| To: | THERMO ELECTRON CORPORATION (marames.william@arentfox.com) |
| Subject: | TRADEMARK APPLICATION NO. 78921252 - THERMO SCIENTIFIC - 009310.00031 |
| Sent: | 6/29/2007 12:05:09 PM |
| Sent As: | ECOM115@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/921252
MARK: THERMO SCIENTIFIC
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: THERMO ELECTRON CORPORATION
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 6/29/2007
THIS IS A FINAL ACTION.
This letter responds to the applicant’s communication filed on 2-28-07. Applicant’s amended identification of goods in Class 1 is acceptable. The Section 2(e)(1) refusal is withdrawn. The disclaimer of SCIENTIFIC is acceptable.
Final Requirement for an Amended Identification of Goods in Class 5, 7, 9, 10, 11 and an Amended Recitation of Services in Class 35, 37 and 42
The requirement for an amended identification of goods in Classes, 5, 7, 9, 10 and 11 and an amended recitation of services in Classes 35, 37 and 42 is made FINAL. TMEP Section 1402; Rule 2.64.
In Class 5, applicant must clarify “media for growing cells for the production of diagnostic and therapeutic materials. If it is for diagnostic use, namely, growing bacteriological cultures to see if someone has a particular condition than the proper classification is Class 5. If it were an industrial product, then Class 1 would be the proper classification.
In Class 7, “centrifuges for laboratory use” in misclassified. Laboratory apparatus, namely, centrifuges” is classified in Class 9.
In Class 9, applicant must replace the semicolons with commas to indicate that all of the goods are scientific, electrical, optical, measuring, laboratory and test apparatus and instruments and parts therefor. In addition, x-ray sources, data acquisition and recording systems, computer software for use in data acquisition, analysis, and archiving, and cover glasses are indefinite. Applicant must address the bolded sections of suggested identification below in Class 9.
In Class 10, “medical test kits comprised of analysis or calibration equipment for clinical laboratory use; and tissue processors belong in Class 9. Applicant must specify what the test kits are analyzing or calibrating. Applicant must also specify if tissue processors are laboratory equipment.
In Class 11, laboratory freezers, freeze-dryers and laboratory autoclaves are misclassified. They belong in Class 9. In addition, applicant must specify the equipment for purifying water for laboratory use or change the word “equipment” to “apparatus.”
In Class 35, applicant must delete the phrase, “services associated with distributing the laboratory products of others” because it is indefinite. Also, applicant must add the word “providing” before “office functions” for clarity.
In Class 37, applicant must delete “and computer software used in connection therewith.” Installation and repair of computer software is classified in Class 42.
In Class 42, applicant must specify what it means by “technical support.” Troubleshooting problems? Monitoring the apparatus and instruments?
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. Applicant may adopt the following, if accurate.
Class 1 media for growing cells for the commercial production of diagnostic and therapeutic materials in Class 1.
Class 5 diagnostic reagents and preparations for clinical or medical laboratory use or for in vitro use in biochemistry, clinical chemistry, histology, hematology and microbiology; media for growing cells for the production of diagnostic and therapeutic materials for diagnostic purposes in Class 5.
Class 7 “centrifuges for industrial use; automated washers for laboratory use in washing reuseable glassware and reuseable plasticware” in Class 7.
Class 9 scientific, electrical, optical, measuring, laboratory and test apparatus and instruments and parts therefor, namely, mass spectrometers, optical emission spectrometers, spectroscopy apparatus, spectrophotometers, gas and liquid chromatography apparatus, chromatography columns, centrifuges, incubators, biological safety cabinets, microscopes, fluorometers, automated film assay analyzers, assay diagnostic slides, electrophoresis analyzers, coolers and chillers, laboratory freezers and freeze-dryers, laboratory sample concentrators, electromechanical shakers, dispensers, readers and detectors for fluids in laboratory environments, microplate instruments, laboratory ovens, thermal cyclers, laboratory magnetic particle processors, gas detectors, radiation detectors, explosives detectors, process gas analyzers, particle detectors, aerosol monitors, x-ray apparatus for inspecting liquids in containers, moisture analyzers, neutron generators, x-ray sources for scientific laboratory uses, sulphur analyzers, on-line cement, coal and mineral analyzers, electromagnetic interference simulators for testing electronic devices, liquid level sensors, robotic liquid handling systems, viscometers and rheometers, coating gauges, density meters, porosity analyzers, pipettes, test tubes, belt scales, check weighers, metal detectors, PH electrodes, conductivity meters, dissolved oxygen meters, laboratory mixers and extruders, data acquisition and recording systems {specify the components of the system}, computer software for use in data acquisition, analysis, and archiving in the field of ________, computer software for use in laboratory instrument operation, charge-injection-device cameras and detectors for the detection and digital imaging of radiation, reuseable and disposable laboratory glassware and glass containers, tubes and vials, reusable and disposable laboratory plasticware and plastic containers, closures for laboratory containers, microscope slides and microscopes, microscope cover glasses, laboratory equipment for use in specimen preparation, namely, tissue processors; laboratory freezers, freeze-dryers and laboratory autoclaves; medical test kits comprised of analysis or calibration equipment {to analyze and test what?} for clinical laboratory use; laboratory apparatus, namely, centrifuges in Class 9.
Class 11 immersion coolers; recirculating chillers; apparatus for purifying water for laboratory use in Class 11.
Class 35 “advertising; business management; business administration; providing office functions; advertising services related to scientific, electrical, optical, measuring, laboratory, and test apparatus and instruments and computer hardware and software used in connection therewith” in Class 35.
Class 37 installation and repair services related to scientific, optical, measuring, laboratory and test apparatus and instruments and to laboratory electrical apparatus and instruments and computer hardware used in connection therewith” in Class 37.
Class 42 installation of computer software related to scientific, optical, measuring, laboratory and test apparatus and instruments and to laboratory electrical apparatus and instruments; consulting services related to the use and operation of scientific, electrical, optical, measuring, laboratory, and test apparatus and instruments and to laboratory electrical apparatus and instruments and computer hardware used in connection therewith; technical support, namely, troubleshooting of computer hardware and software programs related to the use and operation of scientific, electrical, optical, measuring, laboratory, and test apparatus and instruments and to laboratory electrical apparatus and instruments in Class 42.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.
If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application: media for growing cells for the production of diagnostic and therapeutic materials, x-ray sources, data acquisition and recording systems, computer software for use in data acquisition, analysis, and archiving, cover glasses, medical test kits comprised of analysis or calibration equipment for clinical laboratory use and tissue processors, services associated with distributing the laboratory products of others, technical support related to the use and operation of scientific, electrical, optical, measuring, laboratory, and test apparatus and instruments and to laboratory electrical apparatus and instruments. The application will then proceed with the other goods and services listed. 37 C.F.R. §2.65(a).
If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final action by:
(1) submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or
(2) filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).
In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.64(a). See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters. The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/AMY GEARIN/
Trademark Attorney
Law Office 115
United States Patent and Trademark Office
571-272-9473
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 Office’s Response to Office action 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.