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  77/111509

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Trademark Act Section 2(d) Search Results – No Conflicting Marks Found

 

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.

 

Amended Identification of Goods Required

 

The applicant has applied to register the mark SUPELMIP for “Apparatus and instruments for chromatography; Chromatography and purification apparatus for laboratory use; chromatography cartridges, plates, funnels, tips, filters, fibers and columns; Apparatus for automatic chromatography; Automatic ion-exchange chromatography apparatus for laboratory use; Gas chromatography apparatus” in International Class 009.

 

Some of the wording in the identification of goods is indefinite and/or broad and may comprise goods in several international classes.  In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then such terms must be followed by the word “namely” and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Applicant must address the following issues and amend the identification accordingly.

 

(1)   The wording “apparatus and instruments for chromatography” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.  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.  TMEP §1402.01.  Applicant may substitute the following wording, if accurate: “apparatus and instruments for chromatography, namely _____ {list specific instruments and further describe the apparatus, using common commercial names, e.g., gas purifiers}” in International Class 009.

 

(2)   The wording “chromatography and purification apparatus for laboratory use” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes.  TMEP §§1402.01 and 1402.03.  Applicant may substitute the following wording, if accurate:  “chromatography and purification apparatus for laboratory use, namely _____ {list specific goods, using common commercial names, e.g., solvent recovery equipment}” in International Class 009. 

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

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

 

Significance of the Mark

 

Applicant must specify whether “SUPELMIP” or “SUPEL” or “MIP” has any significance in the business trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

Applicant Must Claim Ownership of Prior Registration

 

If applicant is the owner of U.S. Registration No. 2535368, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 2535368.

 

Response

 

If the applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Laurie R. Kaufman/

Trademark Examining Attorney

Law Office 103

Ph: 571.272.8913

Fx: 571.273.9103

 

 

 

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.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.