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: 11/16/2007

 

The office received Applicant’s Response to Office Action on September 6, 2007, in which the following requirements have been satisfied and are now withdrawn: The Identification of Services n Class 41/42 requirement.  The requirements for Identification of goods requirement for Class 9; and, Foreign Registration Certificate are hereby maintained and continued.  

 

Requirements

Identification of Class 9 Goods

 

The identification of the Class 9 goods is unacceptable as indefinite because many of the terms used are overly broad, and could include goods in additional International Classes.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate:

CLASS 9:

 

Hand-held scanners; Computer software containing databases giving information to enable the early diagnosis of diseases such as cancer; Software featuring data in machine-readable form, namely, data which aids the early detection of cancer; Electrically, optically or magnetically recorded software featuring data, namely, data to aid the early detection of cancer; Data processing equipment, namely, image scanners; Computers; Computer software for medical image processing which provides medical professionals with imaging information to enable them to make instant decisions; Cameras; Digital cameras; Software providing medical professionals with health and diagnostic information to enable them to make instant decisions; Digital graphic scanners; Computer programmes for scanners, namely, programmes for onscreen information for use in the early detection of melanoma; Scanners for entering data and images into computers; Scanners for scientific and medical research use, namely, image scanners not for immediate use in connection with treatment or diagnosis of patients; Cinematographic film; Blank video cassettes, blank video tapes, blank audio tapes, blank magnetic computer tapes, blank magnetic tapes for tape recorders, blank tapes for storage of computer data, and blank discs for computers; Computer firmware for use in the early detection of melanoma; Computer hardware; Computer peripherals; Computer software, namely, software for the diagnosis and management of skin complaints; Computer programmes and cartridges namely computer programmes for use in gaining health and diagnostic information to enable medical professionals to make instant decisions; Downloadable periodicals in electronic form in the nature of on-screen information in the field of science and medicine; Computer software and telecommunications apparatus and modems to enable connection to databases and the internet; Computer search engine software; Computer software and downloadable electronic periodicals, in the nature of medical information in electronic form supplied on-line from databases or from facilities provided on the internet, including websites; Digital analyzers for producing magnified dermatoscopic views and reports in relation to the early detection of lesions not for immediate use in connection with treatment or diagnosis of patients; Electronic and optical communications instruments and components, namely, digital transmitters; Data processing programmes namely, for on-screen information for use in the early detection of melanoma; Computer programmes for use in the early detection of melanoma; Apparatus other than for medical purposes to enable the non-invasive scanning and probing, capturing, visual inspection, analyzing, understanding and monitoring of the skin surface and beneath the skin by contact or without skin contact, namely, hand-held scanners; Computer software for use in monitoring and diagnosing biochemical reactions and phenomena; Computer programmes for medical purposes, namely, software for ______ {specify the use, function or purpose of the software, e.g. medical use for ___(specify the disease or condition treated)}; Optical detection, inspection measuring and testing apparatus, namely, hand-held scanners and software therefore, namely, ______ {specify the use, function or purpose of the software, e.g. medical use for ___(specify the disease or condition treated)}; Optical viewing and recording apparatus, namely, hand-held scanners and software therefore, namely, ______ {specify the use, function or purpose of the software, e.g. medical use for ___(specify the disease or condition treated)}; Electrically diagnostic testing apparatus, namely, hand-held scanners and software for ______ {specify the use, function or purpose of the software, e.g. medical use for ___(specify the disease or condition treated)}; Scientific measuring instruments, namely, spectrophotometers; Spectral measuring and imaging apparatus, namely, hand-held scanners and software therefore, namely,  ______ {specify the use, function or purpose of the software, e.g. medical use for ___(specify the disease or condition treated)}; Spectral imaging instruments, namely, hand-held scanners and software therefore, namely, ______ {specify the use, function or purpose of the software, e.g. medical use for ___(specify the disease or condition treated)}; Cases, bags, holdalls, carriers and containers, all adapted for carrying or for storing the aforesaid goods; parts and fittings for all the aforesaid goods.  International Class 9.

 

Foreign Registration is Incomplete

 

The Foreign Registration received in this Office consists of 19 pages, and appears to be missing pages which contain vital information, such as identification of the Applicant.  Two of the pages appear to have been inadvertently submitted and do not appear to be part of the foreign registration. Applicant may either re-submit the entire foreign registration, or just those pages missing from the Office record.  Full file available for Applicant’s viewing at:  http://portal.gov.uspto.report/external/portal/tow .

 

 

Class 41 Services Re-Classification and Currently Exceeds the Scope of the Foreign Registration Goods and Services Identifications

 

The following wording in the identification of services in the U.S. application is unacceptable because it exceeds the scope of the goods and/or services in the foreign registration of record:  “Providing on-line publications in the nature of medical information in the field of melanoma; electronic publishing services, namely, publication of text and graphic works of others on screen and paper featuring information about hemoglobin, melanin, dermal melanin and collagen images, Class 42.”  37 C.F.R. §2.32(a)(6).  The examining attorney initially indicated in error that these services were located in Class 42, when it should have been indicated these services are Classified in Class 41.  The examining attorney has amended application to reflect the correct Class 41.  The decision as to the proper classification of goods or services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak inc., 164 USPQ 88 (TTAB 1969).

 

Therefore, applicant must either:

 

(1)    Amend the identification of the Class 41 services in the U.S. application to correspond to the goods and/or services identified in the foreign registration, ensuring that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or

 

(2)    Delete the Section 44 basis for the services beyond the scope of the foreign registration and rely solely on a Section 1 basis for those services. 

 

(3)    Upon submission of a complete foreign registration which creflects the Class 41 services identified in the application, the examining attorney will accept the services and withdraw the “exceeds the scope of foreign registration” requirement.

 

15 U.S.C. §1051; 37 C.F.R. §§2.32(a)(6) and 2.34(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02 et seq., 1012 and 1402.01(b). 

 

 

 

 

/Thomas M. Manor/

Trademark Examining Attorney

Law Office 110

Phone :  (571) 270-1519

Fax. No. (571) 273-9110

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.