UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE 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  76/563487

 

The assigned trademark examining attorney has reviewed the referenced application filed on December 5, 2003, and has determined the following.

 

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Identification of Goods/Services

THIS REQUIREMENT APPLIES ONLY TO THE GOODS/SERVICES SPECIFIED THEREIN.

 

Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening the scope of the goods/services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification.

 

Class 5

Applicant must clarify the identification of goods by specifying the use of the pharmaceutical preparations.  TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate:  Diagnostic test kits comprised primarily of biological reagents and instruments for use in the detection of agents causing infectious diseases; diagnostic reagents for clinical or medical laboratory use; pharmaceutical preparations for the treatment of [SPECIFY name of disease to be treated], in Class 5.  TMEP §1402.01.

 

Class 10

Applicant must clarify the identification of goods by specifying the use of the chemical analyzers for medical diagnostic assays and tests.  TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate:  Medical diagnostic apparatus, namely, biological, biochemical, and chemical analyzers for medical diagnostic assays and tests for use in identifying [SPECIFY use], in Class 10.  TMEP §1402.01.

 

Class 42

Applicant must clarify the identification of services by specifying that the drug research and development services relate to pharmaceutical drugs.  TMEP §1402.01.

 

Applicant may adopt the following identification of services, if accurate:  Medical and scientific research and development services in the fields of pharmaceutical drug discovery, pharmaceutical drug development, medical diagnostics, and biological detection; diagnostic testing services in the fields of pharmaceutical drug development, disease diagnosis and treatment, food safety, and biological detection; consulting services in the fields of biological detection and biological defense; medical and scientific research, in Class 42.  TMEP §1402.01.

 

Class 44

Applicant must clarify the identification of services by specifying the nature of the food testing (e.g., laboratory services, namely, food testing, in Class 42), and classifying such services appropriately.  TMEP §1402.01.

 

Partial Requirement Advisory

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application:  pharmaceutical preparations; medical diagnostic apparatus, namely, biological, biochemical, and chemical analyzers for medical diagnostic assays and tests; medical and scientific research and development services in the fields of drug discovery and drug development; food testing.  The application will then proceed forward for the following goods and/or services only:  Reagents and diagnostic preparations for scientific and medical research use; research reagents for industrial use, namely, for food testing; Diagnostic test kits comprised primarily of biological reagents and instruments for use in the detection of agents causing infectious diseases; diagnostic reagents for clinical or medical laboratory use; Laboratory apparatus, namely biological, biochemical, and chemical analyzers for research assays; computer software for the operation and control of laboratory apparatus, namely, biological, biochemical, and chemical analyzers for research and diagnostic assays for use in the medical and research fields; Medical and scientific research and development services in the fields of medical diagnostics, and biological detection; diagnostic testing services in the fields of drug development, disease diagnosis and treatment, food safety, and biological detection; consulting services in the fields of biological detection and biological defense; medical and scientific research; medical services.  37 C.F.R. §2.65(a).

 

Fee Increase

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.

 

 

 

 

 

 

 

 

 

/Vivian Micznik First/

Vivian Micznik First

Trademark Attorney, Law Office 114

703-308-9114 ext. 149

 

 

 

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.