Offc Action Outgoing

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:  December 09, 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.

 

 

Search of Office’s 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.

 

 

SUMMARY OF ISSUES

• Identification of Goods and Services Amendment Requirement

 

Identification of Goods and services Amendment Requirement

Applicant has applied for the following identification of goods and services:

 

Class 1: Assays for scientific and research purposes; assays for biomarker verification, validation, and application; assays for use in connection with mass spectrometry

 

Class 9: Downloadable or recorded software for informatics, bioinformatics; Downloadable or recorded software for clinical trial data acquisition, validation, and analysis; Downloadable or recorded software for cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; Software as a service (SAAS) services featuring software for cell cytometry; Downloadable or recorded software for managing information related to clinical trials

 

Class 42: Scientific research and development; Medical research and development; Product research and development; Biochemical research and development; Pharmaceutical research and development services; Biomedical research and development services; Design and development of biochemical, pharmaceutical, and medical assays; Scientific and pharmaceutical research in the field of biomarker discovery; Scientific research and development in the fields of bioinformatics, biomarkers, genomics, proteomics, genotyping, pathology, histopathology; immune monitoring, and genetic profiling; scientific research and development in the field of mass cytometry, cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; custom design and development of chemical reagents and biochemical assays; medical laboratory services in the field of pathology; providing laboratory testing services in the fields of bioinformatics, biomarkers, genomics, proteomics, genotyping, pathology, histopathology; immune monitoring, and genetic profiling; Conducting clinical trials for others; Conducting clinical trials for others in the fields of pharmaceutical, medical, and scientific research; Consulting services for others in the field of design, planning, and implementation project management of clinical trials; Conducting research and clinical trials for others in the fields of oncology, infectious diseases, autoimmune disorders, and allergies; Consulting services in the field of clinical trial research; Providing medical and scientific research information in the field of clinical trials; Research and development in the pharmaceutical and biotechnology fields; Laboratory research services relating to pharmaceuticals; Software as a service (SAAS) services featuring software for informatics, bioinformatics; software as a service (SAAS) services featuring software for clinical trial data acquisition, validation, and analysis; Software as a service (SAAS) services featuring software for cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; Software as a service (SAAS) services featuring software for cell cytometry; Software as a service (SAAS) services featuring software for managing information related to clinical trials

 

Class 44: Genetic testing for medical purposes; Consulting services in the fields of diagnostic medical testing; Medical testing for diagnostic or treatment purposes; Medical analysis services for diagnostic and treatment purposes provided by medical laboratories; providing medical information and advice in the fields of pathology, pharmacology, and immunology; collection, organization, analysis, and reporting of medical data in connection with clinical and non-clinical trials and studies on pharmaceuticals and medical devices

 

Class 45:  Regulatory compliance consulting in the fields of pharmaceuticals and clinical diagnostics; Advice and consultancy on food, drug, and medical device regulatory matters; regulatory compliance consulting in the field of obtaining government authorization to market pharmaceuticals and medical device

 

The identification of goods and services is indefinite and must be clarified according to the explanations and suggestions below.  See TMEP §§ 1402.01.

 

Applicant has classified the following in International Class 9:  “Software as a service (SAAS) services featuring software for cell cytometry.”  The proper classification for this entry is International Class 42.  However, the entry “Software as a service (SAAS) services featuring software for cell cytometry” is already listed in International Class 42.  Thus, applicant is advised to delete or modify the duplicate entry in the identification in International Class 9 for “Software as a service (SAAS) services featuring software for cell cytometry.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

Applicant is also advised to delete or modify the duplicate entry in the identification of services in International Class 42 for “immune monitoring, and genetic profiling.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

Lastly, applicant must clarify the wording “immune monitoring, and genetic profiling” in the identification of services in International Class 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 services are.  Further, this wording could identify services in more than one international class.  For example, “immune monitoring and genetic profiling for research and development purposes” are in International Class 42 and “immune monitoring and genetic profiling for medical purposes” are in International Class 44.

 

Applicant may adopt the following as its identification of goods and services, if accurate, providing additional specificity where indicated:

 

Class 1: Assays for scientific and research purposes; assays for biomarker verification, validation, and application; assays for use in connection with mass spectrometry

 

Class 9: Downloadable or recorded software for informatics, bioinformatics; Downloadable or recorded software for clinical trial data acquisition, validation, and analysis; Downloadable or recorded software for cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; Software as a service (SAAS) services featuring software for cell cytometry<<<delete, duplicate entry>>>; Downloadable or recorded software for managing information related to clinical trials

 

Class 42: Scientific research and development; Medical research and development; Product research and development; Biochemical research and development; Pharmaceutical research and development services; Biomedical research and development services; Design and development of biochemical, pharmaceutical, and medical assays; Scientific and pharmaceutical research in the field of biomarker discovery; Scientific research and development in the fields of bioinformatics, biomarkers, genomics, proteomics, genotyping, pathology, histopathology; immune monitoring, and genetic profiling for {applicant must specify, e.g., research and development purposes}; scientific research and development in the field of mass cytometry, cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; custom design and development of chemical reagents and biochemical assays; medical laboratory services in the field of pathology; providing laboratory testing services in the fields of bioinformatics, biomarkers, genomics, proteomics, genotyping, pathology, histopathology; immune monitoring, and genetic profiling<<<delete, duplicate entry>>>; Conducting clinical trials for others; Conducting clinical trials for others in the fields of pharmaceutical, medical, and scientific research; Consulting services for others in the field of design, planning, and implementation project management of clinical trials; Conducting research and clinical trials for others in the fields of oncology, infectious diseases, autoimmune disorders, and allergies; Consulting services in the field of clinical trial research; Providing medical and scientific research information in the field of clinical trials; Research and development in the pharmaceutical and biotechnology fields; Laboratory research services relating to pharmaceuticals; Software as a service (SAAS) services featuring software for informatics, bioinformatics; software as a service (SAAS) services featuring software for clinical trial data acquisition, validation, and analysis; Software as a service (SAAS) services featuring software for cellular analysis, cell sorting, pathway phenotyping, and molecular surface profiling; Software as a service (SAAS) services featuring software for cell cytometry; Software as a service (SAAS) services featuring software for managing information related to clinical trials

 

Class 44: Genetic testing for medical purposes; Consulting services in the fields of diagnostic medical testing; Medical testing for diagnostic or treatment purposes; Medical analysis services for diagnostic and treatment purposes provided by medical laboratories; providing medical information and advice in the fields of pathology, pharmacology, and immunology; collection, organization, analysis, and reporting of medical data in connection with clinical and non-clinical trials and studies on pharmaceuticals and medical devices; immune monitoring, and genetic profiling for {applicant must specify, e.g., medical purposes}

 

Class 45:  Regulatory compliance consulting in the fields of pharmaceuticals and clinical diagnostics; Advice and consultancy on food, drug, and medical device regulatory matters; regulatory compliance consulting in the field of obtaining government authorization to market pharmaceuticals and medical device

 

See TMEP §§1402.01, 1402.03.

 

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

For assistance with identifying and classifying goods and services, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

 

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.  

 

• 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 office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 09, 2020 for

U.S. Trademark Application Serial No. 90112472

 

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. 

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

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 December 09, 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.”