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: 4/12/2019

 

 

 

 

 

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.  

 

 

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

 

SEARCH OF OFFICE RECORDS (Advisory)

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).

 

 

Applicant should note the issue(s) and requirement(s) set forth below. 

 

 

IDENTIFICATION AND CLASSIFICATION

Applicant has provided the following identification and classification of goods and/ or services in its application:

 

Class 44:         Medical services; medical clinics; medical information; providing clinical testing information services for the diagnosis monitoring and treatment of disease; cell and stem cell mobilization, collection, isolation, processing, banking, implantation, explantation and transfer; liposuction; medical services in the fields of anti-aging, immunoncology, and vaccines; medical services for cell, stem cell and tissue rejuvenation and regeneration; Kits for clinical or medical laboratory use; pre-packaged kits for use in regeneration and rejuvenation of patient cells, namely, kits comprising vials for containing cells, young donor cells, regeneration and rejuvenation media, small molecule and nucleotide-based therapeutics for cellular regeneration and rejuvenation, and transwell cell culture plates; Pharmaceutical preparations; pharmaceutical preparations, namely, pharmaceutical preparations for use in regenerative medicine, oncology and treatment of infectious disease [IC 5]; diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, antibodies, cell permeable and non-permeable fluorescent dyes, and radioisotopes [IC 5]; Medical apparatus; apparatus for the regeneration and rejuvenation of stem cells, cells and tissue for medical purpose [IC 10]; human cell specimen collection kit comprising centrifuge tubes, absorbent cloth, and instructions, all for medical use[IC 10]; Business management and consultancy services [IC 35]; Business data analysis services in the field of healthcare[IC 35]; data processing and database management services for the healthcare industry[IC 35]; Cryogenic preservation[IC 40]; Stem cell, cell, and tissue cryogenic preservation[IC 40]; Data mining [IC 42]; data hosting services; data hosting services, namely, healthcare and patient data hosting

 

The wording shown above in bolded text in the identification of goods and services is unacceptable as indefinite because it is too broad and could include goods and services in other international classes, specifically, "providing clinical testing information services for the diagnosis monitoring and treatment of disease; cell and stem cell mobilization, collection, isolation, processing, banking, implantation, explantation and transfer," "Kits for clinical or medical laboratory use; pre-packaged kits for use in regeneration and rejuvenation of patient cells, namely, kits comprising vials for containing cells, young donor cells, regeneration and rejuvenation media, small molecule and nucleotide-based therapeutics for cellular regeneration and rejuvenation, and transwell cell culture plates; Pharmaceutical preparations," "Medical apparatus," "data hosting services; data hosting services, namely, healthcare and patient data hosting"  must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   Applicant must amend the identification 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. Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

In addition the underlined wording is misclassified in class 44.  However, the proper classification for each item is as follows: 

o   pharmaceutical preparations, namely, pharmaceutical preparations for use in regenerative medicine, oncology and treatment of infectious disease; diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, antibodies, cell permeable and non-permeable fluorescent dyes, and radioisotopes [properly classified in Class 5];

 

o   apparatus for the regeneration and rejuvenation of stem cells, cells and tissue for medical purpose; human cell specimen collection kit comprising centrifuge tubes, absorbent cloth, and instructions, all for medical use[properly classified in Class 10];

 

o   Business management and consultancy services; Business data analysis services in the field of healthcare; data processing and database management services for the healthcare industry [properly classified in Class 35];

 

o   Cryogenic preservation; Stem cell, cell, and tissue cryogenic preservation [properly classified in Class 40]; 

 

o   Data mining [properly classified in Class 42]; 

 

Additionally, applicant has provided the application fee(s) for only 1international class(es).  Thus, not all international classes in the application are covered by the application fee(s).  Because of this disparity, applicant must clarify the number of classes for which registration is sought.  See 37 C.F.R. §§2.32(d), 2.86.

 

Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods and/or services accordingly; or (2) deleting from the application the goods and/or services for all but the number of international class(es) for which the application fee was submitted.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.

 

 

Applicant may adopt the following identification, if accurate:    

·       Chemical test kits for [indicate purpose of the kit] for clinical or medical laboratory use (INT. CLASS 1)

 

·       pre-packaged kits for use in regeneration and rejuvenation of patient cells for medical purposes, namely, kits comprising vials for containing cells, young donor cells, regeneration and rejuvenation media, small molecule and nucleotide-based therapeutics for cellular regeneration and rejuvenation, and transwell cell culture plates; Pharmaceutical preparations for [INDICATE disease or condition to be prevented or treated or the health goal to be achieved, e.g., regeneration and rejuvenation of patient cells]; pharmaceutical preparations, namely, pharmaceutical preparations for use in regenerative medicine, oncology and treatment of infectious disease; diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, antibodies, cell permeable and non-permeable fluorescent dyes, and radioisotopes (INT. CLASS 5)

 

·       Medical apparatus for use in treating [INDICATE disease or condition treated, e.g., temporomandibular joint disorder (TMJ), respiratory diseases, rheumatoid arthritis, etc.]; apparatus for the regeneration and rejuvenation of stem cells, cells and tissue for medical purpose; human cell specimen collection kit comprising centrifuge tubes, absorbent cloth, and instructions, all for medical use (INT. CLASS 10)

 

·       Business management and consultancy services; Business data analysis services in the field of healthcare; data processing and database management services for the healthcare industry  (INT. CLASS 35)

 

·       Cryogenic preservation; Stem cell, cell, and tissue cryogenic preservation (INT. CLASS 40)

 

·       Data mining; data hosting services, namely, hosting of digital content on the internet for others; data hosting services, namely, hosting of healthcare and patient data on the internet for others (INT. CLASS 42)

 

·       Medical services; medical clinics; medical information; providing clinical testing information services for the diagnosis monitoring and treatment of disease for medical purposes; Medical services, namely, cell and stem cell mobilization, collection, isolation, processing, banking, implantation, explantation and transfer; liposuction; medical services in the fields of anti-aging, immunoncology, and vaccines; medical services for cell, stem cell and tissue rejuvenation and regeneration  (INT. CLASS 44)

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Classes 1, 5, 10, 35, 40, and 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 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 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 identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

(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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 7 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es).  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 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

  

           

CLOSING

If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.

 

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(s) and/or requirement(s) 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. 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101

U.S. Patent & Trademark Office

Tel: (571) 272-1658 

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/12/2019 FOR U.S. APPLICATION SERIAL NO. 88281350

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/12/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.