SERIAL NUMBER: 88099571
DATE: 12/06/2018
NAME: dnitkin
NOTE:
From: Nitkin, Dinisha
Sent: Thursday, December 06, 2018 7:11 AM
To: 'Michael Hall' <mhall@kdbfirm.com>
Subject: RE: Five Trademark Applications Owned by SeLux Diagnostics, Inc.
Dear Michael,
Thank you for your email. To clarify, the diagnostic kits in Class 5 need to specify what is being tested, e.g.:
Class 5: Reagents for medical use; clinical medical reagents; diagnostic preparations for medical purposes; diagnostic test kits consisting primarily of medical diagnostic reagents, and also including chemicals, nucleic acid probes, antimicrobial agents, and containers, for use in {specify use, e.g., disease testing, microbial testing, testing the presence of drugs}; reagents and media for medical and veterinary diagnosis
Would you be able to provide me with this information today? If so, I can enter it, in addition to the disclaimers, as an Examiner’s Amendment. If you require more time, I can send an Examiner’s Amendment/Priority Action amending the applications to add the disclaimers, and requiring an ID amendment.
Thanks,
Dinisha Fernando Nitkin
/dfn/
Examining Attorney
Law Office 110
(571) 272-0212
dinisha.nitkin@uspto.gov
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
From: Michael Hall [mailto:mhall@kdbfirm.com]
Sent: Tuesday, December 04, 2018 6:13 PM
To: Nitkin, Dinisha <Dinisha.Nitkin@USPTO.GOV>
Subject: Five Trademark Applications Owned by SeLux Diagnostics, Inc.
Re: Five Trademark Applications Owned by SeLux Diagnostics, Inc.
Mark: SELUX
Serial No.: 88076123
Attorney Ref.: 8425.T0051
Mark:
Serial No.: 88099571
Attorney Ref.: 8425.T0054
Mark:
Serial No.: 88099614
Attorney Ref.: 8425.T0055
Mark: SELUXDX
Serial No.: 88076298
Attorney Ref.: 8425.T0052
Mark: SELUX DIAGNOSTICS
Serial No.: 88076345
Attorney Ref.: 8425.T0053
Dear Dinisha,
Thank you for your voicemail.
First, the applicant agrees to disclaim “DIAGNOSTICS” in Serial No. 88076345.
Second, you also mentioned the following wording in Class 5 in the identifications:
…; diagnostic test kits consisting primarily of medical diagnostic reagents, and also including chemicals, nucleic acid probes, antimicrobial agents, and containers; . . .
I believe this wording is acceptable because I drafted it based on TMEP Section 1401.05(a):
If the goods are kits around a particular theme, but the majority of components are secondary components, the identification should indicate that the kits are comprised "primarily" of specific components in a particular class and subsequently indicate that the kits are "also consisting of" the secondary items. The secondary components may be in a different class or classes from the primary component(s). In that case, the kits are classified in the class of the primary components, even if the primary components are not the majority of components in the kits.
In this case, please note that “medical diagnostic reagents” are acceptable and classified in Class 5 according to the ID Manual.
Please let me know if you have any additional questions.
Best,
Michael
Michael E. Hall | kdb
Counsel
101 Carnegie Center, Suite 106
Princeton, NJ 08540
o +1.609.270.4918
m +1.703.489.1944
mhall@kdbfirm.com | kdbfirm.com
Admitted in VA, DC
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