from (703) 872-9203 to (571) 273-9150.

 

/Lauriel F. Dalier/

Lauriel F. Dalier

Trademark Attorney Law Office 116

(571) 272-9151

(571) 273-9150

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm