NOTE TO THE FILE
SERIAL NUMBER: 88229905
DATE: 03/19/2019
NAME: sferrell
NOTE:
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSFrom: Cynthia Walden [mailto:walden@fr.com]
Sent: Tuesday, March 19, 2019 10:27 AM
To: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Cc: Jennifer Lynch <jlynch@fr.com>; John P. McCormick <mccormick@fr.com>
Subject: RE: USPTO Trademark Application: 88229905 MASTAID (Your Docket No. 000880625001)
Thanks Steven, sounds good! I will get back to you as soon as possible.
Best regards,
Cindy
Cynthia Johnson Walden :: Principal :: Fish & Richardson P.C.
Trademark and Copyright Practice Group Leader617 956 5928 direct :: 617 542 5070 main :: walden@fr.com
fr.com :: FishTMCopyrightblog.com
From: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Sent: Tuesday, March 19, 2019 10:23 AM
To: Cynthia Walden <walden@fr.com>
Cc: Jennifer Lynch <jlynch@fr.com>; John P. McCormick <mccormick@fr.com>
Subject: RE: USPTO Trademark Application: 88229905 MASTAID (Your Docket No. 000880625001)
Good Morning,
Thank you for your response. If you aren’t able to provide a substantive response by 2PM, I will issue this as a Priority Action to give you additional time. If appropriate, we can still handle by Examiner’s Amendment once you receive confirmation from your client. Thanks again for your help!
Respectfully,
/Steven W. Ferrell Jr./
Trademark Examining Attorney
Law Office 121
Phone: (571)270-3424
E-mail: steven.ferrell@uspto.gov
For information about contacting the USPTO with complaints, compliments, or other feedback for the Trademark Organization, please visit http://www.gov.uspto.report/trademark/contact-trademarks/trademark-user-feedback.
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-.05.
From: Cynthia Walden [mailto:walden@fr.com]
Sent: Tuesday, March 19, 2019 9:50 AM
To: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Cc: Jennifer Lynch <jlynch@fr.com>; John P. McCormick <mccormick@fr.com>
Subject: RE: USPTO Trademark Application: 88229905 MASTAID (Your Docket No. 000880625001)
Good morning Steven,
I am awaiting input from my client, which I hope to have for you today - but if you do not hear back from my by 2:00 p.m. today can you give us a bit more time?
Thanks!
Best regards,
Cindy
Cynthia Johnson Walden :: Principal :: Fish & Richardson P.C.
Trademark and Copyright Practice Group Leader617 956 5928 direct :: 617 542 5070 main :: walden@fr.com
fr.com :: FishTMCopyrightblog.com
From: Ferrell Jr., Steven <Steven.Ferrell@USPTO.GOV>
Sent: Tuesday, March 19, 2019 6:24 AM
To: tmdoctc <TMDocTC@fr.com>; Cynthia Walden <walden@fr.com>
Subject: RE: USPTO Trademark Application: 88229905 MASTAID (Your Docket No. 000880625001)
Good Morning,
Just a friendly reminder that I need a response to my e-mail below by 2PM EST today, even if it’s a request for additional time. Thanks!
Respectfully,
/Steven W. Ferrell Jr./
Trademark Examining Attorney
Law Office 121
Phone: (571)270-3424
E-mail: steven.ferrell@uspto.gov
For information about contacting the USPTO with complaints, compliments, or other feedback for the Trademark Organization, please visit http://www.gov.uspto.report/trademark/contact-trademarks/trademark-user-feedback.
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-.05.
From: Ferrell Jr., Steven
Sent: Friday, March 15, 2019 10:10 AM
To: 'tmdoctc@fr.com' <tmdoctc@fr.com>; 'walden@fr.com' <walden@fr.com>
Subject: USPTO Trademark Application: 88229905 MASTAID (Your Docket No. 000880625001)
Good Morning Cynthia Johnson Walden,
I am reviewing the above referenced application for your client, IDEXX Laboratories, Inc. In review of this application there is one issue that can be corrected without the need for an office action.
Namely, we require an amended identification of the goods identified in International Classes 1 and 5 for the reasons discussed in the chart below:
Applicant’s Class & ID
Reason for Amendment
Suggested Class & ID
INTERNATIONAL CLASS 1
Reagents for use in polymerase chain reaction based assays for use in veterinary and agricultural fields;
Overly broad and may include goods in multiple international classes. For instance, this includes reagents for use in polymerase chain reaction based assays for use in veterinary and agricultural fields for scientific and research use in International Class 1 and reagents for use in polymerase chain reaction based assays for use in veterinary field for medical purposes in International Class 5. Applicant must further specify the nature of its goods and classify them accordingly.
International Class 1: Reagents for use in polymerase chain reaction based assays for use in veterinary and agricultural fields for scientific and research use;
International Class 5: Reagents for use in polymerase chain reaction based assays for use in veterinary field for medical purposes
INTERNATIONAL CLASS 5
Diagnostic reagents for veterinary diagnostic assays, specimen collection equipment, and specimen holding equipment for testing biological samples and bodily fluids;
Overly broad and may include goods in multiple international classes. For instance, this includes diagnostic reagents for veterinary diagnostic assays in International Class 5, laboratory specimen collection and holding equipment in the nature of glass slides, cups, and bags for the collection and holding of biological samples and bodily fluids for scientific testing purposes in International Class 9, and medical specimen collection and holding equipment in the nature of glass slides, cups, and bags for the collection and holding of biological samples and bodily fluids for medical testing purposes in International Class 10. Applicant must further specify the nature of its goods and classify them accordingly.
International Class 5: Diagnostic reagents for veterinary diagnostic assays;
International Class 9: Laboratory specimen collection and holding equipment in the nature of glass slides, cups, and bags for the collection and holding of biological samples and bodily fluids for scientific testing purposes
International Class 10: Medical specimen collection and holding equipment in the nature of glass slides, cups, and bags for the collection and holding of biological samples and bodily fluids for medical testing purposes
Specifically, the suggested identification would read, with suggested changes underlined:
International Class 1: Reagents for use in polymerase chain reaction based assays for use in veterinary and agricultural fields for scientific and research use; assays for research purposes
International Class 5: Diagnostic reagents for veterinary diagnostic assays; chemical reagents for veterinary use for detecting mastitis; Reagents for use in polymerase chain reaction based assays for use in veterinary field for medical purposes
International Class 9: Laboratory specimen collection and holding equipment in the nature of glass slides, cups, and bags for the collection and holding of biological samples and bodily fluids for scientific testing purposes
International Class 10: Veterinary diagnostic apparatus for testing biological samples; veterinary diagnostic apparatus for detecting mastitis; Medical specimen collection and holding equipment in the nature of glass slides, cups, and bags for the collection and holding of biological samples and bodily fluids for medical testing purposes
Please let me know if you would approve of my amending the identification as described. Please note that if applicant wishes to add one or more additional classes to the application, an additional fee of $275.00 per added class will be necessary. In that case, I will make any approved changes and issue a Priority action requiring payment of the fee(s). Any added class will remain inactive until the fee(s) is/are paid, unless applicant specifies otherwise. Alternatively, if you or applicant has a deposit account with the USPTO, you can provide that account number and authorize the charges against that account.
Please respond no later than 2 PM EST on Tuesday March 19, 2019.
If you have any questions, comments, or concerns please feel free to call or e-mail me using the information provided in my signature block below. Thank you.
Respectfully,
/Steven W. Ferrell Jr./
Trademark Examining Attorney
Law Office 121
Phone: (571)270-3424
E-mail: steven.ferrell@uspto.gov
For information about contacting the USPTO with complaints, compliments, or other feedback for the Trademark Organization, please visit http://www.gov.uspto.report/trademark/contact-trademarks/trademark-user-feedback.
Notice to applicants and attorneys: relevant e-mail communications will be uploaded to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04-.05.
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