To: | Molecular Devices, LLC (tmfilings@dlapiper.com) |
Subject: | U.S. Trademark Application Serial No. 88471628 - CLONESELECT - 357272-185 |
Sent: | September 06, 2019 09:50:02 AM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88471628
Mark: CLONESELECT
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Correspondence Address: 555 MISSION STREET, SUITE 2400
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Applicant: Molecular Devices, LLC
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Reference/Docket No. 357272-185
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 06, 2019
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.
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).
Summary of Issues
• Identification of Goods
• U.S. Attorney Bar Information and Attestation Requirements
Identification of Goods
The wording “non-medical research, scientific and pharmaceutical laboratory equipment and apparatus to automatically deposit single cells, image and select cells for use in the research and study of biological specimens” in the identification of goods is indefinite and must be clarified because the wording does not make clear the exact nature of the type of equipment and apparatus that are included, e.g., “fluorometric imaging readers.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “microfluidics” in the identification of goods is indefinite and must be clarified the type, e.g., “microfluidic chips.” See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
Class 09: Non-medical research, scientific and pharmaceutical laboratory equipment and apparatus, namely, [specify, e.g., fluorometric imaging readers] to automatically deposit single cells, image and select cells for use in the research and study of biological specimens; automated single cell sorting and imaging systems comprising microscopes, cameras, microfluidic chips, scanning hardware, computer hardware and computer software for imaging and selection of biological samples, for image and data acquisition, analysis, and reporting in the field of drug discovery and life science research
Additions to Identification Not Permitted
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.
U.S. Attorney Bar Information and Attestation Requirements
Applicant’s attorney must provide the following bar information: (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar. 37 C.F.R. §2.17(b)(3). This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO. Id. If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record. See id.
Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
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.
How to respond. Click to file a response to this nonfinal Office action
/William T. Verhosek/
William T. Verhosek
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 114
571-272-9464
RESPONSE GUIDANCE