| To: | BioWink GmbH (ls@savurlaw.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 79157484 - CLUE - N/A |
| Sent: | 8/31/2015 2:29:00 PM |
| Sent As: | ECOM108@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79157484
MARK: CLUE
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CORRESPONDENT ADDRESS: Louis Smoller |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 8/31/2015
THIS IS A FINAL ACTION.
INTERNATIONAL REGISTRATION NO. 1228900
This Office action is in response to applicant’s communication filed on August 7, 2015.
The following refusals have been withdrawn: Section 2(d) Likelihood of Confusion Refusal, and refusal regarding prior pending Application No. 86184503.
The following requirement has been satisfied and is now withdrawn: description of the mark.
In the Office Action dated February 17, 2015, the examining attorney required the applicant to clarify and amend the goods and services in the application and the applicant responded with an amended Identification of Goods and Services. The proposed amendments with respect to the identification of goods and services cannot be accepted because some of the wording remains indefinite and requires further clarification.
Class 009
The proposed amended identification of goods reads as follows:
Applicant should note that thermometers for measuring and determining the female cycle are for medical use; therefore, applicant must delete this wording in the identification of goods. Similarly, the wording “Measuring instruments, namely for measuring and determining the female cycle; Diagnostic apparatus, not for medical purposes, namely for measuring and determining the female cycle; Testing apparatus not for medical purposes, namely for measuring and determining the female cycle; Chemistry apparatus and instruments, namely for measuring and determining the female cycle” was not included in the identification of goods in Class 009 because the wording is indefinite and references goods in Class 010. In addition, applicant already included these goods in Class 010 – the proper classification for these goods. In Class 009, applicant may amend to “thermometers, not for medical purposes.”
The following amendments are suggested:
· Downloadable computer software, namely a mobile application for use in tracking and monitoring female health; Downloadable recorded computer programs for use in monitoring and tracking female health; Downloadable computer software for use in tracking and monitoring female health; Downloadable image files providing information on tracking and monitoring female health; Computer peripherals; digital thermometers, not for medical purposes;
The proposed amended identification of goods reads as follows:
The wording “medical analytical apparatus for medical purposes” is unacceptable as indefinite because it fails to indicate specific goods.
Applicant may consider the following suggestions:
Class 010
Class 041
The proposed amended identification of services reads as follows:
The following suggestion may be considered:
Class 042
The proposed amended identification of services reads as follows:
The following suggestions may be considered:
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
PROPER RESPONSE TO FINAL PARTIAL REFUSAL
The application will then proceed with the remaining goods and services.
Applicant may respond by providing one or both of the following:
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/CarynGlasser/
Trademark Examining Attorney
Law Office 108
Phone: (571) 270-1517
Fax: (571)-270-2517
caryn.glasser@uspto.
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.