Examiners Amendment

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

EXAMINER’S AMENDMENT

 

 

Issue date:  May 20, 2020

 

This examiner’s amendment is supplemental to and supersedes the previous Office action issued on April 23, 2019 in connection with this application.  Upon further review, additional clarification of the identification for Class 42 is required.  Applicant has requested this requirement be resolved as outlined below. 

 

In a previous Office action dated Apri1 23, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  refusal under Trademark Act Section 2(d) for a likelihood of confusion with the mark GENARIS in U.S. Registration No. 3829708.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods and services.

 

The Apri1 23, 2019 requirement to amend the identification is satisfied by applicant’s response.  The refusal under Trademark Act Section 2(d) for a likelihood of confusion has also been obviated by cancellation of U.S. Registration No. 3829708.  See TMEP §713.02.   

 

Application has been amended as shown below.  As agreed to by counsel Shawn B. Hussain on behalf of Charles Lew on May 19, 2020, the examining attorney has amended the application as shown below. 

 

The identification of goods and services is amended to read as follows:

 

Class 9

 

Downloadable computer software for recording, analysis, storage, manipulation and organization of genetic and molecular data; downloadable computer software for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping; Downloadable software in the nature of a mobile application for recording, analysis, storage, manipulation and organization of genetic and molecular data; Downloadable software in the nature of a mobile application for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping

 

Class 10

 

Diagnostic test kits for scientific use comprised of devices for collecting DNA samples in the nature of DNA collecting tubes, collection envelopes, and instruction manuals for using diagnostic test kits, all used for the purpose of researching genealogical history, wellness assessment and gaining insight into how the body responds to micronutrients, nutrients, vitamins and supplements; vitamin and mineral supplements

 

Class 42

 

Providing scientific analysis and informational reports based on the results of laboratory testing in the field of genetics, wellness assessment and the utility of micronutrients, nutrients, vitamins and supplements; providing online computer databases comprised of scientific information based on aggregated results of genotyping for research purposes; application service provider featuring software for providing access to multiple databases that contain aggregated results of genotyping for research purposes; application service provider featuring software for use in data management, data storage, data analysis, report generation, user identification, and membership identification, all in the fields of genetics and genetic testing; scientific research in the fields of genetics, genetic testing, genetic screening, genotyping, phenotyping, molecular analytics, and ancestry; providing online non-downloadable computer software for recording, analysis, storage, manipulation and organization of genetic and molecular data; providing online non-downloadable computer software for providing access to multiple databases that contain aggregated results of molecular biology testing and genotyping

 

Class 45

 

Online social networking services in the field of genetics; online social networking services that allows users to share and discuss genetic test results, including wellness assessments based on the genetic test results

 

See TMEP §§1402.01, 1402.01(e).

 

Please notify the examining attorney immediately of any objections.  TMEP §707.  Otherwise, no response is required.  Id.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

 

 

 

/Cheryl Kluwe/

Cheryl Kluwe

Examining Attorney

Law Office 126

(571) 270-3839

cheryl.kluwe@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 20, 2020 for

U.S. Trademark Application Serial No. 88285116

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter.  Please follow the steps below.

 

(1)  Read the official letter.  No response is necessary.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

/Cheryl Kluwe/

Cheryl Kluwe

Examining Attorney

Law Office 126

(571) 270-3839

cheryl.kluwe@uspto.gov

 

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”