Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 12/9/2009

 

Telephone Response Encouraged:

 

Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

Search Results

 

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, 2.65(a); TMEP §§711, 718.03.

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

However, in order to pursue registration, applicant must respond to the following.

 

Clarification of the Identification of Goods

 

Some of the wording in the identification of goods is indefinite and must be clarified because the wording fails to indicate specific goods.  See TMEP §§1402.01, 1402.03.  In addition, the identification of goods is indefinite and must be clarified because it includes the open-ended wording “including.”  See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.” 

 

Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

The examining attorney noted specifically the wording that requires clarification and provided suggestions in bolded italicized font below.

 

Class 009

 

The proposed identification of goods reads:

 

“Scientific instruments, namely nucleic acid sequencers, imaging devices, and analyzers; equipment for sample preparation, amplification, mixing, hybridization, incubation, and washing, including arrays, flow cells, beads, bead sets; automated laboratory equipment and systems, including sample loaders and barcode readers; computer systems for collecting, storing, analyzing and reporting biological information, and for sample tracking and managing projects, laboratory workflow and data, all the foregoing for use in the fields of scientific, diagnostic and clinical research”

 

·                   Applicant must clarify the goods with respect to “imaging devices”

·                   Applicant must clarify the type of “analyzers”

·                   “Equipment for sample preparation, amplification, mixing, hybridization, incubation, and washing, including arrays, flow cells, beads, bead sets” must be clarified to articulate the specific equipment applicant is referring to.  In addition, applicant must delete the wording “including” and replace it with the word “namely.”

·                   The wording “sample loaders” is indefinite, and thus, must be clarified to indicate a good properly classified in Class 009.  The examining attorney was unable to offer a suggestion because of the indefinite nature of “sample loaders.”

·                   “Computer systems” must be clarified to specify the components of the system.

 

The following would be acceptable if adopted by applicant:

 

“Scientific instruments, namely nucleic acid sequencers, imaging devices, namely {SPECIFY, E.G., nuclear medical research imaging apparatus, electronic imaging apparatus in the field of sclerology, rayid and eyology not for medical use, etc.} and {specify type of analyzers, e.g., flow-based} analyzers for general research uses; equipment for sample preparation, amplification, mixing, hybridization, incubation, and washing, namely {specify, e.g., capillary, protein and receptor micro, etc.} arrays, {specify, e.g., microaspirating, etc.} flow cells, {specify, e.g., magnetic} beads, {specify, e.g., magnetic} bead sets; automated laboratory equipment and systems, namely, barcode readers; computer systems comprised of {specify components of system, e.g., computer hardware, computer operating systems, computer monitors, etc.} for collecting, storing, analyzing and reporting biological information, and for sample tracking and managing projects, laboratory workflow and data, all the foregoing for use in the fields of scientific, diagnostic and clinical research”

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

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.  See TMEP §1402.04.

 

/cglasser/

Caryn Glasser

Trademark Examining Attorney

Law Office 108

Phone:  (571) 270-1517

Fax:  (571) 270-2517

 

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77840648) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 12/9/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77840648&doc_type=OOA&mail_date=20091209 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 12/9/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.