Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

SUSPENSION NOTICE: NO RESPONSE NEEDED

 

ISSUE/MAILING DATE: 6/5/2019

 

This Suspension Letter is in response to applicant’s communication filed on May 16, 2019.

 

In a previous Office Action(s) dated December 06, 2018, applicant was required to satisfy the following requirements: (1) amend the identification of services and (2) provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  Applicant was also advised that the mark in pending Application Nos. 87554737 (APTIVA) may present a potential bar to the registration of applicant’s mark.  

 

In response to the requirements, applicant amended the identification of goods; however, as amended, the proposed identification is still indefinite and needs to be clarified.  Meanwhile, the referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark. Applicant also requested that the application be suspended to await the submission of the foreign registration. 

 

Therefore, the trademark examining attorney is suspending action on the application for the reason(s) stated below.  See 37 C.F.R. §2.67; TMEP §§716 et seq. 

 

FOREIGN REGISTRATION:  Applicant is required to provide a true copy, a photocopy, a certification, or a certified copy of a foreign registration from applicant’s country of origin that will be in force at the time the United States registration issues.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii)-(iii); In re Societe D’Exploitation de la Marque Le Fouquet’s, 67 USPQ2d 1784, 1788-89 (TTAB 2003); TMEP §§1003.04(a)-(b), 1004.01, 1004.01(a).  Action on this application is suspended until the USPTO receives a copy of such foreign registration or proof of its renewal.  TMEP §§716.02(b), 1003.04(a)-(b), 1004.01(a).  If the foreign registration or renewal document is not in English, applicant must provide an English translation.  37 C.F.R. §2.34(a)(3)(ii)-(iii); TMEP §1004.01(b).  Further, applicant should notify the trademark examining attorney in the event that the foreign application abandons or the foreign registration is not renewed.  See TMEP §§1003.08, 1004.01(a).  In such case, applicant may amend the application to rely on another basis, if appropriate, and will retain the priority filing date, if applicable.  TMEP §§1003.08, 1004.01(a).

 

REQUIREMENT CONTINUED AND MAINTAINED:  

REQUIREMENT – IDENTIFICATION OF GOODS

 

In response to this requirement, applicant amended the identification only to limit to scope of the goods in all three international classes.  However, the wording “all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and research use and not for use in connection with detecting nucleic acid” is still indefinite and needs to be clarified because it does not identify the specific medical condition or deceases being treated.   Therefore, the requirement to clarify the identification of goods is continued and maintained.   

 

As noted in the previous Office action, the wording “chemical products for scientific purposes” in International Class 01 and “pharmaceutical and veterinary products” in International Class 05 is indefinite and must be clarified because it does not identify the goods with sufficient specificity.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify either the common generic name of each product or describe the more specific nature, purpose, and/or intended use of each product.  See TMEP §§1402.01, 1402.03. 

 

The wording “reagents” in the identification of goods for International Class 01 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass reagents for use in connection with a fluorescence multi-analyte immunoassay system for research use in Class 01 and reagents for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic use in Class 05. Therefore, applicant must amend the identification to specify the exact nature of the goods and [re]classify accordingly.

 

The wording “clinical diagnostic assays for medical purposes” in Class 05 in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to further identify the specific medical condition or deceases being treated.  See TMEP §1402.01. 

 

The wording “apparatus and instruments for laboratory analysis and medical diagnosis” in the identification of goods for International Class 10 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, apparatus and instruments for laboratory use are classified in Class 09 and apparatus and instruments for medical purposes are Class 10 products.  Therefore, applicant must amend the identification to specify the exact nature of the goods and [re]classify accordingly.

 

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.

 

Applicant may adopt the following identification, if accurate [changes are shown in bold typeface]: 

 

CLASS 01 – “Chemical products for scientific purposes, namely, _____ [list specific Class 01 goods, e.g., chemical preparations for scientific purpose]; reagents for scientific and research use; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for research use and not for use in connection with detecting nucleic acid;”

 

CLASS 05 – “Pharmaceutical and veterinary products, namely, _____ [list specific Class 05 goods, e.g., reagent paper for veterinary purposes]; Clinical diagnostic assays for medical purposes, namely, for _____ [list specific medical purpose, e.g., for testing of body fluids]; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and medical research use and not for use in connection with detecting nucleic acid;” and

 

CLASS 09 [New Class] – “Apparatus and instruments for laboratory analysis, namely, for use in connection with a fluorescence multi-analyte immunoassay system for research use and not for use in connection with detecting nucleic acid;”

 

CLASS 10 – “Apparatus and instruments for medical diagnosis, namely, for _____ [list specific medical purpose, e.g., for testing of body fluids]; all of the foregoing for use in connection with a fluorescence multi-analyte immunoassay system for medical diagnostic and medical research use and not for use in connection with detecting nucleic acid”

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

ADVISORY – MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

As just discussed above, the application identifies goods that could be classified in at least four (4) classes; however, applicant submitted fees sufficient for three classes. Therefore, applicant must satisfy all the requirements below for each additional international class added to the application based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Again, application identifies goods that could be classified in at least four classes; however, applicant submitted fees sufficient for three classes only.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.  The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP §§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.

 

RESPONSE GUIDELINES: No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.

 

 

 

/Miroslav Novakovic/

Trademark Examining Attorney

Law Office 108

(571) 272-2866

miroslav.novakovic@uspto.gov

 

 

 

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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/5/2019 FOR U.S. APPLICATION SERIAL NO.88071814

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.