Offc Action Outgoing

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  78/694877

 

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

 

Search Results

 

Although the examining attorney has searched the Office records and has found no similar registered mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial Nos. 78682067 and 76327268.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the marks in the above noted applications under Section 2(d) of the Act.  The filing dates of the referenced applications precede the applicant’s filing date.  If one or more of these earlier‑filed applications matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

Identification of Goods

 

The current wording used to describe the goods needs clarification because it is indefinite. Applicant must amend the identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.

The applicant may amend to any or all of the following, as may be accurate.  Suggested amendments appear in bold, while wording that requires further clarification appears in italics.  The correct classification for the goods/services also appears below.

 

“Reagents for use in (specify use, e.g. research purposes, chemical analysis, non-medical purposes etc);  assays for use in (specify use, e.g. genetic research)”  in class 1

 

“Reagents for use in (specify use, e.g. for medical or veterinary use, for clinical medical use, etc); biological and chemical preparations, namely (specify nature, form and use of  said preparations); assays, namely, medical diagnostic assays for (specify use, e.g. testing of body fluids)”  reagents and media for medical purposes; pharmaceuticals used for the treatment of (specify medical use) “ in class 5

“Card readers, namely (specify use, e.g. chip card readers); encoded cards, namely, (specify, e.g. encoded credit cards); chips, namely (specify, e.g. computer chips); chip card readers; computer software, namely, software for use in (specify use of software)” in class 9.

“Medical devices, namely (specify nature and use, e.g. medical cutting devices); medical diagnostic apparatus for (specify use, e.g. medical diagnostic imaging) ; medical measuring apparatus, namely, (specify, e.g. apparatus for measuring blood pressure); medical test kits for (specify use, e.g. diabetes testing); medical monitors for (specify use, e.g. monitoring blood pressure) in class 10. 

“Biomedical services, namely (specify, e.g. storage of human cells)” in class 39. 

“Medical and scientific research services in the field of (specify, e.g. cancer treatment); pharmaceutical research services; pharmaceutical research and development” in class 42

“Medical evaluation services, namely (specify, e.g. assessment of patients undergoing medical rehabilitation) ; medical monitoring services, namely (specify, e.g.  interactive monitoring of patient medical conditions” in class 44

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).  Therefore, the applicant may only amend to include those goods or services that are within the scope of the goods and services recited in the present identification.

The applicant is advised that the above suggestions may not be a complete listing of acceptable specifications available to the applicant, but are instead provided only as suggestions.  It is the applicant's duty to properly identify the goods and services.   TMEP Section 804.06.  For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ or  http://tess2.gov.uspto.report/netahtml/tidm.html.

Please also note that the applicant may not use the indefinite wording “and/or,” “or,” or “etc.” in its identification of goods/services.  The applicant must use the more definite word “and” when listing more than one item.  The applicant may not use parentheticals in its description of goods/services.  The examining attorney used them above merely to indicate wording that requires further amendment.

 

 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.

 

 

/John M. Wilke/

Attorney Examiner

Law Office 104

571-272-5871

571-273-5871 fax

 

 

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.