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:  January 08, 2020

 

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).

 

SUMMARY OF ISSUES:

 

• REQUIREMENT -- IDENTIFICATION OF GOODS AND SERVICES; and
• MULTIPLE-CLASS APPLICATION REQUIREMENTS.

 

REQUIREMENT -- IDENTIFICATION OF GOODS AND SERVICES

 

Applicant must clarify some of the wording in the identification of goods and/or services in International Class(es) 009 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the goods and/or services are.  Further, this wording could identify goods and/or services in more than one international class.  For example, downloadable computer software is in International Class 009 and providing temporary use of online non-downloadable computer software is in International Class 042. 

 

Applicant may substitute the following wording, if accurate:

 

International Class 007

 

Grinding mills for chemical processing; Machines, namely, crushers, impact mills, breakers, pulverizers, mixers and blenders and parts therefor, for industrial and commercial applications; milling machines; centrifugal mills

 

International Class 009

 

Chromatography apparatus for laboratory use; Laboratory equipment, namely, crucibles; Fermenter apparatus for laboratory use; furnaces for laboratory use; ovens for laboratory use; laboratory trays; laboratory pipettes; laboratory centrifuges; laboratory robots; laboratory apparatus and instruments namely, mixers, overhead stirrers, namely, _____ [applicant must specify the common commercial name], shakers, namely, _____ [applicant must specify the common commercial name], homogenizers, mills, namely, _____ [applicant must specify the common commercial name], rotary evaporators for laboratory use, namely, _____ [applicant must specify the common commercial name]; measuring apparatus namely, measuring apparatus for laboratory apparatus and processing machines, namely, _____ [applicant must specify the common commercial name]; pressure measuring apparatus; electronic testing apparatus, not for medical purposes, namely, _____ [applicant must specify the common commercial name]; weighing apparatus and instruments; machines for dispensing pre-determined dosages of medication; dosimeters; viscosimeters; temperature indicators; bio-reactors for laboratory use, namely, _____ [applicant must specify the common commercial name]; vacuum gauges; calorimeters; laboratory apparatus namely, magnetic stirrers, namely, _____ [applicant must specify the common commercial name]; downloadable computer software for use with apparatus and instruments for scientific research, namely, _____ [applicant must specify the purpose or function of the software, as well as the field of use, if applicable]; downloadable computer programs software for data processing; computer software, namely recorded or downloadable computer software for operating and/or servicing _____ [applicant must specify] processing machines; computer software, namely, downloadable computer software for operating and/or servicing _____ [applicant must specifically identify the laboratory apparatus and instruments]any of the forgoing laboratory apparatus and instruments; stirrers for chemical preparations; distillation apparatus for scientific purposes

 

International Class 011

 

Cooling evaporators; evaporators for chemical processing; heat exchangers for chemical processing; distillers for chemical processing; distilling units; laboratory burners

 

International Class 042

 

Providing temporary use of on-line non-downloadable computer software for use with apparatus and instruments for scientific research, namely, _____ [applicant must specify the purpose or function of the software, as well as the field of use, if applicable]; Providing temporary use of on-line non-downloadable computer software for data processing; Providing temporary use of on-line non-downloadable computer software for operating _____ [applicant must specifically identify the laboratory apparatus and instruments].

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b) and 44:

 

(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 four classes; however, applicant submitted a fee(s) sufficient for only three 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response guidelines.  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.

 

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 refusal(s) and/or requirement(s) 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. 

 

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.    

 

 

/Jeff Molinoff/

Jeffrey S Molinoff

US Patent & Trademark Office

Examining Attorney

Law Office 122

571.272.7290

jeffrey.molinoff@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 January 08, 2020 for

U.S. Trademark Application Serial No. 88641064

 

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. 

 

 

/Jeff Molinoff/

Jeffrey S Molinoff

US Patent & Trademark Office

Examining Attorney

Law Office 122

571.272.7290

jeffrey.molinoff@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 January 08, 2020, 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.”