NOTE TO THE FILE
SERIAL NUMBER: 87527464
DATE: 10/12/2017
NAME: ccahill
NOTE:
Searched: Discussed ID with:
Google Senior Atty
Lexis/Nexis Managing Atty
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked: Discussed Geo. Sig. with:
Geographic significance Senior Atty
Surname Managing Atty
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
X 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:HI Clare,
Thanks for reaching out by email. The changes are fine but I think there is an “s” missing from “parts and attachments therefor” in both classes.
Best regards,
Larry
Lawrence R. Robins
Attorney at Law
Sullivan & Worcester LLP
One Post Office Square • Boston, MA 02109
T 617 338 2803
F 617 338 2880M 617 803 7040
lrobins@sandw.com
www.sandw.com
From: Cahill, Clare [mailto:Clare.Cahill@USPTO.GOV]
Sent: Wednesday, October 11, 2017 4:17 PM
To: Robins, Lawrence R.; Trademark
Subject: Trademark Application No. 87527464
Dear Mr. Robins,
I am the US Patent and Trademark Office attorney assigned to Trademark Application No. 87527464 for THINPREP. I am writing to request your approval to amend the identification of goods by Examiner’s Amendment.
The wording “electronic imaging and image processing apparatus for use in the field of cytology and molecular diagnostics, and part and attachments therefor” in Class 9 is overly broad. This wording may encompass medical imaging apparatus in Class 10 or non-medical imaging apparatus in Class 9 (for example, scientific research or laboratory imaging apparatus). I realize that your client has a prior registration with the same identification; however, that registration is quite old and identification requirements change over time. Since your client’s application already contains both classes, I recommend the following changes in bold, if accurate:
Class 9: Computer hardware and software for use in the detection and diagnosis of cancer and other diseases; microscopes for use in the detection and diagnosis of cancer and other diseases; electronic imaging and image processing apparatus for use in the field of cytology and molecular diagnostics not for medical use, and part and attachments therefor
Class 10: Medical apparatus, namely, microscopic slide processing and imaging apparatus comprising computer hardware, computer software, and microscopes for use in the detection, diagnosis, and treatment of cancer; electronic medical imaging and image processing apparatus for use in the detection, diagnosis, and treatment of cancer and parts and attachments therefor; medical testing kits comprising catheters, slides, stains, reagents, collection vials, filters, and cervical sampling devices and solutions for use in the detection and diagnosis of cancer and infectious diseases; medical electronic imaging and image processing apparatus for use in the field of cytology and molecular diagnostics, and part and attachments therefor
The identification of goods in Class 1 does not require any changes. Please let me know if you approve.
Thanks,
Clare
Clare Cahill
Examining Attorney
Law Office 120
571-272-5218