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: October 20, 2020
Introduction
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.
Identification of Goods and Services
Class 5
The wording “diagnostics and therapeutic preparations” in the identification of goods is indefinite and must
be clarified because the “s” in “diagnostics” appears to be a typographical error. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate: “diagnostic and therapeutic preparations.”
Class 42
Applicant must clarify the wording “Development of measuring and testing methods in the field of
medicine” in the identification of goods and/or services in International Class(es) 42 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP
§§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods and/or services are, as well as the requirement to indicate the type or
field of medicine. Further, this wording could identify goods and/or services in more than one international class. For example,
development of scientific measuring and testing methods is in International Class 42 and development of diagnostic medical measuring and testing methods are in International Class 44.
Applicant may substitute the following wording, if accurate: “development of scientific measuring and testing methods in
the field of (specify type or area of medicine e.g. oncology, blood transfusions, bodily fluid analysis) in Class 42; development of diagnostic medical measuring and testing methods in the field of
(specify e.g. cancer treatment and chemotherapy) in Class 44.”
The wording “Design, development, research, and testing of drugs and pharmaceuticals for the treatment and/or
prevention of cancer” in the identification of services is indefinite and must be clarified because the term “testing” must indicate the type of testing services performed for others. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate: Design, development, research, and conducting clinical trials for other in connection with drugs and pharmaceuticals for the treatment and/or prevention of cancer.
Applicant’s goods and/or services 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
and/or services or add goods and/or services 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 and/or 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/or
services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
Multiple Class Requirements
The application identifies goods and/or services 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
and/or 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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are
classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). 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.
Search
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.
How to respond. Click to file a response to this nonfinal Office action.
/Howard B. Levine/
Howard B. Levine
Examining Attorney
Law Office 115
571-272-9188
Howard.Levine@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.