Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NON-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). A link to the appropriate TEAS response form appears at the end of this office action.

 

Issue date:  June 03, 2020

 

The undersigned trademark examining attorney has reviewed the referenced application and the voluntary amendment. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

The office records have been searched, and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

Applicant Must Amend The Identification

 

Applicant must clarify some of the wording in the identification, as shown below, because it is indefinite and overly broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The wording is indefinite because it does not make clear the exact nature of the goods. Further, it is overly broad because it encompasses goods in Classes 1 and 5 as well as 10.

 

Additionally, the identification contains parentheses. Generally, applicants should not use parentheses in identifications so as to avoid confusion with the USPTO’s practice of using parentheses to indicate goods and services that have been deleted from registrations. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses and incorporate the parenthetical information into the identification.

 

The wording in the suggested identification that appears in bold and italics shows the additions that are being proposed. Wording that appears within brackets offers guidance. And wording that should be deleted is shown with a line through it as follows: strikethrough. Applicant should enter amendments in standard font, not in bold, italics or strikethrough or within brackets.

 

Applicant may adopt the following identification, if accurate:

 

“Urine pretreatment apparatus and instruments, namely, {specify what these goods are}; sample container transfer apparatus, namely, {specify what these goods are}; sample rack transfer apparatus, namely, {specify what these goods are},” [classification depends on what the goods are];

 

“gene (gGenetic) testing apparatus and instruments identity tests comprised of reagents for non-medical purposes,” in International Class 1;  

 

“gene (gGenetic) testing apparatus and instruments identity tests comprised of reagents for medical purposes,” in International Class 5; and

 

“Diagnostic or measuring apparatus and instruments for medical purposes, namely, apparatus for use in blood analysis, medical instruments and apparatus for analyzing reticulocytes analyzing apparatus and instruments, medical instruments and apparatus for analyzing erythrocytes analyzing apparatus and instruments, medical instruments and apparatus for analyzing blood coagulation analyzing apparatus and instruments, medical instruments and apparatus for analyzing platelet aggregation analyzing apparatus and instruments, blood collecting devices, {these goods do not appear to be for diagnosis or measuring, so they have been moved} and bodily fluids measuring apparatus and instruments in the nature of {specify goods, e.g., devices for measuring blood sugar}; blood collecting devices, namely, blood collection needles and blood collection bags for medical purposes sold empty; apparatus for blood analysis; blood testing apparatus; hematology analyzers for medical diagnostic uses; hematology analyzers, namely, blood diluting apparatus for medical diagnostic use; blood cell analyzers for medical purposes; blood pretreatment apparatus and instruments, namely, {specify what the goods are}; cell counters, namely, apparatus for counting live or dead cells in a culture for medical purposes; blood cell counters, namely, apparatus for counting live or dead cells in a blood culture for medical purposes; platelet counters, namely, apparatus for counting platelets in a culture for medical purposes; particle counters, namely, {applicant must specify what these goods are} for medical purposes; diagnostic or measuring apparatus and instruments for medical purposes, namely, medical instruments and apparatus for analyzing urinalysise analyzing apparatus and instruments, medical instruments and apparatus for analyzing urine cells analyzing apparatus and instruments, medical instruments and apparatus for analyzing urinary particles analyzing apparatus and instruments, urine pretreatment apparatus and instruments, {these goods do not appear to be for diagnosis or measuring, so they have been moved} medical instruments and apparatus for analyzing immunochemicals analyzing apparatus and instruments, immunological testing apparatus for medical use and instruments, medical instruments and apparatus in the nature of immunoassay analyzers apparatus and instruments, medical apparatus and instruments for clinical chemistry analyzing, namely, for the biochemical analysis of body fluids, medical instruments and apparatus for analyzing occult blood analyzing apparatus and instruments, medical instruments and apparatus for analyzing bacteria; analyzing apparatus and instruments, gene (genetic) testing apparatus and instruments; {moved to Classes 1 and 5} diagnostic or measuring apparatus and instruments for medical purposes, namely, {none of the goods appear to be for diagnostic or measuring purposes} sample transfer apparatus, namely, dropping pipettes for medical purposes; sample container transfer apparatus, sample rack transfer apparatus; furniture especially made for medical purposes; furniture especially made for medical purposes, namely, table units specifically adapted for use with medical apparatus, medical supplies, medical equipment and instruments; furniture especially made for medical purposes, namely, instrument stands, carts and cabinets, all for hospital use; furniture especially made for medical purposes, namely, stands, carts and cabinets specifically adapted for use with medical equipment, medical supplies and instruments; furniture especially made for medical purposes, namely, mobile workbenches with storage cabinets, specifically adapted for placing analyzers thereon for hospital use; structural and fitted replacement parts for all the aforementioned goods,” in International Class 10.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the 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 or add goods not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods 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 will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).

 

For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable ID Manual. See TMEP §1402.04.

 

Multi-Class Application Requirements

 

The application identifies goods in more than one international class. Therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods 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 that are classified in at least three 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 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.

 

Applicant is invited to contact the assigned examining attorney with any questions regarding this action.

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@uspto.gov

 

 

 

RESPONSE GUIDANCE

 

• How to respond: click to file a response to this non-final office action.

 

• For this application to proceed, applicant must explicitly address each refusal and 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.

 

• 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 law office referenced in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 03, 2020 for

U.S. Trademark Application Serial No. 88907077

 

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. 

 

 

/Katherine S. Chang/

Trademark Examining Attorney

Law Office 115

571-270-1528

katherine.chang@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 June 03, 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.”