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. 79319009
Mark: EPPENDORF
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Correspondence Address:
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Applicant: Eppendorf AG
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1610127
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
SEARCH RESULTS
IDENTIFICATION OF GOODS/SERVICES
Some of the wording in the identification of goods and services is indefinite and too broad. This wording must be clarified because it is not clear what the goods and/or services are and could identify goods and/or services in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii). For example, software in International Class 9 includes downloadable and recorded software in International Class 9 and online non-downloadable services in International Class 42. The applicant must specify “downloadable” or “recorded” for software in Class 9.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods and/or services may be classified in several international classes, any modification to this wording must identify goods and/or services in International Classes 9, 10, 11, 35, 37, 40, 41, 42 and 44 only, the classes specified in the application for these goods and/or services. See TMEP §1904.02(c), (c)(ii).
Applicant may adopt the following wording in International Classes 9, 10, 11, 35, 37, 40, 41, 42 and 44 if accurate:
Class 9 – pre-recorded
digital media devices featuring [indicate subject matter of “content”, e.g., medical discoveries, scientific experiments, etc.]; information
technology and audio-visual, multimedia and photographic devices, namely, [specify, e.g., blank computer disks]; magnets, magnetizers and demagnetizers; scientific and
laboratory devices, namely, [specify nature of device not for medical use, e.g., specimen collection devices in the nature of tubes and swabs] for treatment the collection of [specify, e.g., blood, urine, etc.] using electricity; optical devices, enhancers and correctors, namely, [specify, e.g., glasses]; safety, security, protection and signalling devices, namely, [specify, e.g., traffic light apparatus, luminous traffic
signals]; GPS navigation devices, [clarify the “guidance”] GPS tracking device, targeting and map making
devices”]; measuring, detecting, monitoring and controlling devices, namely, [specify, e.g., graduated ruler, fluorometers]; scientific research and laboratory
apparatus, educational apparatus and simulators, namely, [specify, e.g., homogenizers]; downloadable computer software for data and file
management and for database management for scientific, medical and laboratory use; recorded computer software for monitoring, analysing,
controlling and running processes in laboratory, research and medical facilities; furniture especially made for laboratories; analysis and diagnostic apparatus for use in laboratories for [specify purpose, e.g., testing food]; attachments for temperature control devices and heating and cooling elements for scientific and laboratory purposes, namely, [specify] [thermo-blocks]; pipettes and with dispensers and [clarify “pipetting and dispensing apparatus”]; [clarify “pipetting” e.g., pipette] and with dispensing tips, including for pipetting robots and machines for laboratory use; pipette suction bellows for laboratory
use; pipette adapters for laboratory use; dispenser and pipette ends and tips with dispenser, with and without an integrated filter
for laboratory use; pipette stands, in particular in carousel form, including with power supply connection for electric pipettes with
integrated charging station for laboratory use; pipette holder systems consisting of [specify components, e.g., pipette
racks and suction bellows] for laboratory use; automated pipetting and pipette dispensing systems and robots consisting of [specify component of system] for laboratory use; automated devices for life science applications, namely, [specify,
e.g., scanner for capturing images for analysis in life science research]; automated sample transfer and sample preparation stations [specify the nature of the sample,
e.g., blood, urine samples] for laboratory use; barcode scanners; containers for laboratory purposes, namely, [specify, e.g., sample
containers for testing oils and lubricants]; containers for pcr tubes, strips and plates for laboratory use; specimen containers laboratory
use and micro-capillaries and vessels for storing probes in safety cabinets for scientific purposes; downloadable operating and
measuring software for operational, control and measuring apparatus for operating, measuring, controlling, monitoring and inspecting bioprocesses; downloadable big data
management software; bioprocess control systems consisting of [specify components of system that are classified in Class 9]; downloadable
bioprocess software for [specify function of software, e.g., database management]; downloadable bioprocess systems comprised of [specify components, e.g., downloadable software and monitors] for [specify function of software used in systems]; electrical bioprocess reactors;
bioreactors for cell culturing and fermenter apparatus for laboratory use; bioreactors for cell culturing;
bioreactor systems comprised of [specify components in Class 9]; pressure sensor apparatus for biotech and bioreactor installations; reusable and disposable bioreactors
for cell culturing; [some of the following goods are duplicates from above and may be deleted or distinguished: “enclosures, containers, vessels,
stands, holders, filters, trays and racks for pipettes and dispensers, dispenser and pipette tips, reaction tubes, tubes and tubules [tubes], petri dishes
and covers for scientific or laboratory use”]; laboratory glassware, namely, burettes; downloadable computer software and hardware
for the control, operation, user communication and calibration of laboratory equipment and instruments; [clarify “deepwell plates” to identify goods in Class 9, e.g., plates have
multi-well arrays that can be sued in chemical analysis for laboratory use]; detectors, detection equipment, instruments and apparatus for [specify function, e.g.,
detecting pathogens, toxins, etc.] for scientific and laboratory use; [clarify “diluters”]; dna tube amplifiers; dosing pipes,
namely, dispensers of preset portions of fluids, granules or powder for dosing purposes, not for medical purposes; dosing hoses, namely, dispensers
of preset portions of fluids, granules or powder for dosing purposes, not for medical purposes; dosage dispensers of preset portions of fluids, granules or powder for
dosing purposes, not for medical purposes; dosing cylinders, namely, dispensers of preset portions of fluids, granules or powder for dosing
purposes, not for medical purposes; [specify type of “printers” e.g., document printers, thermal printers, etc.]; disposable and consumable articles, in
particular of glass and/or plastic, for scientific and laboratory use, namely, [specify the commercial name of the article]; electronic magazines featuring [specify subject matter] recorded on computer media; [clarify “expansion boxes for bioreactors for taking on additional functions” e.g., memory
expansion modules for bioreactors for taking on additional functions]; fermentation systems and analysers comprised of [specify component classified in Class 9]
for laboratory use; remote control and remote monitoring apparatus for [specify purpose or use, e.g., controlling temperature in recators];
[clarify “solid matrices to support cell growth”] for laboratory use; humidity sensors; [specify type of “filters and
filter sets”, e.g., optical filters for plasma display panels]; [clarify “filter plates”]; laboratory equipment, namely, bottles and
vials for scientific or laboratory use; bottle adapters for laboratory use, namely, plastic closures, seals and stoppers for laboratory bottles; laboratory bottle holders for laboratory use; liquid extraction devices for laboratory use; scientific, nautical,
surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, namely, [specify,
e.g., magnifying glasses, thermometers, other than for medial use]; equipment and apparatus for reading codes, namely, scanners for scientific and laboratory use
and downloadable software relating thereto; equipment and apparatus for hermetically sealing well plates for laboratory use; apparatus for
recording, transmission or reproduction of sound or images; apparatus for temperature monitoring and control, not for medical purposes; equipment, apparatus, and instruments and equipment for scientific and laboratory purposes, namely, [specify nature of equipment]; apparatus,
instruments and equipment for applications in the field of liquid handling, in particular for dosing, decanting, distributing, stirring, separating, transferring, diluting, aerosol-tight
transporting, blending, mixing, temperature control, concentrating, homogenising, filtering and for combining and reacting samples, liquids, reagents, liquids and fluid substances; apparatus, instruments and equipment hand operated tools for scientific and laboratory use for manipulating laboratory samples
in the field of liquid, cell and sample handling and for laboratory sample management; downloadable electronic publications in the fields of life science and ergonomics and sustainability,
namely, specify nature of publication, e.g., magazine]; downloadable mobile applications for the management of data; [clarify “cooling containers for reaction and sample tubes”]; [clarify “cuvettes; cuvette stands”]; laboratory ware, including for single use disposable articles, in particular of glass and plastic, namely, [specify the laboratory wear, e.g., disposable
safety goggles]; laboratory gloves; [clarify “diaphragms for scientific apparatus”]; membrane filters for auxiliary pipetting devices for
laboratory use; measuring and controlling devices for volumetric measurement, transfer and/or dosing of liquids and fluid substances; microarrays and kits for microarray processing comprised of [specify components of kits in Class 9]; microplate reader for life science and assay development; microtiter plate for laboratory use; [clarify “micro-distillers” because distillers for chemical processing are in Class 11]; [clarify
“microinjection and micromanipulation capillaries; microinjection devices” because it seems to identify medical goods in Class 10]; hand operated micromanipulation
devices for laboratory samples; microplates for laboratory use; microscope adapters for micromanipulation systems; reaction tubes, tubes and
tubules [tubes] for scientific and laboratory use; [clarify “rotors for centrifuges and vacuum concentrators” to determine the class];
stirrers for scientific and laboratory use; test tubes for scientific or laboratory use; electricity conduits; downloadable computer software and hardware with a digital
interface in the nature of internet of things gateway) enabled devices for managing apparatus data transmission
to mobile application on mobile telephones, smartphones, tablets, portable media players, laptop computers and desktop computers; syringes and syringe-like articles for scientific and laboratory use;
devices for protection against external vibrations, namely, anti-vibration pads; structural parts and accessories for the
aforesaid scientific and laboratory devices, apparatus, instruments and equipment; laboratory centrifuges; all the aforesaid goods for scientific and laboratory use
Class 10 - Medical equipment, apparatus and instruments for medical diagnostic purposes in the field of [specify, e.g., cancer or other tissue-based diagnostic testing]; protective gloves and [clarify the “protective clothing for medical” and diagnostic purposes’ because “protective clothing with air conditioning function by the integration of phase change cooling devices for cooling people namely, vest for cooling surgeons, nurses and medical personnel” is in Class 9. Applicant may adopt: “protective gowns or coveralls for medical and diagnostic purposes”]; furniture especially made for medical purposes; structural parts and accessories for medical and diagnostic devices, apparatus, instruments and equipment; containers especially adapted for the disposal of medical instruments, syringes and other contaminated medical waste
Class 11 – electro-chemical Flue gas scrubbing machines
and installations for conveying exhaust gases; sterilization, disinfection and decontamination equipment, namely, specify type or purpose, e.g., chemical sterilization units,
ultraviolet sterilization units for water treatment, etc.]; air filters for industrial and household use; wastewater treatment installations for industrial purposes; refrigerating and
freezing equipment, namely, [specify, e.g., food and beverage chilling units]; heating and ventilating units for laboratories or industrial
use, and air conditioning and purification units equipment (ambient); extraction hoods and ventilating hoods for laboratories; environmental control
apparatus for scientific and laboratory use, namely, [specify, e.g., particle activators for use in soil remediation, drinking water treatment, etc.]; structural parts and accessories of flues and installations for conveying exhaust gases, sterilisation, disinfection and decontamination installations and equipment, [structural parts for “air filters for industry and household use” is unclear], wastewater treatment installations for industrial purposes,
refrigerating and freezing equipment, and for heating, ventilating, and air conditioning and purification equipment; autoclaves for [specify, eg.,
medical use, cooking, etc.]
Class 35 - Advertising, marketing and promotional services in the nature of [specify type of
promotional activities, e.g., viral marketing program, for [specify customers, e.g., mobile phone service providers]; [clarify “business assistance” e.g., operational
business assistance], business management and administrative services for [specify purpose of the business administrative services, e.g.,
medical referrals]; organisation administration of consumer loyalty, incentive and bonus programmes
to promote [specify, e.g., restaurant and retail services of others]; business consultancy relating to organisation and management of laboratories and research
facilities; providing business consultancy and information relating to data management in the field of laboratory via a website; operational
business assistance, business management and administrative services relating to data management in the laboratory and research field provided online via communications networks; procurement services
for others, namely, purchasing goods and services for other businesses; retailing and wholesaling relating to retail and wholesale store
services featuring apparatus, articles, devices, instruments and equipment for scientific, medical and laboratory use; catalogue ordering merchandising and
retail mail order retailing services featuring in connection with the sale of apparatus, articles,
devices, instruments and equipment for scientific, medical and laboratory use; compilation of statistics, in particular from scientific data; management and compilation
of computerised databases and consultancy relating thereto; business efficiency expert services; publication of publicity texts; business information; arranging and conducting of commercial
exhibitions; organisation of trade fairs, events and presentations for commercial, business and advertising purposes; organizing and conducting product presentation
featuring the goods and services of others, including on the internet; [clarify “assignment of codes through product
purchase” e.g., medical records coding services for others in the nature of diagnostic and procedural codes for purposes of reimbursement from insurance]; dissemination of advertising matter;
distribution of samples for advertising purposes; retail sale store services of featuring articles,
devices, instruments and equipment for scientific, medical and laboratory use and of computer hardware and software used in connection therewith; administrative processing, systematization into computer databases and management of scientific and laboratory data; compilation of environmental information into computer
databases
Class 37 - Installation, cleaning, repair and maintenance of computer hardware; repair information, installation
and maintenance of [specify what is being installed and maintained and the subject of the repair information, e.g., “repair information for medical equipment, and installation and
maintenance of medical equipment”]; disinfecting of [specify, e.g., medical waste]; interference suppression services in
for electrical apparatus; servicing, installation, cleaning, maintenance and repair of scientific, optical, weighing, measuring, signalling, checking, life-saving and
teaching apparatus and instruments; servicing, installation, cleaning, maintenance and repair of laboratory apparatus and equipment
Class 40 - acceptable
Class 41 – Training in [specify subject/field, e.g., the use of medical equipment];
presentation of exhibitions for entertainment purposes; the provision of education information; educational services, namely, [specify, e.g.,
classes, seminars, workshops] in the field of [specify, e.g., chemistry or computer science]; education; arranging, conducting and organisation of classes,
courses, seminars and training courses in the medical, scientific and laboratory field, including online; providing online non-downloadable electronic publications
in the nature of [specify nature of publication, e.g., books, magazines, etc.] in the field of [indicate subject matter, e.g., pharmaceuticals or
medical science]; publication of periodicals and magazines; sports training; arrangement of exhibitions, fairs, seminars, workshops and presentations for cultural, entertainment, educational
and teaching purposes; writing and publishing of texts, other than publicity texts; electronic publication of texts and printed matter of
others, other than publicity texts, on online the internet featuring [indicate subject matter];
publication of scientific information journals
Class 42 - Development, programming and implementation of software for others for the
scientific, medical and laboratory fields; development of computer hardware for the scientific, medical and laboratory field; website hosting services, software as a
service services, featuring software for [specify function, e.g., database management], and rental of software for the scientific, medical and laboratory field; IT
consultancy, advisory and information services in the field of science, medicine, research and laboratories; IT security services in the nature of [clarify “protection” e.g.,
“data security consultancy” or “data encryption for providing security for electronically transmitted credit card transactions] and recovery of computer data in the field of science, medicine, research and laboratories; rental of computer hardware and systems software for the scientific, medical and laboratory field; technological advisory services relating to the use and operation of apparatus, articles, devices, instruments and
equipment for scientific, medical and laboratory use and of computer hardware and software used in connection therewith; engineering services; electronic data storage for scientific, medical and
laboratory use; development of bioreactors and bioreactor systems; surveying; remote monitoring and control of computer system to ensure proper functioning; remote
monitoring and control of scientific and laboratory apparatus to ensure proper functioning; research, development and technological consultancy, in particular in the
field of biotechnology and IT systems associated therewith; bacteriological research and [clarify “technology” e.g., “technological research in the field of [specify]”;
industrial analysis and research services of [specify what is being analyzed and researched, e.g., industrial fluids]; platform as a service (PaaS) featuring computer software platforms for [specify the function of the programs, e.g., for use in database management, etc., and if content is software
or field specific, the field of use]; material testing; platform as a service (PaaS) featuring computer software platforms for [specify the function of the programs,
e.g., for use in database management, etc., and if content is software or field specific, the field of use] and mobile backend as a service (MBaaS) and
software as a service (SaaS) both featuring computer software platforms for [specify the function of the programs, e.g., for use in database
management, etc., and if content is software or field specific, the field of use; quality control of [specify, e.g., goods and
services]; technological and scientific services, in particular [specify the nature of the services, e.g., “research and design”] in connection with applications,
evaluations, appraisals, studies and reports in the field of science and technology; professional consultancy relating to the science of ergonomics; scientific research; scientific laboratory
services; [specify type of “laboratory services” e.g., scientific laboratory services]; calibration services namely, measuring
featuring scientific and laboratory apparatus; monitoring of computer systems and laboratory apparatus for customers via remote access to ensure
proper functioning; rental of equipment, instruments and apparatus for scientific and laboratory use
Class 44 - acceptable
Applicant must list the goods and/or services by international class. TMEP §§801.01(b), 1403.01.
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. See TMEP §1402.04.
MAIL ADDRESS REQUIRED
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); TMEP §803.05(b). This email address cannot be identical to the primary correspondence email address of a U.S.-licensed attorney retained to represent applicant in this application. See TMEP §803.05(b).
U.S. LICENSED ATTORNEY REQUIRED
Applicant is required to be represented by a U.S.-licensed attorney to respond to or appeal the provisional refusal because applicant’s domicile is located outside of the United States and applicant does not appear to be represented by a qualified U.S. attorney. 37 C.F.R. §2.11(a); TMEP §601.01(a). An applicant whose domicile is located outside of the United States or its territories must be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §2.11(a); TMEP §§601, 601.01(a). In this case, applicant’s domicile is identified in the application as Germany. For more information, see the U.S. Counsel webpage at http://www.gov.uspto.report/trademark/laws-regulations/trademark-rule-requires-foreign-applicants-and-registrants-have-us and Hiring a U.S.-licensed trademark attorney webpage at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-trademark-attorney.
To appoint a U.S.-licensed attorney in this application, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ indicating that an appointment of attorney has been made and address all other refusals or requirements in this action. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii); TMEP §604.01.
How to respond. Click to file a response to this nonfinal Office action.
Andrea D. Saunders
/Andrea D. Saunders/
Trademark Attorney
Law Office 117
571-270-3856
Andrea.Saunders@uspto.gov
RESPONSE GUIDANCE