NOTE TO THE FILE
SERIAL NUMBER: 87385181
DATE: 12/15/2017
NAME: dmayer
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: David Rodrigues [mailto:drodrigues@grr.com]
Sent: Friday, December 15, 2017 10:14 AM
To: Mayer, David <David.Mayer@USPTO.GOV>
Subject: RE: U.S. Trademark App. 87385181 (DELPET) - Proposed Examiner's Amendment
Dear Mr. Mayer,
Following-up on our call yesterday and the email below, the client has accepted your proposed amendments to the Class 9 identification of goods. Please proceed with an Examiners amendment reflecting the amended identification.
Please let me know if you need anything else.
Best Regards,
David D. Rodrigues
D: (646) 813-3556 | O: (212) 684-3900
270 Madison Avenue
New York, New York 10016
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From: Mayer, David [mailto:David.Mayer@USPTO.GOV]
Sent: Thursday, December 14, 2017 11:02 AM
To: David Rodrigues
Cc: efiling
Subject: U.S. Trademark App. 87385181 (DELPET) - Proposed Examiner's Amendment
Dear Mr. Rodrigues,
Thank you for taking the time to speak with me this morning regarding your client’s pending U.S. Trademark application, Serial No. 87385181, for the standard character mark DELPET. As we discussed on the call, while most of your proposed amendments to the identification of goods in Class 9 are acceptable, there are two entries which remain indefinite. Specifically, “apparatus and installations for the production of X-rays not for medical purposes, namely, X-ray tubes, high-voltage transformers, current knob, voltage knob, directional X-ray assemblies, panoramic X-ray assemblies, gamma ray projectors, X-ray gauge and timers, all the forgoing are not for medical purpose” and “testing apparatus for the composition, physical strength, assembling quality, metallography flaw, welding or manufacturing defects of electronic components, solid batteries, and semiconductor chip packages.”
The former remains indefinite because it is unclear whether most of the listed components are sold separately or are components of the named “assemblies” (which also raises a potential scope issue) – some of the components would be classified elsewhere if not part of a larger system. In the latter, the nature of the “electrical components” being tested must be specified – the Office doesn’t require a full listing but does need at least the general types of components. Also, I propose re-wording the listing for clarity.
I propose amending the identification as follows, if accurate (with the amended entries in red/bold):
International Class 9: X-ray apparatus not for medical purposes; X-ray tubes not for medical purposes; radiological apparatus for industrial purposes, namely, radiological imaging rendering processors not for medical purpose, port security x-ray scanners for scanning shipping freight, x-ray full body security scanners not for medical purpose, x-ray scanners for metallography analysis, 2D and 3D x-ray scanning inspectors for factory production process, computed tomography (CT) instruments for scanning internal structure of electronic components and composition of semiconductor package, portable x-ray scanner for security inspection, radiological generators for food irradiation treatment; Apparatus and installations for the production of X-rays, not for medical purposes, namely, directional and panoramic x-ray assemblies consisting of x-ray tubes, gamma ray projectors, high-voltage transformers, current knobs, voltage knobs, X-ray gauges and timers; Metal textile, metal strength, metal founding flaw, and alloy composition testing instruments and machines; Apparatus for testing for composition, physical strength, assembling quality, metallographical flaws, welding defects, and manufacturing defects of electrical components of radiological apparati, solid batteries, and semiconductor chip packages; Computed tomography (CT) scanners not for medical use; Computer software for processing and displaying radiologic images rendered from the afore-mentioned industrial radiological scanning instruments; Image display instruments for medical use, namely, stand alone displays for medical images
International Class 10: Apparatus and installations for the production of X-rays for medical purposes; Tomographs for medical purposes; Micro computed tomography (CT) scanning instrument for medical use; X-ray tubes for medical purposes; Mesh Nebulizers for medical purposes; Aerosol dispensers for medical purposes; inhalers for medical use; Radiological apparatus for medical purposes; Medical image processors; computer image displays and image processors being devices used in direct association with medical radiological apparatus during diagnosis and treatment; Computed tomography (CT) scanners for medical industry use
I would be happy to discuss the application further if you have any questions, concerns, or alternative language to discuss. As I noted on the call, if we cannot reach a resolution I will need to issue an Office action, but we have until the end of the year before I need to act.
Best regards,
David C. Mayer
Trademark Examining Attorney
Law Office 121
(571) 270-3773