To: | Life Technologies Corporation (TFS-TrademarkDocketing@thermofisher.com) |
Subject: | U.S. Trademark Application Serial No. 88701598 - TRUEMARK - N/A |
Sent: | August 06, 2020 06:25:57 PM |
Sent As: | ecom118@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88701598
Mark: TRUEMARK
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Correspondence Address:
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Applicant: Life Technologies Corporation
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: August 06, 2020
This Office action is in response to applicant’s communication filed on 06/03/2020.
In a previous Office action dated 02/03/2020, applicant was required to satisfy the following requirement:
The trademark examining attorney maintains and now makes FINAL the requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
Summary of issues made FINAL that applicant must address:
Requirement: Identification of goods clarification
In the 06/30/2020 Response to the Office Action, applicant did not address this requirement. Therefore, the identification of goods clarification requirement is now made FINAL for the reasons set forth below. 37 C.F.R. §§2.32(a)(6), 2.63(b); TMEP §1402.01.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first. See id. Generally, a kit is classified in the same international class as the majority of the components in the kit. See id. For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).
If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit. See id. For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).
For kits that make a particular product, the identification must specify the product being made using the following format: “kits for making [specify item] comprising [specify components]” or “kits for making [specify item] comprised of [specify components].” See id. Generally, this type of kit is classified in the international class of the product being made. For example, “kits for making wine consisting of fresh grapes and chemicals for fermenting wine” are classified in International Class 33 (the class for “wine”).
For examples of other acceptable identifications for kits (e.g., sewing kits, face painting kits), please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual (ID Manual).
Suggested identification.
Instructions and suggested changes are shown in bold text. Applicant may adopt the following identification, if accurate:
Class 1: Consumables comprising of chemical and biological reagents, assays, {specify the type of kits or the primary components of the kits, e.g., chemical test kits, kits consisting primarily of chemicals}, {specify the type of primers, e.g., DNA} primers, oligonucleotides, enzymes and nucleotides for research and genetic analysis for {specify the purpose of the genetic analysis, research purposes}
Identification advisories.
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Tina Brown/
Trademark Examining Attorney
Law Office 118
E: tina.brown@uspto.gov
T: 571-272-8864
RESPONSE GUIDANCE