To: | Terragene S.A. (jyoung@dineff.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88324830 - TERRAGENE - TM9707US00 |
Sent: | 5/30/2019 3:56:47 PM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88324830
MARK: TERRAGENE
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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: Terragene S.A.
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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.
ISSUE/MAILING DATE: 5/30/2019
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.
No Conflicting 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).
However, registration is provisionally refused for the following reasons.
Summary of Issues That Applicant Must Address
· Amendment of Identification of Goods Required
· Complete Copy of Foreign Certificate of Registration Required
Amendment of Identification of Goods Required
Applicant submitted the following identification with the application:
International Class 5
Adhesive bands for medical purposes; Antiseptics; Bacterial preparations for medical and veterinary use; Bacteriological culture mediums; Bacteriological preparations for medical and veterinary use; Biological indicators for monitoring sterilization processes for medical or veterinary purposes; Biological tissue cultures for medical purposes; Bouillons for bacteriological cultures; Chemical preparations for pharmaceutical or medical purposes, namely, for sterilizing control, disinfection control, hygiene control, washing processes and thermo-disinfection control; Cultures of microorganisms for medical or veterinary use; Disinfectants for hygiene purposes; Media for bacteriological cultures; Medical adhesive tape; Sterilising preparations
International Class 44
Health center services; Hospital services; Managed health care services; Medical clinic services; Pest control services for agriculture, aquaculture, horticulture and forestry; Sanatorium services; Vermin exterminating for agriculture, aquaculture, horticulture and forestry
Specifically, the foreign registration contains the following wording: “all the products[] of [Class 5] except for the following: Disinfectant soap; medicated dentifrices; medicated soap; babies’ diaper-pants; yeast dietary supplements.”
The identification of goods filed with the application uses broad language to describe “antiseptics,” “chemical preparations for pharmaceutical or medical purposes, namely, for sterilizing control, disinfection control, hygiene control, washing processes and thermo-disinfection control,” “disinfectants for hygiene purposes,” and “sterilising preparations.” This broad wording encompasses goods specifically excluded from the foreign registration, such as, “disinfectant soap,” and “medicated soap.” As such, this wording exceeds the scope of the goods in the foreign registration.
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of goods in the U.S. application to correspond to the goods in the foreign registration, ensuring that all goods beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.
Applicant should note the following additional application requirement.
Complete Copy of Foreign Certificate of Registration Required
Therefore, to perfect the Section 44(e) basis, applicant must submit an acceptable complete true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in applicant’s country of origin. See 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01. If the foreign certificate of registration is not written in English, applicant must also provide an English translation. 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).
Comments
Comments
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.
Examining Attorney
Law Office 107
U.S. Patent and Trademark Office
(571) 270-3151
Troy.Knight@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.