To: | Cole-Parmer Instrument Company LLC (trademarks@ipla.com) |
Subject: | U.S. Trademark Application Serial No. 88687547 - ANTYLIA SCIENTIFIC - N/A |
Sent: | February 21, 2020 11:24:43 AM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88687547
Mark: ANTYLIA SCIENTIFIC
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Correspondence Address: |
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Applicant: Cole-Parmer Instrument Company LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: February 21, 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.
The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
SUMMARY OF ISSUES APPLICANT MUST ADDRESS
· Requirement: Applicant must disclaim the descriptive term, “SCIENTIFIC”
· Advisory regarding evidence of use for a house mark.
DISLCAIMER REQUIRED
Applicant must disclaim the wording “SCIENTIFIC” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Applicant explicitly notes that its goods and services involve the fields of scientific equipment instrumentation. As such, the term “SCIENTIFIC” is descriptive of a characteristic or purpose of Applicant’s goods and services, and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SCIENTIFIC” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
ADVISORY
If applicant cannot provide such evidence, applicant will be required to amend the identification to (1) delete “house mark for” and (2) specify the common commercial or generic name for each good and service, if not already specified. See TMEP §§1402.01, 1402.03(b).
Responding to this Office Action
How to respond. Click to file a response to this nonfinal Office action.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
If the applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.
/Aaron Rosenthal/
Examining Attorney
Law Office 120
Telephone: 571-272-4625
Email: Aaron.Rosenthal@USPTO.gov
RESPONSE GUIDANCE