To: | Eagle Analytical Services, Inc. (kdiesner@agdglaw.com) |
Subject: | U.S. Trademark Application Serial No. 88540968 - EAGLE - TM4292 |
Sent: | October 21, 2019 10:04:24 AM |
Sent As: | ecom113@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88540968
Mark: EAGLE
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Correspondence Address: ARONBERG GOLDGEHN DAVIS & GARMISA
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Applicant: Eagle Analytical Services, Inc.
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Reference/Docket No. TM4292
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: October 21, 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.
The term “TMEP” refers to the USPTO’s Trademark Manual of Examining Procedure, a manual written by USPTO trademark attorneys that explains the laws and procedures applicable to the trademark application, registration, and post-registration processes. The USPTO updates the TMEP periodically to reflect changes in law, policy, and procedure.
NO CONFLICTING MARK FOUND
REQUIREMENTS
Before the application can be considered further, the following requirement(s) must be addressed.
IDENTIFICATION OF THE SERVICES
For example, while scientific consultation is in International Class 42, business consultation is in International Class 35 and regulatory compliance consultation is in International Class 45. Services in different classes must be separately listed in the proper class.
For example, applicant may substitute any or all of the following wording, if accurate:
Scientific consulting services in the fields of compounded preparations, quality systems, facility design for compounding pharmacies and Good Manufacturing Practice (GMP) facilities, regulatory compliance, and current good manufacturing practice [in International Class 42]
Business consulting services in the fields of compounded preparations, quality systems, facility design for compounding pharmacies and Good Manufacturing Practice (GMP) facilities, regulatory compliance, and current good manufacturing practice [properly in International Class 35]
Regulatory compliance consulting in the fields of compounded preparations, quality systems, facility design for compounding pharmacies and Good Manufacturing Practice (GMP) facilities, and current good manufacturing practice [properly in International Class 45]
An applicant may only amend an identification to clarify or limit the goods and/or services, but may not broaden or expand the goods and/or services beyond those in the original application and as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Any deleted goods and/or services may not later 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.
CLASSIFICATION
MULTIPLE CLASS REQUIREMENTS
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 35, 42 and 45 and no additional specimen would be needed.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
CLOSING
How to respond. Click to file a response to this nonfinal Office action
/Douglas M. Lee/
Douglas M. Lee
Trademark Examining Attorney
Law Office 113
571-272-9343
douglas.lee4@uspto.gov
RESPONSE GUIDANCE