NOTE TO THE FILE
Sent to TICRS as Serial Number: 88916694SERIAL NUMBER: 88916714
DATE: 08/19/2020
NAME: mtanner
NOTE:
Searched:
From: Haoyi Chen <haoyichen@archlakelaw.com>
Sent: Wednesday, August 19, 2020 2:38 PM
To: Tanner, Michael <Michael.Tanner@USPTO.GOV>
Subject: Re: Official Inquiry Regarding U.S. Trademark Application Nos. 88916682 (BIOTEST), 88916694 (BIOTEST) and 88916714 (BIOTEST)
Thank you, Attorney Tanner. I agree with your amendment to Claiss 009 of Serial Number 88916694. Regarding Serial Number 88916714, I would like to propose the following amendment:
Medical apparatus and instruments for genetic diagnostic purposes being real-time fluorescent quantitative polymerase chain reaction detectors and nucleic acid purifiers for testing DNA and RNA samples; apparatus for medical in vitro diagnostic purposes, namely, colloidal gold readout devices for diagnosing tumors, infectious diseases and pregnancy.
Thank you.
Arch & Lake LLP
Haoyi Chen PhD JD / Partner
Arch & Lake LLP
2500 Wilcrest, Suite 301
Houston, Texas, 77042
Phone: 346-335-9890
Fax: 312-614-1873
CONFIDENTIALITY NOTICE: This electronic mail transmission and any attachments are confidential and may be privileged. They should be read or retained only by the intended recipient. If you have received this transmission in error, please notify the sender immediately and delete the transmission from your system.
On Wed, Aug 19, 2020 at 10:13 AM Tanner, Michael <Michael.Tanner@uspto.gov> wrote:
Mr. Chen:
Based on the identifications you sent me, there are still problems with the identifications for the International Class 009 and 010 applications.
Specifically, for U.S. Application No. 88916694 the proposed identification is acceptable but as amended the goods are considered medical diagnostic devices and thus, properly classified in International Class 010 NOT International Class 009. I will move these goods to International Class 010 as well as amend the identification as indicated below via Examiner’s Amendment and move this application along.
Your proposed identification for 88916682 in International Class 005 is acceptable. I will amend the identification as indicated below via Examiner’s Amendment and move this application along.
With respect to the proposed amendment in 88916714 the applicant needs to explain what disease it is seeking to diagnose or what it is testing. For example (additions are in bold deletions in brackets)
Medical apparatus and instruments for genetic diagnostic purposes being [namely] real-time fluorescent quantitative polymerase chain reaction detectors and nucleic acid purifiers for testing DNA and RNA samples; apparatus for medical in vitro diagnostic purposes, namely, colloidal gold readout devices for diagnosing _____________ (applicant must indicate the medical condition being tested for)
If you could please contact me to discuss these issues I would greatly appreciate it. I can issue an Examiner’s Amendment and move the applications along. If I do not hear from you by August 18, 2020, I am required to issue a letter regarding these applications preventing them from moving forward for failing to comply with certain requirements of the Trademark Act. I can be reached at 571-272-9706.
Regards--
Michael Tanner
Trademark Attorney
U.S. Patent & Trademark Office
Law Office 119
571-272-9706
From: Haoyi Chen <haoyichen@archlakelaw.com>
Sent: Wednesday, August 19, 2020 1:29 AM
To: Tanner, Michael <Michael.Tanner@USPTO.GOV>
Subject: Re: Official Inquiry Regarding U.S. Trademark Application Nos. 88916682 (BIOTEST), 88916694 (BIOTEST) and 88916714 (BIOTEST)
Dear Attorney Tanner. The applicant would like to enter the following amendments to its applications. Please let me know if these amendments are sufficient to cure their deficiencies. Thank you.
88916682
005 diagnostic preparations for diagnosing infectious diseases, namely, HIV，HBV, HCV，HAV, HEV, H.pylori, Dengue, and Syphilis; diagnostic preparations for diagnosing early stage pregnancy, namely, preparations for testing on hCG, LH, and FSH levels; diagnostic preparations for diagnosing tumors, namely, namely, rapid test preparations for testing AFP, CEA, FOB, and PSA ; diagnostic preparations for drug use detection, namely, morphine, methamphetamine, ketamine, and marijuana
88916694
009 Dna and rna test array, namely, array utilizing fluorescent polymerase chain reaction to detect hepatitis viruses, venereal viruses, tumor viruses, and respiratory viruses; genetic test array for virus detection, namely, hepatitis viruses, venereal viruses, tumor viruses, and respiratory viruses; in vitro genetic test array utilizing fluorescent polymerase chain reaction to detect human papilloma virus (HPV), hepatitis E virus, and, mycobacterium tuberculosis (TB)
88916714
010 medical apparatus and instruments for genetic diagnostic purposes, namely, Real-time fluorescent quantitative polymerase chain reaction detectors, and Nucleic acid purifiers； apparatus for medical in vitro diagnostic purposes, namely, Colloidal gold readout devices
Arch & Lake LLP
Haoyi Chen PhD JD / Partner
Arch & Lake LLP
2500 Wilcrest, Suite 301
Houston, Texas, 77042
Phone: 346-335-9890
Fax: 312-614-1873
CONFIDENTIALITY NOTICE: This electronic mail transmission and any attachments are confidential and may be privileged. They should be read or retained only by the intended recipient. If you have received this transmission in error, please notify the sender immediately and delete the transmission from your system.
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On Mon, Aug 17, 2020 at 10:19 AM Tanner, Michael <Michael.Tanner@uspto.gov> wrote:
Dear Mr. Chen:
I am an attorney with the U.S. Patent & Trademark Office, the federal agency to which you recently submitted the above referenced trademark applications. There are a few problems with these applications that can be corrected over the telephone. Please contact me ASAP so that we can correct these issues and move the applications forward.
In this case, the current identifications need to be amended to indicate the kind, type or nature of the DNA and RNA arrays as well as the diseases or maladies being diagnosed, treated, or tested.
If you could please contact me to discuss these issues I would greatly appreciate it. I can issue an Examiner’s Amendment and move the applications along. If I do not hear from you by August 18, 2020, I am required to issue a letter regarding these applications preventing them from moving forward for failing to comply with certain requirements of the Trademark Act. I can be reached at 571-272-9706.
Regards--
Michael Tanner
Trademark Attorney
U.S. Patent & Trademark Office
Law Office 119
571-272-9706