Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

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:

 

This Office action is in response to applicant’s communication filed on December 20, 2010.

 

Requirements Satisfied

 

The requirements that applicant claim ownership of a prior registration and submit additional product information are satisfied.

 

Upon consideration of applicant’s response, the examining attorney must add the following notation of a prior pending application and apologizes for any inconvenience.

 

Prior Pending Application

 

Information regarding pending Application Serial No. 77073525 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Identification of Goods Requirement – Continued and Maintained

 

The proposed amendment to the identification cannot be accepted because the following wording refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing:  cells for cosmetic use, tissues for cosmetic use, derivatives of cells and tissues for cosmetic use, and “vaccines for medical or veterinary use.”  See 37 C.F.R. §2.71(a).  This wording is beyond the scope of the original wording.  The original application specified “immune cells; tissue cells; biological tissues; and derivatives thereof; all for scientific and veterinary research and development use” and “immune cells; tissue cells; biological tissues; and derivatives thereof; all for medical or veterinary use,” with no mention of vaccines or materials for cosmetic use.

 

Therefore, vaccines, cells for cosmetic use, tissues for cosmetic use, and derivatives thereof for cosmetic use are all outside the scope of this original language.  Identifications can be amended only to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted.  Id.; see TMEP §§1402.06 et seq., 1402.07(a).  Therefore, this wording should be deleted from the identification.

 

The suggested amendments are noted below in bold typeface.  Applicant may adopt any or all of the following identification of goods, if accurate: 

 

“Immune cells, namely, cells for scientific, laboratory or medical research; tissue cells, namely, cells for scientific, laboratory or medical research; biological tissues, namely, stem cells, progenitor cells, immune cells, tumor cells, blood-derived cells, stromal cells, connective tissue, support tissue, organ tissue, adipose and soft tissue, vascular tissue, skin and surface tissues, mucosal tissue, neural tissue, decellularized tissue, demineralized tissue, umbilical cords, placentas, bone marrow and tumor tissue for scientific, laboratory and medical research use; derivatives of the aforementioned goods, namely, proteins, peptides, enzymes, cytokines, chemokines, antibodies, DNA, RNA, growth factors, cell lysate, extracellular matrix and conditioned media for scientific, laboratory or medical research,” in International Class 1.

 

“Immune cells, namely, cells for medical or veterinary use; tissue cells, namely, cells for medical or veterinary use; biological tissues, namely, stem cells, progenitor cells, immune cells, tumor cells, blood-derived cells, stromal cells, connective tissue, support tissue, organ tissue, adipose and soft tissue, vascular tissue, skin and surface tissues, mucosal tissue, neural tissue, decellularized tissue, demineralized tissue, umbilical cords, placentas, bone marrow and tumor tissue for medical or veterinary use; derivatives of the aforementioned goods, namely, proteins, peptides, cytokines, chemokines, antibodies, DNA, RNA, growth factors, cell lysate, extracellular matrix, and conditioned media for medical or veterinary use,” in International Class 5.

 

See TMEP §1402.01.

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods 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 that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods 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.

 

 

/Carrie Genovese/

Examining Attorney

Law Office 115

(571) 272-8378

carrie.genovese@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.