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:  November 30, 2020

 

This office action is in response to applicant’s communication filed on November 13, 2020.

 

Applicant Must Amend The Identification

 

Applicant must clarify some of the wording in the identification, as shown below, because it remains 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 more than one international class. Specifically, certain goods are properly classified in Class 9 if for laboratory use and Class 10 if for clinical use. Additionally, applicant should avoid the use of a namely clause within a namely clause because it introduces a lack a clarity.

 

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. Please note that wording that appears in strikethrough in the suggested identification that is copied and pasted into a response will not be deleted but rather will appear in standard font.

 

Applicant may adopt the following identification, if accurate:

 

“Instruments and apparatus for genetic testing, namely, for DNA analysis or detection of abnormal cell, for laboratory use; medical instruments and apparatus for gene testing, namely, polymerase chain reaction analyzer for laboratory use; sample transfer apparatus specially adapted for transferring containers of blood samples for laboratory use, sample container transfer apparatus specially adapted for transferring containers of blood samples for laboratory use, sample rack transfer apparatus specially adapted for transferring racks of containers of blood samples for laboratory use,” in International Class 9; and

 

“Diagnostic or measuring apparatus and instruments for medical purposes, namely, apparatus for use in blood analysis, medical instruments and apparatus for analyzing reticulocytes, medical instruments and apparatus for analyzing erythrocytes, medical instruments and apparatus for analyzing blood coagulation, medical instruments and apparatus for analyzing platelet aggregation, and bodily fluids measuring apparatus and instruments in the nature of devices for measuring or analysing white blood cells and red blood cells; blood collecting devices, namely, blood sampling tube, holders specially adapted for blood sampling tubes, dropping pipettes for medical purposes and needles 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 for diagnosis; blood cell counters, namely, apparatus for counting red blood cell, white blood cell or platelet for diagnosis; platelet counters, namely, apparatus for counting platelets for diagnosis; particle counters, namely, apparatus for counting particles in a liquid for medical purposes; diagnostic or measuring apparatus and instruments for medical purposes, namely, medical instruments and apparatus for analyzing urine, medical instruments and apparatus for analyzing urine cells, medical instruments and apparatus for analyzing urinary particles, medical instruments and apparatus for urine pretreatment, namely, in the nature of apparatus for use in medical analysis of urine, medical instruments and apparatus for analyzing immunochemicals, immunological testing apparatus for medical use, medical apparatus and instruments in the nature of immunoassay analyzers, medical apparatus and instruments for clinical chemistry analyzing, namely, for the biochemical analysis of bodily fluids, medical instruments and apparatus for analyzing occult blood, medical instruments and apparatus for analyzing bacteria, medical instruments and apparatus for genetic testing, namely, in particular, for DNA analysis or detection of abnormal cell, for clinical use, medical instruments and apparatus for gene testing, namely, in the nature of a polymerase chain reaction analyzer for clinical use; sample transfer apparatus specially adapted for transferring containers of blood samples for clinical use, sample container transfer apparatus specially adapted for transferring containers of blood samples for clinical use, sample rack transfer apparatus specially adapted for transferring racks of containers of blood samples for clinical use; 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 structural fitted replacement parts for all the aforementioned goods,” in International Class 10.

 

The requirement for an acceptable, amended identification is continued and maintained.

 

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 two 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.

 

Requirement For Information

 

This requirement applies to (i) each item in the identification that requires amendment for which applicant adopts wording that is not identical to the suggested identification, and (ii) blood pretreatment apparatus and instruments.

 

To permit proper examination of the application, applicant must submit additional product information about applicant’s goods because the nature of such goods is not clear from the present record. See 37 C.F.R. §2.61(b); TMEP §814. The requested product information should include fact sheets, instruction manuals, advertisements and promotional materials, and/or a photograph of the identified goods. If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ. Applicant must also describe in detail the nature, purpose, and channels of trade of the goods.

 

Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. 

 

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. Merely stating that information about the goods is available on applicant’s website, or submitting weblinks without attaching the relevant pages, is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

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.

   

• 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 November 30, 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 November 30, 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.”