To: | Eckert & Ziegler Nuclitec GmbH (docketing@mendelip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85905393 - C-THRU - SSM-1002US |
Sent: | 12/23/2013 9:14:32 AM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85905393
MARK: C-THRU
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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: Eckert & Ziegler Nuclitec GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FINAL 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: 12/23/2013
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on December 2, 2013. In the foregoing communication, the applicant provided an amended identification of goods in International Class 9, added an identification of goods in International Class 10 with a substitute specimen and paid for an additional class of goods.
The substitute specimen and payment for additional class of goods are accepted and entered into the record.
Based on applicant’s response, the requirement for acceptable identification(s) of goods is now made FINAL for the reasons set forth below. 37 C.F.R. §§2.64(a), 2.71(a); see TMEP §§1402.06 et seq., 1402.07.
Identification Of Goods – International Class 9
The proposed amendment to the identification cannot be accepted in its entirety, because the following wording refers to goods and/or services that are not within the scope of the identification that was set forth in the application at the time of filing: “Radioactive sources, namely radioactive apparatus and radiology screens for industrial purposes; radioactive sources, namely X-ray or gamma ray apparatus not for medical purposes; radioactive sources, namely apparatus and installations for the production of X-rays or gamma rays, not for medical purposes; radioactive sources, namely flood sources for quality control on cameras.” See 37 C.F.R. §2.71(a). This wording is beyond the scope of the original wording because the original identification limited the goods to radioactive sources for the calibration of medical equipment. All of the identified goods must be for medical equipment calibration to fall within the scope of the original identification.
While an applicant may clarify or limit the identification of goods and/or services, adding to or broadening the scope is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, this wording cannot be accepted, the identification will not be amended to include these items, and the previous items in the existing identification not altered by this amendment remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
Additionally, the nature of the “reference radiation sources and flood sources” must be described with additional information for proper classification. Energy, such as radioactive energy, is classified in International Class 4, regardless of its purpose. If the energy is an integral component of a medical device, then the goods are classified in International Class 10, and if the energy is an integral component of a measuring device, it is generally classified in International Class 9.
The applicant may adopt the following, if accurate:
Radioactive sources for the calibration of medical equipment, namely, reference radiation sources and flood sources in the nature of radiation energy sold as a component part of calibration apparatus for use in calibration of medical imaging instruments in International Class 9; and/or.
Radioactive sources for the calibration of medical equipment for purposes of medical diagnostics and treatment, namely, reference radiation sources and flood sources in the nature of radiation energy sold as a component part of a calibration instrument for use in calibration of medical imaging instruments for purposes of medical diagnostics and treatment in International Class 10.
Additions To Identification Not Permitted
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
CONCLUSION
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Andrea Koyner Nadelman/
Andrea Koyner Nadelman
Trademark Examining Attorney
Law Office 110
571-272-9370
andrea.nadelman@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.