Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL OFFICE ACTION

 

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 05, 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.  

 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

The assigned trademark examining attorney has reviewed the referenced application.  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.

 

 

OFFICE SEARCH

 

The trademark examining attorney’s search of the Office’s database of registered and pending marks has revealed 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:

• Requirement – Identification of Goods and Services; Amendment Required
• Requirement – Mark Description; Amendment Required
• Requirement – Attorney Information Required

 

 

I. IDENTIFICATION OF GOODS AND SERVICES

 

Class 9

 

The identification for software is indefinite and must be clarified to specify the purpose or function of the software.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Applicant may indicate that it is operating software, if accurate.

 

The wordings “Scientific apparatus comprised of one or more of the following, microelectromechanical devices (MEMS) in the nature of electronic sensors and actuators, microfluidic devices, and optical sensors and components therefor, all used for sampling fluids and performing fluid analysis” and “Scientific instrument in the nature of microfluidic and macrofluidic devices for processing samples for the preparation and analysis of biomolecules” in the identification of goods is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording 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 may clarify that they are “research laboratory analyzers”, if accurate.

 

Class 10

 

The wording “Medical and diagnostic medical instruments, namely, microfluidic and macrofluidic devices providing cell and particle analysis, detection, or counting for medical, clinical, medical diagnostic, and therapeutic uses” in the identification of goods must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass goods for medical scientific use in Class 9 and medical treatment use in Class 10.

 

The identification of goods appears to identify software as a component of other finished goods rather than discrete products.  See TMEP §1402.05(a).  The application must accurately identify the specific goods with which applicant is using or intends to use the mark; thus, applicant must clarify the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.05(a). 

 

Applicant must amend the identification to clarify (i) the function of the software, (ii) whether it is sold as a discrete product or a component of other finished goods; and (iii) if it is a discrete product, whether it is recorded or downloadable (as goods in Class 9) or non-downloadable (as a service in Class 42).  TMEP §1402.05(a).  The proper international class for such component or ingredient is the international class of the finished product.  Id.

 

Applicant may adopt the following wording, if accurate:  Integrated operating software sold as a component of the foregoing medical instruments.

 

Applicant may adopt the following amended identification, if accurate:

 

IC 009: Microfluidic and macrofluidic devices providing cell and particle analysis, detection, or counting for scientific, laboratory, biosecurity, forensic, life science, and general research uses; Scientific and measuring devices, namely, laboratory apparatus used to sort, measure, analyze and separate cells for scientific, laboratory, biosecurity, forensic, life science, and general research uses; Research instruments, namely, microfluidic and macrofluidic devices providing cell and particle analysis, detection, or counting for scientific, laboratory, biosecurity, forensic, life science and general research uses; Integrated operating software sold as a unit with the foregoing goods; Scientific apparatus, namely, research laboratory analyzers comprised of one or more of the following, microelectromechanical devices (MEMS) in the nature of electronic sensors and actuators, microfluidic devices, and optical sensors and components therefor, all used for sampling fluids and performing fluid analysis; Scientific instrument, namely, research laboratory analyzers in the nature of microfluidic and macrofluidic devices for processing samples for the preparation and analysis of biomolecules; Fluidic-based instrumentation for sperm sorting for laboratory use, namely, sperm cell sorters; Sperm cell sorting or separating devices comprising microfluidic and macrofluidic devices;

 

IC 010: Medical diagnostic apparatus for testing biological fluids for infection and disease; Medical devices, namely, apparatus used to sort, measure, analyze and separate cells in the fields of clinical therapeutics, assisted reproduction and fertility treatment; Medical and diagnostic medical instruments, namely, microfluidic and macrofluidic devices providing cell and particle analysis, detection, or counting for medical treatment, clinical, medical diagnostic, and therapeutic uses; Integrated operating software sold as a component of unit with the foregoing medical instruments; Medical apparatus and instruments for sorting sperm

 

(Suggested additions are underscored; suggested deletions are stricken.)

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

 

II. MARK DESCRIPTION

 

Applicant must delete from the description any text that does not reference things appearing in the mark, such as interpretation, assessment, or analysis of the mark elements, or indications of how the mark is or is not used or intended to be used.  A description must identify only the literal and design elements shown in the drawing.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

The following description is suggested, if accurate: 

 

The mark consists of a sperm design intersecting with a sun design, next to the stylized wording “ZYMŌT”.

 

 

III. ATTORNEY INFORMATION

 

Attorney bar information required.  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.

 

Attorney attestation required.  Applicant’s attorney must provide the following statement:  “I attest that I am an attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory).”  See 37 C.F.R. §2.17(b)(3).  This is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id. 

 

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  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 issues 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. 

 

 

/Betty Chang/

Examining Attorney

Law Office 115

571-272-6517

bettychang@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 05, 2019 for

U.S. Trademark Application Serial No. 88499743

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

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

 

 

/Betty Chang/

Examining Attorney

Law Office 115

571-272-6517

bettychang@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).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 05, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

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.”