To: | Roche Diagnostics GmbH (indianapolis.trademarks@roche.com) |
Subject: | U.S. Trademark Application Serial No. 88838732 - ELECSYS GALAD - N/A |
Sent: | June 21, 2020 04:18:16 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88838732
Mark: ELECSYS GALAD
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Correspondence Address: ROCHE DIAGNOSTICS OPERATIONS, INC.
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Applicant: Roche Diagnostics GmbH
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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: June 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.
SEARCH OF USPTO DATABASE OF MARKS
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.
CLASSIFICATION AND IDENTIFICATION OF GOODS AND SERVICES
Several of the goods in the identification of goods must be clarified because they are indefinite and too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it
will be shown with a line through it such as this: strikethrough. When making its amendment, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following classification and identification of goods and services, if accurate:
International Class 009: DOWNLOADABLE computer software for use in the field of in vitro diagnostics; DOWNLOADABLE computer software featuring algorithms for laboratory test data analysis; DOWNLOADABLE COMPUTER Software for the custom design of assays and reagents for use in the medical and life sciences fields; computer software having processing algorithm used to identify, filter, analyze, visualize and manage data from biological information
International Class 042: providing non-downloadable computer software featuring algorithms for laboratory test data analysis
See TMEP §1402.01
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.
SIGNIFICANCE OF WORDING
To permit proper examination of the application, applicant must explain whether the wording “ELECSYS GALAD” in the mark has any significance in the trade or industry or as applied to applicant’s goods and/or services, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
RESPONSE GUIDELINES
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.
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.
/Samir Ramesh-Patel/
Samir Ramesh-Patel
Examining Attorney
Law Office 106
(571) 272-6699
samir.ramesh-patel@uspto.gov
RESPONSE GUIDANCE