Offc Action Outgoing

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:

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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).

SUMMARY OF ISSUES:

Specimen Refusal – This Partial Refusal Applies to Class 9 Only
Partial Refusal Advisory – Specimen Refusal
Verification of Application Required
Amended Identification of Goods and Services Required
Multiple-Class Application Requirements

SPECIMEN REFUSAL

THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY

Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 9. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, applicant has specified the following International Class 9 services: “Diagnostic apparatus for the detection of pathogens for laboratory or research use, not for medical use; Measuring apparatus, namely, real-time Polymerase Chain Reaction cyclers not for medical use; Apparatus used for analysis, namely, heating blocks for the lysis of bacterial cells and real-time Polymerase Chain Reaction cyclers for the detection of bacterial gene sequences, not for medical use; Molecular tools in the nature of probes and apparatuses for testing reaction primers; computer software for evaluating and documenting results from scientific testing.” However, the specimen of record shows what appears to be a listeria testing kit and packaging, a product label and manual for a salmonella testing kit, and several online store listings for listeria testing kits. Such test kits would be classified as an International Class 1 good if for non-medical purposes and as an International Class 5 good if for medical purposes. Thus, applicant has not shown the applied-for mark in use in commerce in International Class 9.

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 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). However, leaflets, handbills, advertising circulars, and other advertising materials generally are not acceptable specimens for goods. See TMEP §§904.03 et seq.

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 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.

Partial Refusal Advisory – Specimen Refusal

The stated refusal refers to International Class 9 only and does not bar registration in the other classes.

In addition to the response options set forth in the section above, applicant may respond by doing one of the following:

(1) Deleting the class to which the refusal pertains; or

(2) Filing a request to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

VERIFICATION OF APPLICATION REQUIRED

The application was unsigned, resulting in the application not being properly verified. See TMEP §804. Applicant must properly sign and therefore verify the application in an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.2(n), 2.33(a)-(b)(1), (c), 2.34(a)(1)(i); TMEP §804.02.

The following statements must be verified: That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a). For more information about this, see the Verified statement webpage.

To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.

A verified statement, which includes statements supported by a signed declaration under 37 C.F.R. §2.20, must be signed by the applicant or a person “properly authorized to verify facts” and sign on behalf of the applicant. 37 C.F.R. §2.193(e)(1); TMEP §804.04; see 37 C.F.R. §2.33(a). The following persons are properly authorized: (1) a person with legal authority to bind a juristic applicant (e.g., a corporate officer of a corporate applicant or a general partner of a partnership applicant); (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of applicant; and (3) an attorney who is authorized to represent the applicant and to practice before the USPTO. 37 C.F.R. §2.193(e)(1); TMEP §804.04.

AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED

The wording in the identification of goods and services must be clarified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

First, the wording “DNA primers” and “Diagnostic products for scientific use, namely, the detection of specific bacteria” in International Class 1 are indefinite and too broad . The wording must be clarified because the nature of the goods are not clear and could identify goods in more than one international class. For example, “DNA primers” could include “DNA primers being a component part of reagents for industrial, agricultural and scientific use” in International Class 1 and “DNA primers being a component part of reagents for medical or veterinary use” in International Class 5. Further, “diagnostic products for scientific use, namely, the detection of specific bacteria” could include “diagnostic preparations and reagents for scientific use, namely, the detection of specific bacteria” in International Class 1 and “Diagnostic apparatus for the detection of specific bacteria for scientific laboratory or research use” in International Class 9.

Second, the identification for “computer software for evaluating and documenting results from scientific testing” in International Class 9 is indefinite. Such software can be classified in at least two international classes (International Classes 9 and 42) depending on whether the software is recorded on media, downloadable, or non-downloadable (either online or for temporary use). For information regarding proper classification of computer software, see TMEP §§1402.03(d), 1402.11(a)(xii), and the USPTO’s online U.S. Acceptable Identification of Goods and Services Manual.

Third, the wording “Scientific research services, namely, conducting physical, chemical, physical chemical, biochemical, biological or microbiological testing and analysis in the fields of animal biology and plant biology” in International Class 42 is indefinite because the nature of the services are not clear. Specifically, the use of the wording “or” makes the identification indefinite because it is not clear if applicant is providing one, a combination of, or all of the types of testing. Applicant may clarify the identification by substituting the wording “or” with the wording “and.”

Applicant may substitute the following wording, if accurate (suggested language in bold):

International Class 1: Chemical reagents for non-medical purposes; DNA primers being a component part of reagents for industrial, agricultural and scientific use; Diagnostic ~~products~~ preparations and reagents for scientific use, namely, the detection of specific bacteria; Diagnostic reagents for industrial, agricultural and scientific use; Reagents for analyzing specific gene sequences that are characteristic for bacteria for industrial, agricultural and scientific use; Analytical and diagnostic test kits comprised primarily of reagents for the lysis of bacterial cells, primers and probes and enzymes for the preparation of a polymerase chain reaction to extract and detect bacterial genetic sequences

International Class 5: DNA primers being a component part of reagents for medical or veterinary use

International Class 9: Diagnostic apparatus for the detection of pathogens for laboratory or research use, not for medical use; Measuring apparatus, namely, real-time Polymerase Chain Reaction cyclers not for medical use; Apparatus used for analysis, namely, heating blocks for the lysis of bacterial cells and real-time Polymerase Chain Reaction cyclers for the detection of bacterial gene sequences, not for medical use; Molecular tools in the nature of probes and apparatuses for testing reaction primers; downloadable and recorded computer software for evaluating and documenting results from scientific testing; Diagnostic apparatus for the detection of specific bacteria for scientific laboratory or research use

International Class 42: Research and development in the fields of animal and plant biology, physical chemistry and microbiology; Scientific research services, namely, conducting physical, chemical, physical chemical, biochemical, biological or and microbiological testing and analysis in the fields of animal biology and plant biology; Scientific research services, namely, conducting physical, chemical, physical chemical, biochemical, biological and microbiological testing and analysis in the foodstuffs, chemical, pharmaceutical and cosmetics industries and environmental fields; Conducting genetic analyses in the fields of animal biology and plant biology for scientific research purposes; Conducting genetic analyses in the foodstuffs, chemical, pharmaceutical, cosmetics industries and environmental fields for scientific research purposes; Conducting nuclear magnetic resonance imaging interpretation and analysis in the foodstuffs, chemical, pharmaceutical and cosmetics industries and environmental fields; providing temporary use of non-downloadable computer software for evaluating and documenting results from scientific testing

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services 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 and services may not later be reinserted. See TMEP §1402.07(e).

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 REQUIREMENTS

The application references goods and services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

(1) List the goods and/or 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 already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and services based on use in commerce that are classified in at least four (4) classes; however, applicant submitted fees sufficient for only three (3) classes. 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 International Classes 1 and 42. Applicant needs a specimen for International Classes 5 and 9. See more information about specimens.

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.

The fee for adding classes to a regular TEAS application is $400 per class when the fee is paid using the Trademark Electronic Application System (TEAS). See 37 C.F.R. §2.6(a)(1)(ii); TMEP §§810, 1403.02(c).

RESPONSE GUIDELINES

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 and requirements 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.

/Pauline Ha/

Examining Attorney

Law Office 115

(571) 272-5005

pauline.ha@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.