Offc Action Outgoing

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 issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SEARCH OF OFFICE’S DATABASE OF MARKS

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).

SUMMARY OF ISSUE:

Amendment to the identification of Goods Required

IDENTIFICATION OF GOODS– AMENDMENT REQUIRED

The wording “Materials for use in medical science in genetic testing for research, namely, . . reagents” in the identification of goods must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass “materials for use in medical science in genetic testing for research, namely, reagents for research purposes,” in International Class 001; and “materials for use in medical science in genetic testing for research, namely, reagents for medical use,” in International Class 005.

Applicant may substitute the following wording, if accurate: “materials for use in medical science in genetic testing for research, namely, reagents for research purposes,” in International Class 001; and “materials for use in medical science in genetic testing for research, namely, reagents for medical use,” in International Class 005.

Applicant has classified “Materials for use in medical science in genetic testing for research, namely, specimen dishes” in International Class 010; however, the proper classification is International Class 009. Therefore, applicant may respond by (1) adding International Class 009 to the application and reclassifying these goods in the proper international class, (2) deleting “specimen dishes” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action. Moreover, the wording “Materials for use in medical science in genetic testing for research, namely, specimen dishes” in the identification of goods is indefinite and must be clarified to more specifically identify the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:

International Class 009: Materials for use in medical science in genetic testing for research, namely, specimen dishes used in laboratory research

The wording “Materials for use in medical science in genetic testing for research, namely, . . microtools, . . . and visualizing equipment for use in testing specimens such as saliva, blood or embryo DNA for detecting the presence or absence of specimen genetic disorders” in the identification of goods is indefinite and must be clarified to more specifically identify the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses.

Applicant may substitute the following wording, if accurate:

International Class 010: Materials for use in medical science in genetic testing for research, namely, medical visualizing equipment, namely, {indicate specific equipment by common commercial name} for use in testing specimens, namely, saliva, blood or embryo DNA for detecting the presence or absence of specimen genetic disorders, and microtools, namely, {indicate specific equipment by common commercial name} for {indicate medical use, e.g., neurostimulation, cardiac rhythm management, muscle stimulation, etc.}

In summary, the applicant may adopt the following identification of goods, if accurate (changes in bold):

International Class 001: Materials for use in medical science in genetic testing for research, namely, reagents for research purposes

International Class 005: Materials for use in medical science in genetic testing for research, namely, reagents for medical use

International Class 009: Materials for use in medical science in genetic testing for research, namely, specimen dishes used in laboratory research

See TMEP §§1402.01, 1402.03

For assistance with identifying and classifying goods trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

Multiclass Advisory

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fee or restrict the application to the number of classes covered by the fee already paid.

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.

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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.

/Paul Ferrer/

Examining Attorney

Law Office 122

(571) 272-7379

Paul.Ferrer@USPTO.com

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.