NOTE TO THE FILE
SERIAL NUMBER: 79259220
DATE: 09/11/2019
NAME: twhittaker-brown
NOTE:
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for: and entered changes in TRADEUPSDear Tracy,
I've heard back from my client. They are fine with restoring the language to "pre-packaged" reagents but would like to propose slightly different language following it. Could you please let me know whether the following would be acceptable?
"Medical and veterinary preparations, substances and products, namely, a chemical solution that preserves cellular antigen expression; chemical reagents for medical use; chemical reagents for veterinary use; clinical reagents for medical use; clinical reagents for veterinary use; pre-packaged reagents consisting of reagents for veterinary
andor medical use and clinical reagents for veterinary or medical use; parts and fittings for the aforesaid packs."
Please do not hesitate to contact me with any questions or if you would like to discuss.
Best regards,
Heather
Balmat Law, PLLC977 Seminole Trail, #342
Charlottesville, VA 22901
Tel.: 434-260-1837
Fax: 434-473-6738
http://balmatlaw.com/
Twitter: @BalmatLaw
From: Whittaker-Brown, Tracy <Tracy.Whittaker-Brown@USPTO.GOV>
Sent: Monday, September 9, 2019 9:51 AM
To: Heather Balmat <hbalmat@balmatlaw.com>
Subject: U.S. Trademark Application Serial No. 79259220 TRANSFIX
Hello Heather. You and I have just discussed the identification of goods in this case via telephone. Again, please accept my apology for the errant suggestion in the identification of goods “packaged reagents.” The original identification wording is
“Pharmaceuticals, medical and veterinary preparations, substances and products; biological, and/or chemical reagents for pharmaceutical, medical and/or veterinary use; clinical and/or diagnostic reagents for pharmaceutical, medical and/or veterinary use; packs containing primarily of the aforesaid reagents; parts and fittings for the aforesaid packs.”
You have amended other wording in the identification to:
“Medical and veterinary preparations, substances and products, namely, a chemical solution that preserves cellular antigen expression; chemical reagents for medical use; chemical reagents for veterinary use; clinical reagents for medical use; clinical reagents for veterinary use; packaged reagents; parts and fittings for the aforesaid packs”
The highlighted language should not have been suggested, as it is beyond the scope of the original wording and indefinite, as reagents for different purposes are in varied classes. Here is the language that I propose to keep the goods in Class 5, as required for Madrid Protocol applications:
Medical and veterinary preparations, substances and products, namely, a chemical solution that preserves cellular antigen expression; chemical reagents for medical use; chemical reagents for veterinary use; clinical reagents for medical use; clinical reagents for veterinary use; pre-packaged reagents consisting of reagents for veterinary and medical use and clinical reagents for veterinary use; parts and fittings for the aforesaid packs
I can resolve the matter by issuing an examiner’s amendment, however, your authorization is required. An examiner’s amendment can obviate the need for applicant to file a formal response via the website, www.uspto.gov. Please reply back using this message, or leave a voice message at the telephone number listed below to provide permission to issue an examiner’s amendment. If I do not hear back from you by the close of business, September 12, 2019, I may issue a regular Office action in this case. Thanks and I look forward to hearing from you!
Best Regards,
/Tracy Whittaker-Brown, Esq./
Examining Attorney, LO111
571-272-9397