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:  December 30, 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 Results

 

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:

 

• Amendment of identification of goods
• Disclaimer of “BIOSYSTEMS”

 

The following informalities must be addressed.

 

Identification of Goods

 

The identification of goods is indefinite and must be clarified because it fails to identify all of the goods specifically enough for the Office to classify them.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In International Class 5, the wording “chemical reagents for medical and scientific use” in International Class 5 is unacceptable because “chemical reagents for scientific use” are properly classified in International Class 1.  

 

The identification for software in International Class 9 is indefinite and too broad and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable.  See id.  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

The following are examples of acceptable identifications in International Class 9:  “recorded desktop publishing software” and “downloadable mobile applications for managing bank accounts.”  Additionally, the following are acceptable identifications in International Class 41:  “providing online non-downloadable game software” and “providing temporary use of non-downloadable game software.”  Finally, the following are acceptable identifications in International Class 42:  “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.”

 

The wording “nucleic acid polymer particles for use in genetic sequencing” in International Class 9 is indefinite and misclassified.  The goods are properly classified in International Class 1.

 

Suggested amendments appear in bold, while wording that requires further clarification appears in italics.  The correct classification for the goods/services also appears below.

 

Please note that the goods and services in International Classes 1 and 42 are acceptable as written.

 

Applicant may adopt the following identification, if accurate: 

 

“Assays and reagents for scientific or research use; reagent kits for preparation or performance of single molecule assays for scientific or research use; reagent kits comprising components for single molecule assays for scientific or research use; kits comprising primarily of reagents, enzymes and/or nucleotides for genetic research diagnostic reagents for scientific or research use in the field of cancer; diagnostic reagents for scientific research relating to molecular identification and digital quantification; diagnostic test kits for scientific use comprising reagents, flowcells, microfluidic devices, data analysis software and support documentation, namely, instructional manuals, therefor; diagnostic test kits comprising reagents for scientific research relating to molecular identification and digital quantification; diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology; diagnostic reagents for clinical or medical laboratory use, namely, reagents for proteomics, RNA transcription and microRNA expression profiling, small- molecule analysis, single nucleotide polymorphisms analysis, insertion and deletion mutations, DNA sequencing, detection of polymorphisms in human fluids, detection of copy number variations, detection of genomic rearrangements and clinical, oncology, and hematology diagnostics; multiparameter quantitative detection and analysis products and technology for research and diagnostics for a variety of uses in the health care and other life science sectors, namely, reagents for scientific or medical research use, diagnostic preparations and reagents for scientific or research uses, namely, RNA transcription profiling, proteomics, clinical diagnostics, environmental monitoring, biosurveillance, agricultural inspection, forensic testing of samples containing microorganisms or human fluids, small-molecule analysis, single nucleotide polymorphisms analysis, and DNA sequencing; test kits, consisting of chemical preparations for scientific purposes, in particular for the detection, diagnosis, progress monitoring and progress prediction of diseases, including inflammations, infections, disorders of the central nervous systems, cardiovascular, neurological, endocrine, autoimmune and genetic disorders and cancers; assays, reagents, enzymes, polymerases, buffers and nucleotides, and kits comprised thereof, all for scientific or research use; multiparameter quantitative detection and analysis products and technology for research and diagnostics for a variety of uses in life science sectors namely, diagnostic reagents for scientific in vitro use in biochemistry, clinical chemistry and microbiology, RNA and microRNA expression transcription profiling, proteomics, clinical diagnostics, environmental monitoring, agricultural inspection, small- molecule analysis, single nucleotide polymorphisms analysis, and DNA sequencing; chemical reagents for scientific use; nucleic acid polymer particles for use in genetic sequencing” in International Class 1;

 

“Diagnostic preparations for medical and veterinary medical purposes, namely, for the preparation of samples, the modification and manipulation of samples and for the marking, separation, isolation, purification and reproduction and analysis of biopolymers, namely, nucleic acids, proteins, macromolecules and biologically active substances; chemical, biochemical and biotechnological products, namely, reagents and solvents for medical use for the preparation of samples, the modification and the manipulation of samples and for performing marking, separation, isolation, purification, reproduction and analysis methods for biopolymers, namely, nucleic acids, proteins, macromolecules and biologically active substances for diagnostic purposes; kits comprising diagnostic preparations for medical and veterinary medical diagnostic purposes for the preparation of samples, the modification and manipulation of samples and for marking, separation, isolation, purification, reproduction and analysis of biopolymers, namely, nucleic acids, proteins, macromolecules and biologically active substances in the nature of nucleic acids from biological or biochemical sample material diagnostic reagents for medical use in the field of cancer; diagnostic reagent kits comprising primarily of diagnostic reagents for medical use in the field of cancer; chemical reagents for medical and scientific use; diagnostic test kits for medical use comprising primarily reagents, flowcells, solid matrix materials, microfluidic devices, recorded software for {INDICATE specific function of the software} sold as a unit with instructional manuals therefor; medical diagnostic test kits for detecting pathogens, comprising primarily reagents, flowcells, solid matrix materials, microfluidic devices sold as a unit and instructional manuals therefor; medical diagnostic kits comprising medical diagnostic reagents for use in detecting the presence of analytes in samples and identifying sample type, and equipment, namely, medical diagnostic immuno-assays for screening samples detecting the presence of analytes in samples and identifying sample type, sold as a unit with instructional manuals; replacement parts for medical diagnostic kits for use in detecting the presence of analytes in samples and identifying sample type in the nature of equipment, namely, medical diagnostic immune-assays for screening samples detecting the presence of analytes in samples and identifying sample type; medical diagnostic reagents for RNA transcription and microRNA expression profiling, proteomics, small molecule analysis, single nucleotide polymorphisms analysis, insertion and deletion polymorphisms, DNA sequencing, detection of polymorphisms in human fluids, detection of copy number variations and structural variants, and clinical, oncology, and hematology diagnostics; multiparameter quantitative detection and analysis products and technology for diagnostics for a variety of uses in health care namely, medical diagnostic reagents for RNA and microRNA expression transcription profiling, proteomics, clinical diagnostics, environmental monitoring, agricultural inspection, small-molecule analysis, single nucleotide polymorphisms analysis, and DNA sequencing; tests designed to isolate and extract cells for genetic analysis, namely, reagents for medical diagnostic use; medical diagnostic reagents and assays for testing of body fluids; kits consisting primarily of medical diagnostic reagents and assays for testing of body fluids; reagents in the form of cell markers and molecule markers for medical purposes” in International Class 5;

 

“Laboratory instruments for scientific research, namely, optical detectors for genetic sequencing and biochemical analysis; scientific equipment and instruments, namely, semiconductor chips with integrated sensors for nucleic acid sequencing, semiconductor chip readers and related recorded computer software used for nucleic acid sequencing and analysis; genome analyzer machines and related recorded computer operating software; downloadable or recorded computer software for monitoring of genome analyzer machines from handheld or mobile wireless communication devices capable of voice, data and/or image transmission; downloadable or recorded computer software for the interpretation of data from the genome analyzer machines; downloadable or recorded computer software for displaying, organizing, storing, sharing and interpreting of DNA data” in International Class 9.

 

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.

 

Disclaimer Required

 

Applicant must disclaim the wording “BIOSYSTEMS” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

The term “biosystems” refers to “A living organism or a system of living organisms that can directly or indirectly interact with others.”  See attached definition from Dictionary.com. http://www.dictionary.com/browse/biosystem

 

As evidenced by the identification of goods and services, the applicant’s goods and services relate to scientific research, genetic research, medical research, clinical research, DNA sequencing, and medical diagnostic and testing among other scientific studies and subject matters.  As such, the proposed wording “biosystems” in the context of the applicant’s goods and services is merely descriptive of the subject matter of the applicant’s goods and services.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “BIOSYSTEMS” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

Response to Office Action

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

 

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.  

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

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

 

 

/Jenny Park/

Examining Attorney

Law Office 104

571-272-8857

jenny.park@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 December 30, 2019 for

U.S. Trademark Application Serial No. 88626812

 

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. 

 

 

/Jenny Park/

Examining Attorney

Law Office 104

571-272-8857

jenny.park@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 December 30, 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.”