To: | Sysmex Corporation (officeactions@brinksgilson.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88037164 - CN-COAGWASHER - 11333 |
Sent: | 10/5/2018 6:13:36 PM |
Sent As: | ECOM124@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88037164
MARK: CN-COAGWASHER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sysmex Corporation
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 10/5/2018
SEARCH RESULTS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
The identification of goods must be amended because some of the wording is indefinite.
The wording “Pharmaceutical, veterinary and sanitary preparations” in the identification of goods is indefinite and must be clarified because the function or purpose of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Veterinary pharmaceutical preparations for the treatment of {specify disease to be treated}; sanitary sterilizing preparations.”
The wording “chemical preparations” in the identification of goods is indefinite and must be clarified because the function or purpose of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Chemical preparations for medical or veterinary purposes, namely, for {specify disease or condition to be prevented or treated or the health goal to be achieved}.”
The wording “testing reagents and preparations; reagents for blood analysis; reagents for blood coagulation analysis” in the identification of goods is indefinite and must be clarified because the type of reagents and preparations and their purposes are unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Medical diagnostic reagents and assays for testing of body fluids; Medical diagnostic reagents for the analysis of body fluids.”
To address the issues discussed above, applicant may adopt any or all of the following identification of goods, if accurate. Suggested changes are indicated in bold, strikethrough, and underlined fonts.
International Class 3: Cleaning preparations for medical instruments; detergents for medical instruments use; detergents for diagnostic and testing apparatus; detergents for blood analyzing apparatus; detergents for blood coagulation analyzing apparatus; cleaning solutions for medical instruments use; cleaning solutions for diagnostic and testing apparatus; cleaning solutions for blood analyzing apparatus; cleaning solutions for blood coagulation analyzing apparatus; cleaning preparations for medical instruments use; cleaning preparations for diagnostic and testing apparatus; cleaning preparations for blood analyzing apparatus; cleaning preparations for blood coagulation analyzing apparatus; cleansing solutions for medical instruments use; cleansing solutions for diagnostic and testing apparatus; cleansing solutions for blood analyzing apparatus; cleansing solutions for blood coagulation analyzing apparatus.
International Class 5: Pharmaceutical, veterinary
and sanitary preparations Veterinary pharmaceutical preparations for the treatment of {specify disease to be treated}; sanitary sterilizing
preparations; diagnostic reagents and diagnostic preparations for medical or veterinary use; chemical reagents and chemical preparations for medical or veterinary purposes, namely, for {specify disease or condition to be prevented or treated or the health goal to be achieved}; chemical reagents and chemical preparations for pharmaceutical
purposes, namely, for {specify disease or condition to be prevented or treated or the health goal to be achieved}; testing reagents and
preparations Medical diagnostic reagents and assays for testing of body fluids; reagents for blood analysis Medical
diagnostic reagents for the analysis of body fluids; reagents for blood coagulation analysis Medical diagnostic reagents for the analysis of
body fluids, namely, blood coagulation analysis; detergents for medical purposes; nasal cleaning solutions for medical purposes.
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. See TMEP §1402.04.
SIGNATURE AND VERIFICATION REQUIRED
The application was unsigned, resulting in the application not being properly verified. See 37 C.F.R. §§2.2(n), 2.33(a)-(b), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1). Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §§2.2(n), 2.33(a)-(b), 2.34(a)(1)(i), (a)(2), (a)(3)(i), (a)(4)(ii), 2.193(e)(1); TMEP §804.02.
To respond to this requirement online using the Trademark Electronic Application System (TEAS) response Office action form, answer “yes” to the TEAS response form wizard question #10, and follow the instructions within the form for signing. The TEAS online form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section. For more information about a signed declaration and required verified statement and how to provide them using TEAS, please go to http://www.gov.uspto.report/trademark/laws-regulations/verified-statement.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
INFORMATION REQUIREMENT
(1) Explain whether the wording in the mark “CN” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, or if such wording is a term of art within applicant’s industry.
(2) Explain whether the wording in the mark “CN” identifies a geographic place.
(3) Respond to the following questions:
- Is “CN” an abbreviation? If so, what does it stand for?
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Assistance
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/April Reeves/
April E. Reeves
Examining Attorney
Law Office 124
571-272-3681
april.reeves@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.