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:  April 09, 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 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:

• Classification and Identification Requirement
• Multiple-Class Application Requirements
• Section 44 Basis Requirement for Foreign Registration Certificate

 

CLASSIFICATION AND IDENTIFICATION REQUIREMENTS

 

Applicant’s applied-for mark identifies the following goods and services:

 

Class 1: Biological preparations in the nature of eukaryotic cells, isogenic cell lines and bio-production cell lines generated using base editing engineering for scientific, laboratory or medical research; reagents, plasmids and assays for scientific, genetic and medical research; genomic reference control samples for medical laboratory use; molecular biology research tools, in the nature of chemical, biological and biochemical reagents; biological preparations in the nature of separate base editing components including mRNA, rRNA, gRNA, deaminase, nickase, ribonucleotide protein (RNP) for use in scientific, laboratory or medical research; biological preparations in the nature of genetically modified cells and vectors for scientific and research purposes; biological and chemical reagents including complexes of these molecules for research and for clinical and commercial use; Diagnostic preparations and materials generated by the use of base editing components; chemical preparation for use in DNA analysis (medical); DNA, RNA and parts thereof; DNA extracts; DNA reference standards; DNA reference libraries being collections of DNA and gene sequences; gene editing enzymes; protein cell lysates, genomic DNA preparations and Formalin Fixed, Paraffin Embedded (FFPE) engineered tumour tissue mimics for medical diagnostic use; biological, biochemical and chemical reagents, including living cells, genetically modified cells and vectors, genomic DNA, cell cultures and mutant and normal isogenic cell line pairs, peptides, proteins and nucleic acids or complexes of these molecules for medical and commercial use; all the aforesaid goods being medical preparations; Treatment of biopharmaceutical materials; custom manufacture of cells and vectors for diagnostic, medical and commercial applications in relation to cell and gene therapies; consultancy and advisory services relating to the aforesaid services; Custom cell-line engineering services; base-editing services; gene engineering services; research and development services in the creation of libraries or collections of biologicals including cells and cell lines; creating libraries or collections of normal and mutated genes; research on cell line models; contract research on cell line models; research and development services relating to targeting therapies to individuals; establishing patient genotypes; research and development services relating to combining therapies for individuals; research and development relating to reagents; disease modelling; design of clinical trials; research and development in re-positioning existing drugs from other therapeutic indications; consultancy and advisory services relating to the aforesaid services; all of the aforesaid services relating to biological and medical research and research and development in the field of cells and cell therapies, genome editing, genetic engineering and gene therapies

 

While “Biological preparations in the nature of eukaryotic cells, isogenic cell lines and bio-production cell lines generated using base editing engineering for scientific, laboratory or medical research; reagents, plasmids and assays for scientific, genetic and medical research; genomic reference control samples for medical laboratory use; molecular biology research tools, in the nature of chemical, biological and biochemical reagents; biological preparations in the nature of separate base editing components including mRNA, rRNA, gRNA, deaminase, nickase, ribonucleotide protein (RNP) for use in scientific, laboratory or medical research; biological preparations in the nature of genetically modified cells and vectors for scientific and research purposes; biological and chemical reagents including complexes of these molecules for research and for clinical and commercial use” is all properly in Class 1. The only issue is “for … commercial use,” which is unclear. If accurate, applicant should amend this to “for… industrial use.” The remaining identification is overbroad and misclassified.

 

The wording “Diagnostic preparations and materials generated by the use of base editing components; chemical preparation for use in DNA analysis (medical); DNA, RNA and parts thereof; DNA extracts; DNA reference standards; DNA reference libraries being collections of DNA and gene sequences; gene editing enzymes; protein cell lysates, genomic DNA preparations and Formalin Fixed, Paraffin Embedded (FFPE) engineered tumour tissue mimics for medical diagnostic use; biological, biochemical and chemical reagents, including living cells, genetically modified cells and vectors, genomic DNA, cell cultures and mutant and normal isogenic cell line pairs, peptides, proteins and nucleic acids or complexes of these molecules for medical and commercial use” in the identification of goods for International Class 1 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass goods used for science and research purposes in Class 1 or these goods used for medical treatment in Class 5. Applicant must clarify the nature and purpose of these goods and classify them accordingly. Additionally, applicant adds “all of the aforesaid goods for medical purposes,” but many of the previous goods have other purposes specified. So it is unclear what this wording is meant to modify. Additionally, as stated above, “commercial use” is unclear. All goods are intended to be in commerce. Biological preparations for industrial use belong in Class 1. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. It appears that the majority of these goods are biological preparations for medical purposes, and that is how the identification is suggested to be amended, as shown below. However, applicant must specify what medical purposes, i.e., what diseases or conditions these goods are used for.

 

However, in addition, “DNA reference libraries being collections of DNA and gene sequences” and “DNA reference standards” appears to identify a service in Class 42; providing a collection of information or sample types is a service. If this refers to a literal physical collection of DNA samples, applicant should clarify that these goods are “Collection of DNA and gene sequences for research and reference porpoises provided as DNA microarrays and DNA chips,” which is properly in Class 9. Both identification are provided below.

 

The remaining identifications are properly in Class 40 and 42, as shown below. Applicant may choose to add of the additional classes implicated in the full identification, but then applicant will need to comply with the additional Multiple-Class Application Requirements listed below. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. 

 

Within the Class 40 and 42 identifications, some items require additional clarification. As shown in the suggestion below, some identifications require further clarification that these services are for research purposes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Genetic testing for medical purposes is in Class 44. The final entry in applicant’s identification appears to indicate that the scope of these services remain within Class 42 research and testing services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

Additionally, “libraries” refer to services within Class 41. It appears applicant is referring to databases, which would be properly classified with the type of information provided within the database. Similarly, applicant should specify the “collections” are collections of information and all for research purposes. Without these amendments, these identifications are overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

If accurate, applicant may adopt the following identification and associated classifications, which accounts for all the necessary revisions as discussed above:  

 

Class 1: Biological preparations in the nature of eukaryotic cells, isogenic cell lines and bio-production cell lines generated using base editing engineering for scientific, laboratory or medical research; reagents, plasmids and assays for scientific, genetic and medical research; genomic reference control samples for medical laboratory use; molecular biology research tools, in the nature of chemical, biological and biochemical reagents; biological preparations in the nature of separate base editing components including mRNA, rRNA, gRNA, deaminase, nickase, ribonucleotide protein (RNP) for use in scientific, laboratory or medical research; biological preparations in the nature of genetically modified cells and vectors for scientific and research purposes; biological and chemical reagents including complexes of these molecules for research and for clinical and industrial use

 

Class 5: Diagnostic preparations and materials generated by the use of base editing components for medical purposes; chemical preparation for use in DNA analysis for medical purposes; biological preparations in the nature of protein cell lysates, genomic DNA preparations and Formalin Fixed, Paraffin Embedded (FFPE) engineered tumour tissue mimics for medical diagnostic use; biological preparations in the nature of DNA, RNA and parts thereof, DNA extracts, gene editing enzymes, biological, biochemical and chemical reagents, including living cells, genetically modified cells and vectors, genomic DNA, cell cultures and mutant and normal isogenic cell line pairs, peptides, proteins and nucleic acids or complexes of these molecules for medical use, all for medical purposes being for medical diagnostic use and for the prevention and treatment of cancer and genetically inheritable conditions

 

Class 9: Collection of DNA and gene sequences for research and reference porpoises provided as DNA microarrays and DNA chips

 

Class 40: Treatment of biopharmaceutical materials; custom manufacture of cells and vectors for diagnostic, medical and commercial applications in relation to cell and gene therapies; consultancy and advisory services relating to the aforesaid services;

 

Class 42: Custom cell-line engineering services; gene base-editing services for research purposes; gene engineering services; research and development services in the creation of databases or collections of information on biologicals including cells and cell lines for research purposes; creating and providing databases or collections of information of normal and mutated genes for research purposes; providing DNA reference databases being collections of DNA and gene sequences for research purposes; research on cell line models; contract research on cell line models; research and development services relating to targeting therapies to individuals; establishing patient genotypes for research or analysis purposes; research and development services relating to combining therapies for individuals; research and development relating to reagents; disease modelling for research purposes; design of clinical trials for research purposes; research and development in re-positioning existing drugs from other therapeutic indications; consultancy and advisory services relating to the aforesaid services; all of the aforesaid services relating to biological and medical research and research and development in the field of cells and cell therapies, genome editing, genetic engineering and gene therapies

 

If applicant adopts the suggested amendment of the goods and services, then applicant must amend the classification to include associated International Classes. Applicant may also choose to add some but not all Classifications, or limit the goods as specified to include only the goods in the current Classifications. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. 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 services or add goods and services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and 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 services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

Applicant should note the additional requirements pertaining to multiple-class applicants, as set forth below.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)        List the goods and 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 already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least five classes; however, applicant submitted a fee sufficient for only one class.  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 44 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 changed the federal trademark rules to eliminate the TEAS Regular application, which is now considered a “TEAS Standard” application.  See 37 C.F.R. §2.6(a)(iii).  The fee for adding classes to a TEAS Standard application is $275 per class.  See id.  For more information about these changes, see the Mandatory Electronic Filing webpage.

 

Section 44 Basis Requirement for Foreign Registration Certificate

 

The application specifies a basis under Trademark Act Section 44(e); however, it does not include a copy of a foreign registration.  An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin.  TMEP §1004.01.  If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin.  If the foreign registration is not written in English, applicant must also provide an English translation.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

RESPONSE AND ASSISTANCE

 

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 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. 

 

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

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 April 09, 2020 for

U.S. Trademark Application Serial No. 88768179

 

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. 

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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 April 09, 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.”