To: | GenomeDx Biosciences Inc. (svtmdocketing@sheppardmullin.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85794477 - G3 - 31ES-168004 |
Sent: | 3/22/2013 5:09:18 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85794477
MARK: G3
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: GenomeDx Biosciences Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/22/2013
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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).
Trademark Act Section 2(e)(1) - Registration of Merely Descriptive Mark Refused
Applicant seeks registration of G3 for “Scientific laboratory testing and reporting services for staging and grading in prostate cancer based on molecular signatures” and “providing medical testing and reporting services for staging and grading in prostate cancer based on molecular signatures.”
The designation “G3” is commonly used to identify a particular stage of prostate cancer where the cells of the tumor are poorly differentiated. See attached from http://www.cancer.gov/cancertopics/factsheet/detection/tumor-grade (“Based on the microscopic appearance of cancer cells, pathologists commonly describe tumor grade by four degrees of severity: Grades 1, 2, 3, and 4. The cells of Grade 1 tumors resemble normal cells, and tend to grow and multiply slowly. Grade 1 tumors are generally considered the least aggressive in behavior”). See also the following, showing G3 used to identify a stage of prostate cancer: http://radiopaedia.org/articles/gleason-score, http://www.phoenix5.org/staging.html,
http://www.huntsmancancer.org/cancer-information/cancer-types-and-topics/prostate-cancer, http://www.encyclopedia.com/topic/prostate_cancer.aspx and http://www.bidmc.org/Centers-and-Departments/Departments/Cancer-Center/Our-Specialty-Programs/ProstateCancerCenter/Diagnosing-Prostate-Cancer/Cancer-Grading-and-Stages.aspx.
As used in connection with the identified services, the term “G3” could describe that the testing and reporting is for determining the stage and/or grade of prostate cancer, and whether the tumor cells are Grade 3. See applicant’s identification, which describes the services as for “staging and grading in prostate cancer.”
Thus, the applied-for mark is merely descriptive and registration is refused on the Principal Register under Section 2(e)(1) of the Trademark Act.
Advisory – Amendment to Allege Use and Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant must respond to the requirement set forth below.
Additional Information Required
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the services. Merely stating that information about the services is available on applicant’s website is insufficient to make the information of record.
If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ. If the services feature new technology and information regarding competing services is not available, applicant must provide a detailed factual description of the services. The factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement; and
(2) Applicant must respond to the following questions: whether the testing services are used to determine the stage of prostate cancer; and whether the testing services are used to determine the level of differentiation of the cells of a prostate cancer tumor.
See 37 C.F.R. §2.61(b); In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.
Failure to respond to this request for information can be an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
Response Guidelines
April K. Roach
Trademark Examining Attorney
Law Office 115
(571) 272-1092
april.roach@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.