To: | SQI Diagnostics Systems Inc. (leonardm@pepperlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77799315 - PLEX - 132976.19 |
Sent: | 9/23/2009 10:31:16 AM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/799315
MARK: PLEX
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: SQI Diagnostics Systems Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 9/23/2009
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Identification of Goods and Services
The Class 42 identification is acceptable as written.
The Class 5 and 9 identifications of goods are unacceptable as presently worded because certain goods are worded indefinitely, need clarification and may identify goods in more than one International Class. In the identification of goods, applicant must use the common commercial or generic names for the goods, be all-inclusive, 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," "apparatus" 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).
For comparison purposes, the entries requiring amendment have been underlined, and the wording in bold font and/or brackets [ ] indicate information that the applicant must supply. Please be certain to supply all required information when amending the identifications below. Applicant may change this wording to the following, if accurate:
Class 1: Assay devices, namely, assay reagents for use in genetic research; Multiplexing antigen and multiplexing antibodies for scientific or research use; Proteomic substances, namely, protein arrays and nucleotide arrays for scientific and medical research; Diagnostic reagents for scientific or research use.
Class 5: Assay devices for [indicate the specific Class 5 purpose, e.g., for the detection and quantification of analytes, namely, medical diagnostic immuno-assays for proteomic testing and antibody screening]; Diagnostic reagents for medical use;
Class 9: Laboratory robots, namely, a robotic platform for use in association with assay devices for the detection and quantification of analytes; Hand held laboratory analyzers for [indicate purpose, e.g., for analyzing blood and other bodily fluids]; Microarrays and diagnostic/prognostic bio-chips for medical analysis; Calibrators and calibration instruments used to [specify Class 9 purpose of the calibrators and calibration instruments, e.g., used to calibrate the amount of reagent affixed to an assay device used for determining the amount of analyte in a biological sample]; Proteomic apparatus, instruments and equipment, namely [identify the specific Class 9 proteomic apparatus, instruments and equipment by their common commercial names]; Disposable reusable laboratory syringe applicators for sample processing.
Class 44: Medical diagnostic services, namely, medical diagnostic testing, monitoring, and reporting services.
TMEP §1402.01.
Please note that, while the identification may be amended to clarify or limit the goods/services, adding to 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.
For assistance with identifying 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.
Requirements for Combined Applications
(1) Applicant must list the goods and/or services by international class; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
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).
Applications Pursuant to Sections 1(b) and 44(d)
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04.; or
(2) If applicant intends to rely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04. Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §§1103, 1104.
/RLF/
Ronald L. Fairbanks
Trademark Attorney
Law Office 117
(571) 272-9405
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.