NOTE TO THE FILE
SERIAL NUMBER: 87948687
DATE: 09/25/2018
NAME: bsarpu
NOTE:
Searched:
X Google
X Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
X 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 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:From: Bowman, Michele H [mailto:michele.bowman@abbott.com]
Sent: Tuesday, September 25, 2018 2:01 PM
To: McCarthy, Bridget <Bridget.McCarthy@USPTO.GOV>
Cc: Duax, Denise M <denise.duax@abbott.com>
Subject: RE: USPTO Correspondence Ser. No. 87948687, SYMPHEOS
Hi Bridget,
Thank you for this explanation. We can just add Class 41 and forego Class 9. Please go ahead with the Examiner’s Amendment and issue the priority action for Class 41 fees.
Best regards,
Michele
Michele H. Bowman
Sr. Counsel, Trademarks
Patent & Trademark Department
Abbott
100 Abbott Park Road
Abbott Park, IL 60064
O:
224.668.1246
M:
847.393.6363
This communication may contain information that is attorney-client privileged, attorney work product, proprietary, confidential, or exempt from disclosure. If you are not the intended recipient, please note that any other dissemination, distribution, use or copying of this communication is strictly prohibited. Anyone who receives this message in error should notify the sender immediately by telephone or by return e-mail and delete it from his or her computer.
From: McCarthy, Bridget [mailto:Bridget.McCarthy@USPTO.GOV]
Sent: Tuesday, September 25, 2018 12:55 PM
To: Bowman, Michele H <michele.bowman@abbott.com>
Subject: RE: USPTO Correspondence Ser. No. 87948687, SYMPHEOS
Hi Michele,
Thank you for your response.
So the thing about downloadable and non-downloadable instruction sheets and operating manuals is they are classified in two different classes. This is not a problem, we can certainly add the classes but basically when dealing with downloadable publications, applicant is actually offering a good, where as when applicant offers non-downloadable publications through a website that is actually a service.
Therefore, if applicant is doing both, I would propose the following:
Class 009: Downloadable instruction sheets and operating manuals for in vitro diagnostic instruments, laboratory automation systems, and related software
Class 041: : Providing a website featuring non-downloadable instruction sheets and operating manuals for in vitro diagnostic instruments, laboratory automation systems, and related software
Here, we would need to add two classes which would require two additional fees. This can easily be done by Examiner’s Amendment where we add the classes and a Priority Action where you would pay for the additional fees. Please let me know how you wish to proceed.
Thanks,
Bridget
__________________________________
Bridget A. McCarthy
Examining Attorney, Law Office 125
United States Patent and Trademark Office
(571)272-3223
From: Bowman, Michele H [mailto:michele.bowman@abbott.com]
Sent: Tuesday, September 25, 2018 1:34 PM
To: McCarthy, Bridget <Bridget.McCarthy@USPTO.GOV>
Cc: Duax, Denise M <denise.duax@abbott.com>
Subject: FW: USPTO Correspondence Ser. No. 87948687, SYMPHEOS
Hi Bridget,
Thank you for your email. On the first point, we can amend to: ”Providing remote electronic troubleshooting services in the nature of diagnosing problems with medical diagnostic instruments and software for laboratories in the field of in vitro diagnostics”.
For the second point, can we include both downloadable and non-downloadable instruction sheets and operating manuals?
Best regards,
Michele
Michele H. Bowman
Sr. Counsel, Trademarks
Patent & Trademark Department
Abbott
100 Abbott Park Road
Abbott Park, IL 60064
O:
224.668.1246
M:
847.393.6363
This communication may contain information that is attorney-client privileged, attorney work product, proprietary, confidential, or exempt from disclosure. If you are not the intended recipient, please note that any other dissemination, distribution, use or copying of this communication is strictly prohibited. Anyone who receives this message in error should notify the sender immediately by telephone or by return e-mail and delete it from his or her computer.
From: TRADEMARKS
Sent: Tuesday, September 25, 2018 9:00 AM
To: Duax, Denise M <denise.duax@abbott.com>
Subject: FW: USPTO Correspondence Ser. No. 87948687, SYMPHEOS
From: McCarthy, Bridget [mailto:Bridget.McCarthy@USPTO.GOV]
Sent: Tuesday, September 25, 2018 7:52 AM
To: TRADEMARKS <Trademarks@abbott.com>
Subject: USPTO Correspondence Ser. No. 87948687, SYMPHEOS
Good morning Michele,
I am the examining attorney assigned to the above-referenced trademark application. I have completed my initial examination of the mark and have found a few issues with the identification of goods and services.
First, the wording “Providing remote electronic troubleshooting services for laboratories in the field of in vitro diagnostics;” is unclear and we need more information to clarify what applicant is actually troubleshooting. Simply put, we need to know if applicant is diagnosing problems in International Class 42 or repair problems in International Class 37. It may be OK to infer that applicant is diagnosing because it’s services state that they are remote. But we then need to figure out what applicant is diagnosing? Software problems? Electronics problems? Hardware problems etc. etc.
Thus, applicant must clarify further what they are diagnosing. I propose the following: Providing remote electronic troubleshooting services in the nature of diagnosing problems with {specify, e.g. medical equipment, computer hardware and software problems} for laboratories in the field of in vitro diagnostics
Second, the entry “Providing a website featuring instruction sheets and operating manuals for in vitro diagnostic instruments, laboratory automation systems, and related software” appears to be misclassified and this should be a Class 041 service. We also need to make clear whether these instruction sheets are non-downloadable or downloadable. It appears based on the wording that applicant provides a website with non-downloadable instruction sheets and operating manuals.
I propose the following: Providing a website featuring non-downloadable instruction sheets and operating manuals for in vitro diagnostic instruments, laboratory automation systems, and related software
If you do accept the above amendment then we also need to reclassify this entry into Class 041 and you will be required to pay for an additional International Class. I can send this requirement to you via a Priority Action. Please let me know how you wish to proceed. I do need to hear back from you by the end of the week, otherwise, I will issue an Office Action requiring the above.
If you have any other questions, please let me know.
Best,
Bridget
__________________________________
Bridget A. McCarthy
Examining Attorney, Law Office 125
United States Patent and Trademark Office
(571)272-3223