UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
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: 2/11/2019
The referenced application has been
reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue 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).
ISSUE TO BE ADDRESSED
- Identifications of Goods and Services Require Amendment
IDENTIFICATIONS OF GOODS AND SERVICES REQUIRE AMENDMENT
The wording used to describe portions of the applicant’s goods and services needs clarification because it is indefinite and could include goods and services in multiple
international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The identifications of goods services are unacceptable for the following reasons:
- In Class 1, the wording “energy conversion” is indefinite, because the nature of the goods is unclear. Applicant must amend this wording to specify the common commercial
or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name,
applicant must describe the product, its main purpose, and its intended uses. See id.
- Also, in Class 1, the wording “ligands, genetic vectors, genetic hosts, genetic biochemicals, genetic bioengineering reagents and proteins for use in regulating cellular
functions in transgenic plants, microbes, fungi and animals, and in cells of plants, microbes, fungi and animals” and “chemicals and chemical reagents, namely, cells of transgenic animals, transgenic
plants and transgenic fungi, and cells of animals, plants or fungi for use in medical, pharmaceutical and veterinary laboratory research” may be misclassified. Class 1 is generally reserved for goods
that serve a non-medical purpose. The aforementioned goods appear to be medical in nature. Goods that serve a medical purpose are properly classified in Class 5. Thus, applicant must amend the
identification to remove this wording or specify the purpose of the goods and classify them in the appropriate category (Class 1 for non-medical purposes or Class 5 for goods with medical
purposes).
Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs) or (2) downloadable and thus can be
transferred or copied from a remote computer system for use on a long-term basis. TMEP §1402.03(d). However, on-line
non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for temporary use, which is classified in
International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
For example, the following are acceptable identifications for software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42:
“providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” Finally, the following are acceptable identifications for non-downloadable game software in International Class 41: “providing online
non-downloadable game software” and “providing temporary use of non-downloadable game software.” For assistance with software classification and
identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
- In Class 45, the wording “Technology transfer services, namely, licensing and transfer of intellectual property” in indefinite because the nature of the services is
unclear. Applicant must amend this wording to provide more specificity regarding its services.
The examining attorney suggests examples of acceptable wording and classification below. If accurate, and inserting specific information where directed, the applicant may
adopt any or all of the following identifications of goods and/or services. See TMEP §1402.01. PLEASE NOTE: Suggestions are in bold, comments are in bold italics:
- Class 1: Chemicals for use in biochemical and chemical industry; chemicals for use in agriculture, except fungicides, herbicides, insecticides and parasiticides;
chemicals for use in food production, namely, chemical preparations for preserving foodstuffs, chemical products for stabilizing foodstuffs, chemical preparations for increasing the efficiency of
food production, and chemical preparations for increasing the quality of foodstuffs for energy conversion; chemicals for use in biotechnological product development; chemicals
for use in biotechnological manufacturing processes; chemical preparations for scientific purposes; chemical reagents for non-medical purposes; chemicals, biochemicals and reagents, namely, proteins
for regulating, modifying or restricting gene expression; ligands, genetic vectors, genetic hosts, genetic biochemicals, genetic bioengineering reagents and proteins for use in regulating cellular
functions in transgenic plants, microbes, fungi and animals, and in cells of plants, microbes, fungi and animals for non-medical purposes; Research reagents for pharmaceutical
discovery or disease research, drug discovery or drug development; Chemical inducers of gene expression in plants, mammals, fungi and microbes for industrial and agricultural applications;
Biotechnologically-formed genes, microbes and enzymes for use in converting waste biomass to high value products; microbes used to repel and destroy insects, pest, and rodents.
- Class 5: Chemical preparations for medical and veterinary purposes, namely, chemical preparations for gene therapy, for treating genetic disorders, and for use as medical
and veterinary diagnostic reagents for gene therapy analysis; biochemical preparations for medical and veterinary purposes, namely, biochemical preparations for gene therapy, for treating genetic
disorders, and for use as medical and veterinary diagnostic reagents for gene therapy analysis; chemical reagents for medical and veterinary purposes; Chemical inducers of gene expression in plants,
mammals, fungi and bacteria for medical and veterinary applications; Pharmaceutical and veterinary preparations which regulate the cellular functions of fungi, plants, bacteria and mammals and
transgenic fungi, plants, bacteria and mammals; transgenic fungi and bacteria for medical and veterinary purposes; Preparations for destroying and repelling insects, pests, and rodents;
microbial-based preparations for destroying and repelling insects, pests, and rodents; plant-based preparations for destroying and repelling insects, pests, and rodents; Ligands,
genetic vectors, genetic hosts, genetic biochemicals, genetic bioengineering reagents and proteins for use in regulating cellular functions in transgenic plants, microbes, fungi and animals, and in
cells of plants, microbes, fungi and animals for medical and veterinary purposes; Chemicals and chemical reagents, namely, cells of transgenic animals,
transgenic plants and transgenic fungi, and cells of animals, plants or fungi for use in medical, pharmaceutical and veterinary laboratory research.
- Class 42: Development of new technology for others in the fields of medicine, genetics, therapeutics, biotechnology, agriculture, energy, fuels, biofuels, biochemistry,
the chemical industry, and the environment; Research and development of environmentally friendly forms of energy and power; Development of products being genetic approaches and effectors to regulate,
modulate, and characterize disease states; Development of tools in the nature of online non-downloadable software and biotechnological processes to regulate, modulate, and
characterize cell function or disease states; Research and development services for others in the fields of biotechnology and genetics, namely, genetically engineering DNA, biological organisms,
cells, viruses, and special purpose cells for scientific, research, medical, veterinary, and laboratory use; Scientific research and product development services for others in the pharmaceutical,
chemical, biochemical, biotechnology, biosensors, bioelectronics, medical, animal therapeutics, energy, fuels, biofuels, and agriculture fields; Gene therapy services for others for product
development and scientific research purposes, namely, genetically engineering DNA, biological organisms, cells, viruses, and special purpose cells for scientific, research, medical and laboratory
use; Providing temporary use of non-downloadable computer software for use in connection with research and development services in the fields of chemical, biochemical, synthetic biology, energy,
agriculture, genetics, environment, animal therapeutics, medicine, gene therapy, and biotechnology; Providing temporary use of non-downloadable computer software for use in connection with research
and development of new technology for others in the fields of chemical, biochemical, synthetic biology, energy, fuels, biofuels, agriculture, genetics, environment, animal therapeutics, medicine,
gene therapy, and biotechnology; Providing temporary use of non-downloadable computer software for generating and tracking orders in the fields of chemical, biochemical, synthetic biology, energy,
fuels, biofuels, agriculture, genetics, environment, animal therapeutics, medicine, gene therapy, and biotechnology; Computer services, namely, providing an interactive web site for use in connection
with research and development of new technology for others in the fields of chemical, biochemical, synthetic biology, energy, agriculture, genetics, environment, animal therapeutics, medicine, gene
therapy, and biotechnology; Computer services, namely, providing an interactive web site that allows users to view, store, and manage data in the fields of chemical, biochemical, synthetic biology,
energy, agriculture, genetics, environment, animal therapeutics, medicine, gene therapy, and biotechnology.
- Class 45: Licensing of intellectual property rights in the nature of technology transfer services of intellectual property.
The applicant should note the following when amending the identifications and/or classifications.
· The applicant may use different wording of its own when amending the identifications and/or classifications of goods and/or
services. The applicant must follow the guidelines discussed herein to ensure specificity and accuracy. Please note that while identifications of goods or services can be clarified or
limited by amendment, it is impermissible to add to or broaden the scope of the goods or services beyond those originally listed in the application or as acceptably amended. See 37
C.F.R. §2.71(a); TMEP §§1402.06, 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted
to be reinserted. TMEP §1402.07(e).
· For guidance on drafting acceptable identifications of goods and/or services, use the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual (ID Manual), which is continually updated in
accordance with prevailing rules and policies. See TMEP §1402.04.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal,
applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should
set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action. Although
the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place
the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP §707.
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.
/Matthew D. McClellan/
Trademark Examining Attorney, Law Office 121
Phone: (571) 272-5148
Matthew.McClellan@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.