UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 6/19/2012

 

 

 

PLEASE NOTE: Applicant is encouraged to telephone the assigned trademark attorney to resolve the issues raised in this Office action. The assigned trademark attorney has reviewed the referenced application and has determined the following:

 

Requirement for Clarification of Indefinite Identification Language

 

The applicant has identified its goods as: “Nucleic acid amplification kits.”

 

The word “kits” in the identification of goods is indefinite and must be clarified.  See TMEP §§1401.05(a), 1402.01, 1402.03.  Kits consist of a group of items that either (1) share a common theme, or (2) are used to make a particular product.  The nature of the kit will determine its classification.  See TMEP §1401.05(a).  Therefore, applicant must amend the identification to identify more clearly the nature of each kit and to determine its appropriate classification, using the guidelines below.  See id.

 

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 of the majority of items in the kit.  For example, “nail care kits comprising nail polish, emery boards, cotton balls for cosmetic purposes and nail clippers” are in International Class 3 because this is the international class of a majority of the items (with the only item not in International Class 3 being “nail clippers,” which is in International Class 8).

 

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.”  For example, “baking kits comprising baking pan and cake mix” are in International Class 21 (the class for “baking pans”), and “baking kits comprising cake mix and baking pan” are in International Class 30 (the class for “cake mixes”).

 

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 of the product being made.  For example, “kits for making bird feeders” are in International Class 21 (the class for “bird feeders”), and “kits for making clocks” are in International Class 14 (the class for “clocks”).

 

An exception to the above guidelines is kits identified as “hobby craft kits,” which are classified in International Class 28 regardless of the items comprising the kit or the product made by the kit.  An identification for these kits must either list the items in the kit after the word “comprising” (e.g., “hobby craft kits comprising wood panels, paint, paintbrushes, nails) or specify the product being made (e.g., “hobby craft kits for making bird feeders”).

 

The applicant may clarify by amending to the following in International Class 001, if accurate:

 

“Nucleic acid amplification kits comprising {specify kit components, e.g., reagents, magnetic beads} for scientific research purposes.”

 

 

Please note that parentheses are not acceptable in the identification. TMEP §1402.12. Where indicated “{specify … },” the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods without parentheses.

 

For assistance with identifying and classifying goods 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.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below.

 

/Amy C. Kean/

Trademark Attorney

U.S. Patent & Trademark Office

P.O. 1451 Alexandria, VA 22313

Amy.Kean@USPTO.gov

Phone: 571-272-8854

 

 

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 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 6/19/2012 FOR

SERIAL NO. 85561285

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 6/19/2012 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.