To: | StemCyte, Inc. (abufalino@vedderprice.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88064917 - STEMCYTE - 48609000012 |
Sent: | 12/18/2018 10:48:11 AM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88064917
MARK: STEMCYTE
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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: StemCyte, Inc.
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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: 12/18/2018
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(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
THIS PARTIAL REFUSAL APPLIES TO CLASSES 1 AND 5 ONLY
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
IDENTIFICATION OF GOODS AND SERVICES
The wording “Biomedical services, namely the collection, processing, analysis, screening, testing, typing and storage of human tissue, blood, blood components and stem cells” is indefinite because it does not clearly specify the nature of the services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, the nature of the “processing, analysis, screening, testing, typing…of human tissue, blood, blood components and stem cells” services offered by applicant is unclear. Further, the “storage of human tissue, blood, blood components and stem cells” is properly classified in International Class 39. Suggestions documented below.
In addition, the wording “reference and clinical laboratory services for others, namely the testing, screening and analysis of biological substances, human leukocyte antigen DNA and serological typing and blood typing” in the identification of services is indefinite and must be clarified because it does not clearly specify the nature of the reference services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Suggestions documented below.
The wording “biomedical, pathology and laboratory medicine consultation services for others” is also indefinite and must be clarified because it does not clearly specify the type of consulting services offered by applicant. Suggestions documented below.
Further, applicant must clarify the wording “providing advice on scientific and medical matters” in the identification of services in International Class 42 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the services are. Further, this wording could identify services in more than one international class. For example, “providing scientific advice in relation to medical science” are in International Class 42 and “providing medical advice in the field of medical care” are in International Class 44. Suggestions documented below.
Finally, the wording “professional interpretation and diagnosis in pathology and laboratory medicine” in the identification of services is indefinite and must be clarified because it does not clearly specify what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, it is unclear what is being interpreted or diagnosed. Suggestions documented below.
Applicant may adopt the following wording, if accurate (suggested changes in bold):
Class 1: Accepted as filed.
Class 5: Accepted as filed.
Class 35: Providing business advice on pre-clinical and clinical trials in compliance with the US Food and Drug Administration (FDA) approval process
Class 39: Biomedical services, namely, storage of human tissue, blood, blood components and stem cells
Class 40: Biomedical services, namely, umbilical cord blood processing for transplant
Class 42: Biomedical services, namely, the collection,
{moved to Class 44} processing, {moved to Class 40} analysis screening, {moved to Class 44} testing, {moved to
Class 44} typing {moved to Class 44} and storage {moved to Class 39} of human tissue, blood, blood components and stem cells for scientific research
purposes; medical reference laboratory services and clinical laboratory services for others featuring the testing, screening and analysis of biological substances, human
leukocyte antigen DNA and serological typing and blood typing; biomedical, pathology and laboratory medicine consultation services for others scientific research consulting in the
field of biomedicine, pathology, and laboratory medicine; providing scientific research advice on scientific and in relation
to medical matters science; providing advice in the field of design, planning, and implementation project management of on pre-clinical and clinical trials in compliance with and the FDA approval process
Class 44: Biomedical services, namely, the collection, medical screening, medical testing,
and medical typing of human tissue, blood, blood components and stem cells for diagnostic or treatment purposes; providing medical consulting services in the field of biomedicine, pathology and
laboratory medicine; providing medical advice in the field of medical care; professional interpretation and diagnosis of disease based on
in professional interpretation of pathology and laboratory medicine results
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.
MULTIPLE-CLASS APPLICATION – ADVISORY
(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least seven classes; however, applicant submitted a fee(s) sufficient for only three class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 39, 40, 42, and 44; and applicant needs a specimen for classes 1, 5, and 35 See more information about specimens.
As stated above, examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Chioma (Bata) Oputa/
Examining Attorney
Law Office 103
(571) 272-5234
chioma.oputa@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.