To: | Scapa Group plc (anotaro@notaromichalos.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85914383 - BIOFLEX - J318-353 |
Sent: | 4/16/2015 2:27:39 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85914383
MARK: BIOFLEX
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CORRESPONDENT ADDRESS: NOTARO, MICHALOS & ZACCARIA P.C. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Scapa Group plc
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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: 4/16/2015
The undersigned has reviewed the response filed on March 28, 2015, and determined the following. The refusal under Section 2(d) of the Trademark Act as it pertains to Registration No. 3265415 is MAINTAINED AND CONTINUED.
IDENTIFICATION OF GOODS REQUIREMENTS
THIS REQUIREMENT APPLIES TO CLASS 5 ONLY.
The goods in international class 5 in the U.S. application exceed the scope of goods in the foreign registration because it is not modified by the phrase “none of the aforesaid being ophthalmic products or having ophthalmic applications” which appears in the foreign registration.
Therefore, applicant may respond by either:
(1) amending the identification of goods in the U.S. application to correspond to the goods identified in the foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) deleting the Trademark Act Section 44 basis for the goods beyond the scope of the foreign registration and relying solely on the Section 1 basis for those goods.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b)(1)-(2), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1402.01(b).
Additionally, applicant may respond by arguing that these goods and/or services should remain in the U.S. application.
/Khanh M. Le/
Trademark Examining Attorney
Law Office 116
U.S Patent & Trademark Office
Khanh.Le@USPTO.gov
(571) 272-9435
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.