| To: | Sysmex Corporation (officeactions@brinksgilson.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 88281102 - ONCOGUIDE - 11333-958 |
| Sent: | 5/13/2019 2:19:25 PM |
| Sent As: | ECOM127@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88281102
MARK: ONCOGUIDE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sysmex Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
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.
SUMMARY OF ISSUES
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).
IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT
The wording “diluents, other than for medical or veterinary use” in International Class 1 is indefinite and 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, this wording could encompass diluents for scientific purposes in International Class 1 or basal diluents used in industrial vegetation management and forestry in International Class 4.
The wording “computer programs for use in the field of scientific or laboratory analysis; computer program for use in the field of medical, clinical or diagnostic analysis; computer programs for genetic, cell and protein analysis” in the identification of goods for International Class 9 is indefinite and must be clarified because it is unclear whether these are downloadable goods in Class 9 or non-downloadable services in Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01
The wording “electronic publications” in the identification of goods for International Class 9 is indefinite and must be clarified because it is unclear whether these are downloadable publications in Class 9 or non-downloadable publications in Class 41. It is also unclear the specific nature of the publication. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01
Applicant may substitute the following wording, if accurate (suggestions in bold):
Class 1: Chemical reagents, other than for medical or veterinary use; chemical preparations, for scientific purposes, other than for medical or veterinary use; Biochemicals for scientific or research use, namely, {indicate specific biochemical, e.g. monoclonal antibodies, DNA polymerase}; Biochemical reagents for non-medical use; enzymes for scientific and research use; Testing reagents for testing {indicate, e.g., food, water, etc.}, other than for medical or veterinary use; Reagents for genetic test, namely, {indicate type of test, e.g., genetic identify tests comprised of reagents} for non-medical use; diluents for {indicate specific purpose, e.g., cleaning, scientific or research use}, other than for medical or veterinary use; Buffer solutions for use in {specify purpose, e.g., use in analytical chemistry}; Surfactants for use in {specify purpose, e.g., agricultural pesticides, manufacture of synthetic detergents}; chemical reference materials for scientific or research use; Quality control materials, namely, {specify material, e.g., pipettes, pipette tips, tubes, vials} for testing and calibrating scientific or laboratory apparatus; Emulsifying agents for {indicate purpose, e.g. industrial purposes, agricultural purposes}; chemical products for forming emulsion; chemical products for breaking emulsion; magnetic beads for use in scientific or research analysis sold as a component part of Nucleic acid isolation and purification kit consisting primarily of reagents and magnetic beads for scientific research purposes; DNA polymerase for scientific research purposes; Chemical preparations containing DNA fragments for scientific purposes; Chemical reagents for cell analysis tests for non-medical use; Chemical reagents for protein analysis tests for non-medical use; Detergents for industrial use; Detergents for industrial use for apparatus and instruments
Class 3: Detergents for household use; Cleaning solutions for {indicate specific purpose, e.g. cosmetic use, for contact lenses}; cleaning preparations; Detergents for household use for apparatus and instruments; Cleaning solutions for apparatus and instruments for {indicate specific purpose, e.g. cosmetic use, for contact lenses}; cleaning preparations for apparatus and instruments
Class 4: Basal diluents used in industrial vegetation management and forestry other than for medical or veterinary use
Class 5: Detergents for medical purposes; Detergents for medical purposes for apparatus and instruments; Diagnostic reagents and diagnostic preparations for medical or veterinary use; Chemical reagents for medical or veterinary use; chemical preparations for medical or veterinary purposes, namely, for {specify disease or condition to be prevented or the health goal to be achieved}; Biochemical reagents for medical use, namely, for {specify disease or condition to be prevented or the health goal to be achieved}; enzymes for use in medical analysis; Testing reagents and preparations for medical or veterinary use, namely {specify use, e.g. diagnostic reagents}; reagents for genetic testing for medical or veterinary purposes; preparations for detecting mutations in genes for medical or veterinary purposes; diagnostic biomarker reagents for medical or veterinary use; Diluents for medical or veterinary use, namely, {specify use, e.g., diluents for uranalysis}; Quality control materials, namely, {specify material, e.g., pipettes, pipette tips, tubes, vials} for medical or veterinary use; Quality control standard solutions and materials, namely, {specify material, e.g., pipettes, pipette tips, tubes, vials} for testing and calibrating medical or veterinary apparatus; detergents for medical or veterinary use; Cleaning solutions for medical or veterinary use, namely {specify solution, e.g. contact lens cleaning solution}; Cleaning preparations for medical or veterinary use, namely, specify preparation, e.g. nasal cleaning preparations}; Medical diagnostic solutions, namely, sheath solutions for use in medical analysis; magnetic beads for use in medical analysis sold as a feature of nucleic acid isolation and purification kit consisting primarily of reagents and magnetic beads for medical purposes; DNA polymerase for use in medical analysis; Chemical preparations containing DNA fragments for use in medical analysis for the treatment of {specify disease or condition to be prevented or the health goal to be achieved}; Chemical reagents for cell analysis tests for medical or clinical use; Chemical reagents for protein analysis tests for medical or clinical use
Class 9: Testing apparatus and instruments for scientific, research or laboratory use, namely, {specify use of apparatus and instruments, e.g. gas testing instruments, ultrasonic instrumentation for testing machines}; Laboratory apparatus and instruments for {specify use, e.g., extracting DNA, homogenizers}; Measuring or testing machines and instruments for {specify use, e.g., measuring length, radiation, resistance}; laboratory apparatus and furniture for use in genetic testing; Flow cytometers for {specify use, e.g. providing cell and particle analysis} for scientific and laboratory use; particle analyzers for scientific, research or laboratory use; genetic analyzer for scientific, research or laboratory use; Air quality measurement apparatus, namely, particle counters for scientific, research or laboratory use; Genetic testing apparatus and instruments for scientific, research or laboratory use, namely, {indicate specific instrument, e.g. computer software for gene sequencing and genotyping instruments}; Gene amplification analyzers for scientific, research or laboratory use, namely {specify type of analyzer, e.g. microscope}; DNA sequencer for scientific, research or laboratory use, namely, {indicate specific instrument, e.g. computer software for DNA sequencing and DNA genotyping instruments}; biological sample pretreatment apparatus and instruments for scientific, research or laboratory use
measurement sample preparation apparatus and instruments for scientific, research or laboratory use; measurement sample preparation apparatus and instruments for scientific, research or laboratory use; pretreatment apparatus and instruments for genetic testing for scientific, research or laboratory use; Testing instruments for genetic testing, namely, {specify instruments, e.g. computer software for genetic testing} for scientific, research or laboratory use; laboratory instruments for extracting nucleic acid in a biological sample for scientific, research or laboratory use; microplates for laboratory experiment; test tubes for scientific, research or laboratory use; pipette tips for scientific, research or laboratory use; Computers; Downloadable computer programs for use in the field of scientific and laboratory analysis; Downloadable computer program for use in the field of medical, clinical or diagnostic analysis; Electronic downloadable publications, namely {indicate specific nature of publication} for use by medical professionals in the field of science and medicine; Downloadable computer programs for genetic, cell and protein analysis; Cell analysis apparatus and instruments for scientific, research or laboratory use, namely, {specify apparatus or instrument, e.g., flow cytometers, flow-based analyzers}; Protein analysis apparatus and instruments for scientific, research or laboratory use, namely, {specify apparatus or instrument, e.g., flow cytometers, flow-based analyzers}
Class 10: Medical and veterinary apparatus and instruments for the treatment {specify disease or condition to be prevented or the health goal to be achieved, e.g. for monitoring blood pressure, treating arthritis}; Testing apparatus and instruments for the treatment {specify disease or condition to be prevented or the health goal to be achieved, e.g. for monitoring blood pressure, treating arthritis} for medical or clinical use; diagnostic apparatus and instruments for the treatment {specify disease or condition to be prevented or the health goal to be achieved, e.g. for monitoring blood pressure, treating arthritis} for medical or clinical use; Flow cytometers for diagnostic medical or clinical use; flow-based particle analyzers providing cell and particle analysis, detection, or counting for medical or clinical use; particle counters , namely, flow cytometers or flow-based analyzers, for medical or clinical use; genetic testing apparatus and instruments for medical or clinical diagnostic use , namely, apparatus for medical diagnostic testing for {specify disease or condition to be prevented or the health goal to be achieved}; gene amplification analyzers for medical or clinical use, namely, {specify analyzer, e.g. cell cycle analyzer for diagnostic purposes}; DNA sequencer for medical or clinical use, namely, {indicate specific purpose, bacteria analysis, virus analysis}; biological sample pretreatment apparatus and instruments for medical or clinical use; measurement sample preparation apparatus and instruments for medical or clinical use; pretreatment apparatus and instruments for genetic testing for medical or clinical use, namely, {specify instrument, e.g. blood treatment apparatus or instrument}; Dropping pipettes for medical purposes; measuring apparatus and instruments for use in medical analysis, namely, {specify instruments, e.g. haemostasis analyzers}; medical containers especially adapted and designed for use with samples for in vitro diagnosis sold empty; medical sampling bottles especially designed for use in medical analysis , namely, {specify instrument, e.g. blood sampling tubes}; medical devices, namely, disposable beakers especially designed for use in medical analysis, namely, {specify use, e.g. disposable beakers for blood analysis}, not for laboratory use; cell analysis apparatus and instruments for medical or clinical use, namely, {specify instruments, e.g. flow cytometers, flow-based analyzers}; protein analysis apparatus and instruments for medical or clinical use, namely, {specify instruments, e.g. flow cytometers, flow-based analyzers}
Class 41: Non-downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication}
Class 42: Scientific and technological research in the field of {indicate specific scientific or technology-related field, e.g. patent mapping}; scientific research, scientific analysis, and design relating thereto in the field of {indicate specific scientific or technology-related field, e.g. cancer diagnosis}; design and development of diagnostic products and service; diagnostic and analytical testing services for others, namely, {specify service, e.g. performing tests on forensic specimens}; clinical trial services; testing services to detect or quantify gene mutations, gene variations, gene amplification, gene loss and gene fusion for scientific and research purposes; molecular biomarker testing services for scientific and research purposes; DNA sequencing services for scientific and research purposes; scientific and technological research to assist in the design, development and management of in-vitro diagnostic tests for scientific and research purposes; testing services for research in gene analysis; testing services to assist in treatment decision-making in diseases for scientific and research purposes; testing services for companion diagnostics for scientific and research purposes; testing and research relating to cell analysis for scientific purposes; Testing and research relating to protein analysis for scientific purposes; clinical laboratory testing services and reporting of results for scientific and research purposes; providing online non-downloadable computer programs for use in the field of scientific and laboratory analysis; providing online non-downloadable computer program for use in the field of medical, clinical or diagnostic analysis; providing online non-downloadable computer programs for genetic, cell and protein analysis
Class 44: Providing medical information; medical diagnostic testing and reporting services pertaining to the monitoring, diagnosis and treatment of disease; medical diagnostic services to assist in the design, development and management of in-vitro diagnostic tests; providing medical data/information to healthcare professionals; testing services to provide information regarding disease conditions and disease prevention for medical purposes; diagnostic services, namely, medical diagnostic testing for diseases and disorders
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 ADVISORY
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least nine classes; however, applicant submitted a fee sufficient for only seven classes. 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.
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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
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.
/Katherine M. Eissenstat/
Trademark Examining Attorney
USPTO, Law Office 127
Tel: (571) 272-5886
Email: Katherine.Eissenstat@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.