U.S. Application Serial No. 79367873
Mark: FLEXISTAT DRAWER
| Correspondence Address:
RCD PATENT GIESEN, SCHMELCHER & GRIEBEL PATENTANWÄLTE PARTNERSCHAFTSGESELLSCHAFT MBB Kaiserstraße 100 52134 Herzogenrath GERMANY |
Applicant: Qiagen GmbH
Reference/Docket No. N/A
Correspondence Email Address:
International Registration No. 1725418
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).
INTRODUCTION
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(a), 2.65(a); TMEP §§711, 718.03.
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
SUMMARY OF ISSUES:
DISCLAIMER REQUIRED
Applicant must disclaim the word “DRAWER” because it is merely descriptive of a function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The word "drawer" refers to "a sliding box or receptacle opened by pulling out and closed by pushing in," according to the attached dictionary evidence. When used in connection with medical apparatus and instruments, the word "drawer" immediately conveys that the drawer is used to hold and/or organize medical instruments and apparatus. Therefore, this word must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DRAWER” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
AMENDMENT TO IDENTIFICATION OF GOODS REQUIRED
Applicant must clarify the wording outlined below in the identification of goods in International Classes 9 and 10 because it is indefinite. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. Specifically, the wording must be amended to specify the exact nature and purpose of the goods.
Class 9: Accepted.
Class 10:
The wording "Medical diagnostic apparatus and instruments; analysers for medical use; analysers for medical diagnosis;
testing instruments for medical diagnostic purposes; apparatus for carrying-out diagnostic tests for medical purposes" must be amended to specify
what is being diagnosed and/or tested.
If accurate, applicant may amend to: "
Medical diagnostic apparatus and instruments for [specify what is being diagnosed]; analysers for medical use for
[specify what is being diagnosed]
; analysers for medical diagnosis for
[specify what is being diagnosed]
;
testing instruments for medical diagnostic purposes for [specify what is being diagnosed]; apparatus for carrying-out diagnostic tests for medical purposes for [specify what is being diagnosed];
medical and clinical diagnosis apparatus and machines, namely, molecular and immunoassay analyzers for analyzing blood and bodily
fluids".
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
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.
ENTITY INFORMATION REQUIRED
Applicant must specify its legal entity type and national citizenship or foreign country of organization or incorporation, as applicant did not include this information in the application. See 37 C.F.R. §§2.32(a)(3)(i)-(v), 2.61(b); TMEP §§803.03, 803.04. This information is required for all U.S. trademark applications, including those filed under Trademark Act Section 66(a). See 37 C.F.R. §7.25(a)-(b); TMEP §1904.02(a).
Acceptable legal entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See TMEP §§803.03 et seq. If applicant’s legal entity type is an individual, applicant must so specify and provide his or her national citizenship. 37 C.F.R. §2.32(a)(3)(i); TMEP §803.03(a). If applicant is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must so specify and provide the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §803.03(b)-(c). For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c). If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04.
INFORMATION REQUIREMENT
To permit proper examination of the application, applicant must submit additional information about the word "FLEXISTAT". See 37 C.F.R. §2.61(b); TMEP §814.
Applicant must respond to the following questions and/or requests for documentation to satisfy this request for information: (1) What is the meaning of the term "FLEXISTAT"? (2) Does the term "
FLEXISTAT
" have any meaning or significance when used in connection with the identified goods, and if so, specify the meaning or significance? (3) Is the term "
FLEXISTAT
" used by other entities, and if so, explain the nature of the use?
See 37 C.F.R. §2.61(b); TMEP §814.
If applicant submits webpage evidence to satisfy this requirement, applicant must provide (1) an image of the webpage, (2) the date it was accessed or printed, and (3) the complete URL address. In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018)); TMEP §710.01(b). Providing only a website address or hyperlink to the webpage is not sufficient to make the materials of record. In re ADCO Indus.-Techs., L.P., 2020 USPQ2d 53786, at *2 (citing In re Olin Corp., 124 USPQ2d 1327, 1331 n.15 (TTAB 2017); In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012); TBMP §1208.03); TMEP §814.
Applicant has a duty to respond directly and completely to this requirement for information. See In re Ocean Tech., Inc., 2019 USPQ2d 450686, at *2 (TTAB 2019) (citing In re AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013)); TMEP §814. Failure to comply with a requirement for information is an independent ground for refusing registration. In re SICPA Holding SA, 2021 USPQ2d 613, at *6 (TTAB 2021) (citing In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814).
RESPONSE GUIDELINES
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).
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 outside of the United States or its territories. 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/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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.