To: | Becton, Dickinson and Company (dawn.harley@bd.com) |
Subject: | U.S. Trademark Application Serial No. 88732196 - BD ELIENCE - TMK202067BDU |
Sent: | June 23, 2020 07:57:41 AM |
Sent As: | ecom102@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88732196
Mark: BD ELIENCE
|
|
Correspondence Address:
|
|
Applicant: Becton, Dickinson and Company
|
|
Reference/Docket No. TMK202067BDU
Correspondence Email Address: |
|
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: June 23, 2020
This application was approved for publication on May 1, 2020. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
Class 9 Identification Unacceptable In Part-Amendment Required
The wording “Specimen transport containers, petri dishes, anaerobic jars and coagulation timers” in International Class 9 is partially indefinite and overly broad as follows. The wording “Specimen transport containers” is indefinite and could encompass goods in other multiple classes. Applicant must amend this wording to further specify the common commercial name of the goods. For example, the wording “Nonmetal containers for the transport and storage of organs, tissues and cells for medical and scientific purposes” is acceptable in International Class 20; the wording “Containers and trays specially designed for transporting and holding radiopharmaceuticals” is acceptable in International Class 10; the wording “petri dishes; coagulation timers” is acceptable as previously amended in International Class 9; the wording “anaerobic jars sold empty for laboratory use” is acceptable in International Class 9.
The wording “Automated laboratory robot and related operating software, accessories and consumables which prepares liquid-based, thin layer cellular samples from a cell suspension for use in medical, clinical and scientific procedures and devices for use therewith, namely, vials, tubes, disposable kits, pipettes, settling chambers and slides” in International Class 9 is indefinite and overly broad as to “and related operating software, accessories and consumables” and must be amended to further specify the common commercial name or type of the goods. The wording “Operating software” is indefinite because it does not indicate whether the software is downloadable or recorded, which is required for classification in International Class 9. Under Nice 11-2019, identifications for computer programs/software in Class 9 must (1) indicate the function and, if applicable, the content and/or particular field of use of the goods, AND (2) specify that the goods are “downloadable” and/or “recorded.” The wording “and related…accessories” is indefinite and overbroad. The common commercial name of the accessories must be further specified for accurate classification. See TMEP §1402.03(a). For example, the wording “Automated laboratory robot and related recorded operating software, which prepares liquid-based, thin layer cellular samples from a cell suspension for use in medical, clinical and scientific procedures and devices for use therewith, namely, vials, tubes, disposable lab testing kits, pipettes, settling chambers and slides, sold as a unit therewith” is acceptable in International Class 9.
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.
Additional Class 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 may be classified in at least five classes; however, applicant submitted a fee(s) sufficient for only four 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
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.
Ferraiuolo, Dominic
/DominicJFerraiuolo/
Examining Attorney, U.S.P.T.O.
Law Office 102
tel: 571-272-9156
fax: 571-273-9102
dominic.ferraiuolo@uspto.gov
How to respond. Click to file a response to this nonfinal Office action.
RESPONSE GUIDANCE