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: 12/4/2012

 

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.

 

Search Results

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

Identification and Classification of Goods

 

     Class 009

 

The applicant identified its goods as “Electrical and scientific apparatus, namely, machines sold as a unit, for use in medical laboratories for the automatic processing of clinical specimens; preparation of microscope slides and of samples for testing; robotic handling of clinical specimen; automatic image analysis.”

 

The wording “preparation of microscope slides and of samples for testing” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.   It is unclear whether the wording applies to goods or services.  The service of “laboratory testing services, namely preparation of microscope slides and of samples for testing” is in Class 042.

 

The wording “robotic handling of clinical specimen; automatic image analysis” in the identification of goods is indefinite and must be clarified to further specify the nature of the goods.  See TMEP §1402.01.

 

     Class 010

 

The applicant identified its goods as “Medical devices, namely, machines sold as a unit, for use in medical laboratories for the automatic processing of clinical specimens; preparation of microscope slides and of samples for testing; robotic handling of clinical specimen; automatic image analysis.”

 

The wording “preparation of microscope slides and of samples for testing” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See TMEP §§1402.01, 1402.03.  It is unclear whether the wording applies to goods or services.  The service of “medical testing services, namely preparation of microscope slides and of samples for testing for diagnostic or treatment purposes” is in Class 044.

 

The wording “robotic handling of clinical specimen; automatic image analysis” in the identification of goods is indefinite and must be clarified to further specify the nature of the goods.  See TMEP §1402.01.

 

The applicant may adopt the following if accurate:

 

Class 009:        Electrical and scientific apparatus, namely, machines sold as a unit, for use in medical laboratories for the automatic processing of clinical specimens; LABORATORY ROBOTS FOR robotic handling of clinical specimen; IMAGING APPARATUS USED FOR automatic image analysis FOR USE IN THE STUDY OF _____ (SPECIFY WHAT IS BEING STUDIED) FOR ______ (SPECIFY THE PURPOSE) PURPOSES

 

Class 010:        Medical devices, namely, machines sold as a unit, for use in medical laboratories for the automatic processing of clinical specimens; robotic handling of clinical specimen; MEDICAL IMAGE PROCESSING FOR automatic image analysis FOR DIAGNOSTIC OR TREATMENT PURPOSES

 

Class 042:        LABORATORY TESTING SERVICES, NAMELY PREPARATION OF MICROSCOPE SLIDES AND OF SAMPLES FOR TESTING

 

Class 044:        MEDICAL TESTING SERVICES, NAMELY PREPARATION OF MICROSCOPE SLIDES AND OF SAMPLES FOR TESTING FOR DIAGNOSTIC OR TREATMENT PURPOSES

 

Identifications of goods can be amended 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.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Requirements for Combined Applications – 1(a)

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        Applicant must list the goods/services by international class;

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of goods and/or services, applicant must submit:

 

(a)        Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class.  The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;

 

(b)        One specimen showing the mark in use in commerce for each class of goods and/or services.  The specimen must have been in use in commerce at least as early as the filing date of the application.  If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.;

 

(c)        The following statement:  “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and

 

(d)       Verification of the statements in 3(a) and 3(c) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

With respect to the requirement in 3(b) above for a specimen for each class of goods and/or services, please note that the specimen(s) of record is acceptable for International Class(es) 009 and 010 only.  Applicant must submit additional specimens if other classes are added to the application.

 

Fee for Adding Additional Classes

 

The filing fee for adding classes to an application is as follows:

 

         (1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

 

         (2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

 

The applicant has paid for 2 Classes.

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

/Christina Sobral/

Christina Sobral

Trademark Attorney

Law Office 109

571.272.5703

Christina.Sobral@uspto.gov

 

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 12/4/2012 FOR

SERIAL NO. 85697504

 

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 12/4/2012 (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.