Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/108337

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

 

The assigned examining attorney has reviewed the application and determined the following.

 

•            Search of Office records.

The examining attorney has searched the Office records and has found no similar registered or pending mark which bars registration under Trademark Act §2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

However, the applicant must respond to the following.

 

•            Identification of goods/services.

An application’s identification of goods/services must be specific, definite, clear, accurate and concise.  See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953); TMEP §1402.01. 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite words––such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “instruments,” “materials,” “parts,” “products,” or “systems”––then those words must be followed by the word “namely” and the items listed by their common commercial names or by describing the nature and intended use of the items.  TMEP §§1402.01 and 1402.03.

In the instant case, the identification of goods/services is unacceptable as indefinite.  Accordingly, the applicant must clarify the parts indicated below.  The applicant may adopt the following identification:

pharmaceutical compositions, namely [specify]; diagnostic products, namely [specify]; and molecular biology products, namely [specify]

This Office’s Acceptable Identification of Goods & Services Manual is accessible at http://tess2.gov.uspto.report/netahtml/tidm.html.  The applicant should also 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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods/services that are not within the scope of the goods/services set forth in the present identification.

 

•           Responding to this Office Action.

To respond formally to this Office Action, the applicant is strongly urged to utilize this Office’s Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/eTEASpageD.htm.

(If the applicant responds using regular mail, he/she is advised that such correspondence must bear the serial number, law office, and examining attorney’s name on the upper right corner of each page.  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; the undersigned’s fax number is (571) 273-9212.)

To check the status of an application at any time, the applicant is strongly encouraged to visit the Office’s online Trademark Applications and Registrations Retrieval system at http://tarr.uspto.gov.  For general and other useful information about trademarks, the applicant may visit the Office’s official Web site at http://www.gov.uspto.report/main/trademarks.htm.

To respond informally to this Office Action, or for inquiries or questions about this Office Action, the applicant should contact the assigned Examining Attorney via e-mail: 

brendan.regan@uspto.gov

/J. Brendan Regan/

Examining Attorney

Law Office 113

571.272.9212

   

Advisory for TEAS-Plus filers––TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS-Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) responses to Office Actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) Amendments to Allege Use; (7) Statements of Use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  In addition to the above, TEAS-Plus applicants must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).