Offc Action Outgoing

This is a PROVISIONAL PARTIAL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application that applies to only the following goods in the application: Chemical, biochemical and biotechnological products for industrial and scientific purposes, in particular nucleic acids, enzymes, polymerases, dye and marker compounds, molecular probes, buffers, aqueous and non aqueous solutions of alcohols and/or salts, distilled or purified water, silicates, magnetic particles, column material; reagents or/and solvents for sample preparation, purification, lysis, modification and/or manipulation of cells and/or tissues and for performing marking, separating, isolating, purification, amplification, and/or analysis methods of copolymers, in particular nucleic acids, enzymes, proteins, macromolecules and biologically active substances; kits comprising chemicals, biochemicals and/or biotechnological products for sample preparation, purification, lysis, modification and manipulation of cells and/or tissue and for performing marking, separating, isolating, purification, amplification and/or analysis methods for biopolymers, in particular nucleic acids, enzymes, proteins, macromolecules and biologically active substances, in particular nucleic acids of biological or biochemical sample material, in particular tissues, in each case as far as comprised in this class; pharmaceutical and veterinary products, in particular nucleic acids, enzymes, polymerases, dye and marker compounds, molecular probes, buffers, aqueous and non aqueous solutions of alcohols and/or salts, distilled or purified water, silicates, magnetic particles, column material, chemical, biochemical and biotechnological products; kits comprising products for medical and veterinary-diagnostic purposes, in particular chemical, biochemicals and/or biotechnological products for sample preparation, purification, lysis, modification and/or manipulation of cells and/or tissues and for marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, protein, macromolecules and biologically active substances, in particular enzymes, proteins, macromolecules and biologically active substances, in each case as far as comprised in this class; Scientific apparatuses, instruments and equipment, in particular for research, development, and/or analysis purposes and laboratory instruments, measuring apparatuses and instruments for use of products for medical or veterinary-diagnostic purposes, in particular for sample preparation, modification and manipulation of cells and/or tissues and for marking, separating, isolating, purifying, amplifying, and/or for the analysis of biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances, in particular nucleic acids from biological or biochemical sample material, respectively in particular vacuum pumps, chromatographic columns, robots, and automated laboratory machines, spare parts and fittings for this purposes, in particular pre-programmed cards, microplates, pipettes, pipette tips, pipette tip holders, test vessels, reagent holders, flasks, containers, test tube holders, holders for microvessels, magnetic particles, magnetic tips, biochips, thermo-cyclers, homogenisators, vacuum valves, in each case as far as included in this class. See 15 U.S.C. §1141h(c).

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL REFUSAL:

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:

(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and

(2) Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).

37 C.F.R. §§10.1(c), 10.14; TMEP §602.

Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. See TMEP §§602.03, 712.03.

THE APPLICATION HAS BEEN PROVISIONALLY PARTIALLY REFUSED AS FOLLOWS:

NOTE: This is a partial refusal Office action. The refusal(s) and/or requirement(s) in this Office action apply only to specified goods in the U.S. application.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

NO CONFLICTING MARKS FOUND

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

IDENTIFICATION

THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

The identification of goods is indefinite and in certain instances, the nature of the goods is unclear and confusing, and must be clarified. Please refer to bolded wording for necessary clarification and/or suggested amendments. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. Additionally, applicant’s identification includes the word, “kits” which is also indefinite because applicant must clearly identify the nature of the kits in the assigned International Class. See TMEP §§1401.05, 1402.01, 1402.03. See 37 C.F.R. §§2.71(a), 7.25(a); TMEP §§1402.06(b), 1904.02(b).

For kits consisting of a group of items that share a common theme, the identification should specify the theme followed by the word “comprising” and a list of the items that make up the kit, setting forth the most dominant items first. Generally, the international class of the kit will be determined by the international class for the majority of items in the kit. Thus, the majority of the items must be classified in the corresponding International Classes 1 and 5.

If no items in a shared-theme kit are more dominant than any other item, the international class for the kit itself will be determined by the first-listed item after the wording “comprising.” Thus, the first-listed item must be classified in the corresponding International Classes 1 and 5.

For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item].” Generally, the international class for this type of kit will be determined by the international class for the product being made. Thus, the product being made must be classified in the corresponding International Classes 1 and 5.

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods and/or services in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b).

Therefore, any modification to this wording must identify goods in International Classes 1, 5, and 9, the classification specified in the application for these goods.

Applicant may adopt the following identification, if accurate:

“Chemical, biochemical and biotechnological products for industrial and scientific purposes, namely, nucleic acids for laboratory use, enzymes, polymerases, [please specify the type of dye and marker compounds], biochemical reagents commonly known as probes, for detecting and analyzing molecules in protein or nucleotide arrays, chemical buffers used in analytical chemistry, aqueous and non aqueous solutions of alcohols and/or salts, distilled or purified water, [please specify the type of silicates, e.g. sodium, calcium, zinc] silicates, magnetic particles in fluid form, and column material, namely, [please type of column materials], none of the foregoing for medical or veterinary purposes; chemicals and biochemicals for industrial and scientific purposes, namely, reagents and solvents for sample preparation, purification, lysis, modification and manipulation of cells and tissues and for performing marking, separating, isolating, purification, amplification, and analysis methods of copolymers, in particular nucleic acids, enzymes, proteins, macromolecules and biologically active substances for separation, analysis and purification of biological and biochemical compounds, none of the foregoing for medical or veterinary purposes; kits comprising chemicals for industrial purpose, [please specify the type of biochemicals and/or biotechnological products, e.g. biochemical catalysts] for sample preparation, purification, lysis, modification and manipulation of cells and/or tissue and for performing marking, separating, isolating, purification, amplification and analysis methods for biopolymers, in particular enzymes, proteins, macromolecules and nucleic acids of biological or biochemical sample tissues, none of the foregoing for medical or veterinary purposes” in International Class 1;

“Diagnostic preparations for medical and veterinary purposes; pharmaceutical and veterinary products, namely, nucleic acid sequences, chemical reagents, biochemical preparations, [please specify the type of enzymes, polymerases, dye and marker compounds, molecular probes, buffers, aqueous and non aqueous solutions of alcohols and/or salts, distilled or purified water, silicates, magnetic particles, column material, and biotechnological products as it relates to Class 5]; kits comprising chemical reagents, biochemical preparations and [please specify the type of biotechnological products, e.g. biochemical preparations] for sample preparation, purification, lysis, modification and/or manipulation of cells and/or tissues and for marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, protein, macromolecules and biologically active substances, in particular enzymes, proteins, macromolecules and biologically active substances, all of the foregoing for medical and veterinary purposes” in International Class 5;

“Scientific apparatuses, instruments and equipment for research, development, and analysis purposes, namely, [please specify the type of scientific apparatuses, instruments and equipment, e.g. optical mirrors] and [please specify the type of laboratory instruments, e.g. pipette racks, thermometers], [please specify the type of measuring apparatuses, e.g. conductivity meters] and [please specify the type of laboratory instruments, e.g. pipettes] for sample preparation, modification and manipulation of cells and/or tissues and for marking, separating, isolating, purifying, amplifying, and for the analysis of proteins, macromolecules and nucleic acids from biological or biochemical sample materials in vacuum pumps, chromatographic columns, robots, and automated laboratory machines, pre-programmed cards, microplates, pipettes, pipette tips, pipette tip holders, test vessels, reagent holders, flasks, containers, test tube holders, holders for microvessels, magnetic particles, magnetic tips, biochips, thermo-cyclers, homogenisators, and vacuum valves” in International Class 9.

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

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. See TMEP §1402.04.

PLEASE NOTE

Applicant may designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §§604, 811. If applicant does not designate a domestic representative, notices or process in proceedings affecting the mark may be served on the Director of the Office. 15 U.S.C. §1051(e).

PARTIAL ABANDONMENT

The application will then proceed with the following goods in Class 5 only: Diagnostic preparations for medical and veterinary purposes. 37 C.F.R. §2.65(a).

If the applicant has any questions regarding this Office Action, please telephone the assigned Examining Attorney.

Lana H. Pham /lhp/

Trademark Attorney

Law Office 115

United States Patent and Trademark Office

(571) 272-9478

Lana.Pham@uspto.gov (informal)

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.