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: 3/23/2010

 

 

The assigned examining attorney has reviewed the referenced application and determines as follows:

 

 

No Conflicting Marks

 

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.

 

Identification of Goods

 

Applicant’s description of goods is unacceptable because it is indefinite.  §1402.1. 

 

Applicant’s Current Identification Of Goods

 

chemicals, chemical and reagent assays, reagents and kits consisting primarily of chemicals, chemical and reagent assays, and reagents for the analysis of nucleic acids, proteins and antibodies for clinical, diagnostic and medical laboratory use; chemicals, chemical and reagent assays, reagents and kits consisting primarily of chemicals, chemical and reagent assays, and reagents for nucleic acid sequence amplification, sequencing and sequence analysis and detection, oligonucleotides, cDNA and RNA libraries and microarrays for clinical, diagnostic and medical laboratory use

 

The wording used to describe the goods is indefinite and must be clarified because it is too broad and could include goods in more than one International Class.  See TMEP §1402.01.  Applicant must more clearly specify the use of the goods.  Specifically, reagents, chemicals and assays for medical laboratory and clinical laboratory use are properly classified in Class 001.  Reagents, chemicals and assays for medical diagnostic use are properly classified in Class 005. 

 

Applicant may adopt the following, if accurate: 

 

• International Class 001: chemicals, assays, reagents and kits consisting primarily of chemicals, assays, and reagents for the analysis of nucleic acids, proteins and antibodies for clinical laboratory and medical laboratory use; chemicals, assays, reagents and kits consisting primarily of chemicals, assays, and reagents for nucleic acid sequence amplification, sequencing and sequence analysis and detection, oligonucleotides, cDNA and RNA libraries and microarrays for clinical laboratory and medical laboratory use.

• International Class 005: chemicals, assays, reagents and kits consisting primarily of chemicals, assays, and reagents for the analysis of nucleic acids, proteins and antibodies for clinical medical and medical diagnostic use; chemicals, assays, reagents and kits consisting primarily of chemicals, assays, and reagents for nucleic acid sequence amplification, sequencing and sequence analysis and detection, oligonucleotides, cDNA and RNA libraries and microarrays for clinical medical and medical diagnostic use

 

Please Review The ID Manual For Guidance

 

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.

 

Scope Advisory

 

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.

Classification of Goods

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 001 and 005.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

Multiple Class Requirements

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; 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).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

If 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.

 

 

/Nakia D. Henry/

Trademark Attorney (Law Office 111)

United States Patent and Trademark Office

Phone:  (571) 272-7208

Fax:    (571) 273-7208

 

 

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. 77896940) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 3/23/2010 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=77896940&doc_type=OOA&mail_date=20100323 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 3/23/2010 (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.