NOTE TO THE FILE
Sent to TICRS as Serial Number: 88389484SERIAL NUMBER: 88446126
DATE: 06/27/2019
NAME: drobertson1
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: Robertson, Deirdre G.
Sent: Thursday, June 27, 2019 3:27 PM
To: Kazuyo Morita <KMorita@hollandhart.com>
Cc: HH Docket <Docket@hollandhart.com>
Subject: RE: USPTO Trademark Application Serial Nos. 88389484 (EPACER), 88410001 (XCELLIGENCE RTCA ESIGHT) and 88446126 (ADVANTEON); Your Ref. No. 86981.0735, 743, 758
No problem. Will do. Thank you.
Deirdre
From: Kazuyo Morita [mailto:KMorita@hollandhart.com]
Sent: Thursday, June 27, 2019 3:26 PM
To: Robertson, Deirdre G. <Deirdre.Robertson@USPTO.GOV>
Cc: HH Docket <Docket@hollandhart.com>
Subject: RE: USPTO Trademark Application Serial Nos. 88389484 (EPACER), 88410001 (XCELLIGENCE RTCA ESIGHT) and 88446126 (ADVANTEON); Your Ref. No. 86981.0735, 743, 758
Deirdre,
The client was traveling yesterday, and I have not had a chance to confer with her on these issues. I hate to inconvenience you, but I think it’s unlikely we will be able to respond within the timeframe. Could you kindly issue Office Actions in each of these matters?
Best regards,
Kazuyo
Kazuyo Morita
Attorney, Holland & Hart LLP
1800 Broadway, Suite 300, Boulder, CO 80302
T 303.473.2701 F 303.473.2720
CONFIDENTIALITY NOTICE: This message is confidential and may be privileged. If you believe that this email has been sent to you in error, please reply to the sender that you received the message in error; then please delete this e-mail.
From: Robertson, Deirdre G. <Deirdre.Robertson@USPTO.GOV>
Sent: Thursday, June 27, 2019 8:17 AM
To: Kazuyo Morita <KMorita@hollandhart.com>
Cc: HH Docket <Docket@hollandhart.com>
Subject: RE: USPTO Trademark Application Serial Nos. 88389484 (EPACER), 88410001 (XCELLIGENCE RTCA ESIGHT) and 88446126 (ADVANTEON); Your Ref. No. 86981.0735, 743, 758
Importance: High
Ms. Morita,
Just checking in to see if EAs are possible today. Please note that I will hold off with the written actions until this afternoon in the hope of hearing from you. Thank you!
Deirdre
From: Robertson, Deirdre G.
Sent: Wednesday, June 26, 2019 3:00 PM
To: kmorita@hollandhart.com
Cc: docket@hollandhart.com
Subject: USPTO Trademark Application Serial Nos. 88389484 (EPACER), 88410001 (XCELLIGENCE RTCA ESIGHT) and 88446126 (ADVANTEON); Your Ref. No. 86981.0735, 743, 758
Importance: High
Ms. Morita,
I am the trademark examining attorney assigned by the US Patent and Trademark Office to review the above mentioned applications. I have completed my review, and I will need a few amendments before I am able to approve the applications for publication/registration. These amendments, however, are able to be done by EA rather than issuing an Office action requiring your written response. Therefore, I propose the following:
App. Ser. No. 88389484 (EPACER) – It appears based on a review of the applicant’s website that a key feature of the goods is the “electrical pacing”. Therefore, I would ordinarily issue a refusal under Section 2(e)(1) because the mark is merely descriptive of a feature or function of the goods. But since the mark is already in use on the goods, I can offer amendment to the Supplemental Register via EA.
Additionally, identification of goods needs to amended slightly to make it clear that the manuals and operating software are sold as a unit with the laboratory equipment; the use of the semicolon makes it a bit ambigious. I propose: “laboratory equipment, namely, scientific apparatus for recording and transmitting the activity of cell cultures and cardiac cells, user manuals and computer operating software programs therfor sold as a unit.”
App. Ser. No. 88410001 (XCELLIGENCE RTCA ESIGHT) – RTCA (Real Time Cell Analysis) appears to be a term of art in the industry, and descriptive of a function of the goods. Ordinarily, I would ask for a disclaimer but I note that applicant owns a prior registration for RTCA for sufficiently similar goods under Section 2(f). Therefore, I suggest claiming Section 2(f) in part based on the prior registration. I.e., I propose entering the following statement into the record: “The word “RTCA” in the mark has become distinctive of the goods and/or services as evidenced by the ownership of active U.S. Registration No(s). 5548043 on the Principal Register for the same mark for sufficiently similar goods and/or services.”
App. Ser. No. 88446126 (ADVANTEON) – Under nice 11-2019, software in Class 009 must be specified as “downloadable” and/or “recorded”. Therefore, the portions of the identification of goods for the computer software needs to be clarified to indicate one or both. I propose the following: “Laboratory equipment, namely, instrumentation for measuring, detecting or analyzing chemical or biological samples, including biological cells, polymer beads of different sizes such as from nanometer to mm range or scale; recorded and downloadable computer software to operate and control laboratory equipment and conduct data acquisition from equipment and to communicate with network for data transfer and sharing; recorded and downloadable computer software for analyzing data acquired from laboratory equipment to derive chemically or biologically-relevant information; laboratory apparatus and devices for facilitating multiple sample handling of cells, namely, microtiter plates, plastic tubes, glass tubes, racks for supporting sample tubes and devices for calibrating sample positions.”
Once I have your approval, I will enter the amendments into the record by examiner’s amendment. Alternatively, if I do not hear back from you or you would rather submit written response, I will need to issue a formal Office actions. As such, I would greatly appreciate from both of you your prompt attention to these matters, and look forward to hearing from you both either by email or phone at the number listed below. Thank you.
Deirdre
/Deirdre G. Robertson/
Trademark Examining Attorney
Law Office 111
United States Patent and Trademark Office
Phone No. (571) 272-8806
Fax No. (571) 273-9111