To: | Private ID Test, LLC (trademark@fbfk.law) |
Subject: | U.S. Trademark Application Serial No. 88609193 - BBOX - 9741.009 |
Sent: | November 13, 2019 01:56:12 PM |
Sent As: | ecom112@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88609193
Mark: BBOX
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Correspondence Address: FERGUSON BRASWELL FRASER KUBASTA PC 2500 DALLAS PARKWAY, SUITE 600
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Applicant: Private ID Test, LLC
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Reference/Docket No. 9741.009
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: November 13, 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.
· SEARCH OF OFFICE’S DATABASE OF 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).
· IDENTIFICATION OF GOODS AND/OR SERVICES
Applicant must clarify indefinite and/or misclassified wording in the identification of goods and/or services. See TMEP §1402.01.
Please note the following specific issues:
- “kits” of the types identified in the application are generally classified by primary components
- Diagnostic devices for scientific/research (i.e., non-medical) use, and for medical use, are generally classified in Classes 9, and 10, respectively.
- Diagnostic preparations (e.g., buffers, reagents) for scientific/research use, and for medical use, are generally classified in Classes 1, and 5, respectively.
The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type. Applicant may adopt the following identification of goods and/or services, if accurate:
CLASS 9: Diagnostic test kits for non-medical scientific use comprised primarily of devices, namely, lancets, test tubes, wipes and swabs for collecting bodily fluids, collection envelopes, and instruction manuals for using diagnostic test kits
CLASS 10: Diagnostic test kits for medical purposes, consisting primarily of {specify parts, e.g., blood sampling and collecting tubes} for collecting bodily fluids for use in disease detection, namely, for detecting HIV, syphilis, herpes, and hepatitis
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 at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
Classification of Goods/Services
If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Class 10. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
Multiple-Class Application Requirements
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
- Explain whether the letter “B,” or the terms “BBOX” or “BOX,” have any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is/are term(s) of art within applicant’s industry.
See 37 C.F.R. §2.61(b); TMEP §814.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
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
/Lief Martin/
Examining Attorney
Law Office 112
571-272-3434
lief.martin@uspto.gov
RESPONSE GUIDANCE