UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES that applicant must address:

 

• Identification Goods Requires Further Clarification
• Claim of Ownership of Prior Registrations
• Request to Change Owner Name- No Assignment Recorded- ITU

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

However, applicant must respond to the issues below.

 

Identification Goods Requires Further Clarification

The wording “incubator and microscope assemblies for observing embryos during their growth period” in the identification of goods is indefinite and too broad and must be clarified for the reasons set forth below. See TMEP §1402.01.  Specifically, the applicant must specify that the goods are “for medical purposes” for clarity. For example, “microscopes” are properly classified in International Class 09; however, “microscopes for surgical operations” are properly classified in International Class 10. Likewise, “incubators for used for in vitro fertilization purposes” are properly classified in International Class 10, while, “incubators for eggs” are classified in International Class 07 and “incubators for bacteria cultures” are classified in International Class 09. Thus, by further clarifying that the goods have a medical use or purpose, as opposed for use in a laboratory, the goods will remain properly classified in International Class 10.

 

Applicant may substitute the following wording, if accurate: 

 

Class 09: Laboratory equipment, namely, incubator and microscope assemblies for observing embryos during their growth period.

 

Class 10: Incubator and microscope assemblies for observing embryos during their growth period for medical purposes.

 

If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Multiple-class Application Requirements

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)       LIST GOODS BY INTERNATIONAL CLASS:  Applicant must list the goods by international class.

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Applicant has paid for one (1) International Class.

 

Claim of Ownership of Prior Registrations

 

If applicant owns U.S. Registration Nos. 2522625 and 2715694, then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copy of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of the registrations:

 

Applicant is the owner of U.S. Registration Nos. 2522625 and 2715694.

 

Request to Change Owner Name- No Assignment Recorded- ITU

 

Applicant has requested that the owner name be amended; however, applicant has not provided a reason for this request, or provided or recorded ownership transfer documentation.  The name of the original applicant is Genx International, Inc., a corporation of Connecticut; applicant seeks to amend this to LifeGlobal Group, LLC., a company of Connecticut.  The request to change the owner name raises a question regarding whether the proper party filed the original application.  Therefore, applicant must clarify whether the proper party filed the original application, and whether the assignee is a successor to applicant’s business.  Pending a proper response, the request to amend the owner name is denied until clear chain of title to the new party has been established. 

 

Additionally, the assignment form submitted by the applicant is an outdated form no longer accepted by the Office.  

 

An intent-to-use application is void if it was filed in the name of a party who was not entitled to use the mark on the application filing date.  37 C.F.R. §2.71(d); Am. Forests v. Sanders, 54 USPQ2d 1860, 1863 (TTAB 1999); TMEP §§803.06, 1201.02(b); see 15 U.S.C. §1051(b).  In addition, an intent-to-use application is void if, prior to filing an allegation of use, the application is assigned to a party other than either a successor to the applicant’s business or to a portion of the applicant’s business to which the mark pertains, if that business is ongoing and existing.  15 U.S.C. §1060(a)(1); 37 C.F.R. §3.16; Clorox Co. v. Chem. Bank, 40 USPQ2d 1098, 1105-06 (TTAB 1996); TMEP §501.01(a).  A void application cannot be cured by amendment or assignment.  TMEP §§803.06, 1201.02(b); see 37 C.F.R. §2.71(d).  In these cases, the true owner must file a new application.  TMEP §803.06.

 

To amend the owner name in an application, the new owner must file documentation to establish its ownership of the application as follows:

 

(1)  The new owner must (a) record an assignment, name change, or other documentation affecting title with the USPTO’s Assignment Recordation Branch showing a clear chain of title to the mark in the new owner; and (b) promptly notify the trademark examining attorney that the documentation has been recorded.

 

(2)  The new owner must file either (a) a written statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20, explaining in detail the chain of title to the new owner; or (b) documentation showing transfer of title to the new owner.  However, the registration will not issue in the name of the new owner without recording chain of title documentation with the USPTO and notifying the trademark examining attorney, as specified in (1) above.

 

TMEP §502.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.73(b)(1); TMEP §502.02(a).

 

Assignments and other documents affecting title may be filed electronically at http://etas.gov.uspto.report/.  There is a fee for recording ownership changes.  37 C.F.R. §§2.6(b)(6), 3.41(a); TMEP §503.03(d).  Recording an assignment or other ownership transfer document does not constitute a response to an Office action.  TMEP §503.01(d). 

 

If the party applying to register the mark is in fact the owner of the mark, but there is a typographical error or other minor mistake in the manner the owner name is set forth in the application, the mistake may be corrected by amendment.  U.S. Pioneer Elecs. Corp. v. Evans Mktg., Inc., 183 USPQ 613, 614 (Comm’r Pats. 1974); TMEP §1201.02(c) (providing examples of correctable and non-correctable errors).

 

Response Guidelines

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Deborah Meiners/

Attorney Advisor

Law Office 110

(571) 272-8993

Deborah.Meiners@USPTO.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.