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: 4/22/2014

 

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, 2.65(a); TMEP §§711, 718.03.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The examining attorney finds International Classes (005, 035, 036, and 042) acceptable as amended.

 

The examining attorney has found additional clarifications and amendments must be made to the identification of goods and services, as well as International Classification clarifications are needed.  Although, several of the following identification issues are maintained and continued from the earlier issued office action dated,  September 26, 2013.

 

The wording, as set forth below, in the identification of goods and services is indefinite and must be clarified as indicated.  See TMEP §1402.01.  All wording within the identifications of goods and services not shown below will be maintained within the identifications.

 

Applicant may change the relevant wording shown below, if the clarifications are accurate.  See TMEP §1402.01.

 

 

International Class 001:

 

Applicant must delete the duplicate wording, “biomedical compounds, namely, substrates used in analyzing and detecting certain toxins for laboratory or research use.”

 

Further, applicant must identify the substrate indicated in the language above, e.g., peptide substrates, metal substrates, etc.

 

001	Biomedical compounds, namely, peptide substrates used in analyzing and detecting certain toxins for clinical or medical laboratory use
001	Biomedical compounds, namely, peptide substrates used in analyzing and detecting certain toxins for laboratory or research use

 

 

International Class 009: Applicant must specify the mobile electronic device, e.g., {specify type of device in Class 9, e.g., mobile phones, tablet computers, etc.}.  Applicant has not identified the device; applicant has only provided the function of the device.  If applicant’s electronic device has a medical use then it may need to be identified in International Class 010.

 

009	Electronic devices, namely, energy meters for tracking and monitoring energy usage
010		Non-invasive electronic neuromodulator device for medical use by healthy and impaired persons to enhance performance on cognitive tasks

 

 

International Class 010:  Applicant’s identification makes two separate references to a diagnostic apparatus.  Applicant identifies, a diagnostic apparatus for the detection of a wide variety of diseases.  Similarly, the other reference applicant amended medical diagnostic apparatus to medical diagnostics apparatus for diagnosing a wide variety of physical conditions and diseases. In both instances, the language is too broad and indefinite; applicant must indicate either the actual apparatus or indicate what specifically is being detected or the specific use of the apparatus, please see below.  The examining attorney provides examples below from the ID Manual.

 

010	Diagnostic apparatus for the detection of periodontal disease
010	Diagnostic apparatus for the detection of cancer

 

010	MRI diagnostic apparatus
010	Medical diagnostic apparatus for detecting cancer
010	Ultrasonic medical diagnostic apparatus
010	Medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing
010	Medical apparatus and instruments for diagnostic radiopharmaceutical use

 

International Class: 039: In regard to Biomedical services, namely, storage of medical data, applicant must specify the means of storage.  If the storage is physical then applicant must indicate the storage is physical.  Otherwise, applicant must indicate the storage is electronic and amend to International class 042.

 

039	Physical storage of electronically-stored data or documents
042	Electronic data storage

 

International Class 044: Applicant has amended the language health assessment services to health assessment services, namely detection of a wide variety of diseases and physical conditions.  Applicant must indicate how the health is assessed, please see examples below.  Applicant has amended to only indicate what is being detected, not how it is being detected.

 

044	Health assessment services, namely, providing a database in the field of sleep apnea and home sleep testing diagnostic information based on collected data and information all for treatment and diagnostic purposes
044	Health assessment services, namely, providing metabolic assessment profiles (MAP) to clients obtained by using a portable metabolic measurement system in the nature of a unique, heart-rate based overview of their own metabolism in order to assist in reaching weight loss, sports performance, health, fitness, and wellness-related goals

 

 

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

 

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.

 

 

 

/C. Dionne Clyburn/

C. Dionne Clyburn

Law Office 110

571-272-9358

dionne.clyburn@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/22/2014 FOR U.S. APPLICATION SERIAL NO. 85960709

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 4/22/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.