To: | Terragene S.A. (jyoung@dineff.com) |
Subject: | U.S. Trademark Application Serial No. 90245679 - PHOTON - TM10198US05 |
Sent: | December 08, 2020 09:42:28 AM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90245679
Mark: PHOTON
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Correspondence Address:
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Applicant: Terragene S.A.
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Reference/Docket No. TM10198US05
Correspondence Email Address: |
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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 08, 2020
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 RESULTS
· SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant has applied for the standard character mark “PHOTON” for the goods identified as “Bacterial preparations for medical and veterinary use; Bacteriological preparations for medical purposes; Biological indicators for monitoring sterilization processes for medical or veterinary purposes; Chemical preparations for pharmaceutical or medical purposes, namely, for sterilizing control, disinfection control and washing processes; Cultures of microorganisms for medical or veterinary use; Diagnostic agents, preparations and substances for medical purposes; Diagnostic biomarker reagents for medical purposes; Diagnostic preparations for medical purposes; Diagnostic reagents for medicinal use; Enzyme preparations for medical purposes; Media for bacteriological cultures; Medical diagnostic test strips for monitoring sterilization and disinfection processes for medical or veterinary purposes; Nutritive substances for micro-organisms for medical use; Reagent paper for medical purposes.”
Here, the applied-for mark PHOTON means “The elementary particle of light and other electromagnetic radiation; the quantum of electromagnetic energy.” See attached evidence from the American Heritage Dictionary. The applied-for mark immediately describes that the applicant’s goods of “Bacterial preparations for medical and veterinary use; Bacteriological preparations for medical purposes; Biological indicators for monitoring sterilization processes for medical or veterinary purposes; Chemical preparations for pharmaceutical or medical purposes, namely, for sterilizing control, disinfection control and washing processes; Cultures of microorganisms for medical or veterinary use; Diagnostic agents, preparations and substances for medical purposes; Diagnostic biomarker reagents for medical purposes; Diagnostic preparations for medical purposes; Diagnostic reagents for medicinal use; Enzyme preparations for medical purposes; Media for bacteriological cultures; Medical diagnostic test strips for monitoring sterilization and disinfection processes for medical or veterinary purposes; Nutritive substances for micro-organisms for medical use; Reagent paper for medical purposes” will feature, involve or be used with electromagnetic energy based medical treatment, preparations, and diagnostic agents and so forth. The applied-for mark immediately describes that the applicant’s goods feature or involve electromagnetic energy.
The attached evidence from http://www.steris-ast.com/techtip/introduction-gamma-irradiation-processing/ shows that photons are used in sterilization of medical devices and products. The attached evidence from http://www.sciencedirect.com/topics/medicine-and-dentistry/photon-therapy discusses the use of photon therapy as a medical treatment. The attached evidence from http://www.liebertpub.com/doi/full/10.1089/neu.2019.6892 states that “Single-Photon Emission Computed Tomography [can be used] as an Imaging Biomarker of Pre-Synaptic Dopaminergic System after Moderate-to-Severe Traumatic Brain Injury.” The evidence from http://ieeexplore.ieee.org/document/5898681 states that “two-photon fluorescence microscopy (2PFM) imaging that targets important biomarkers, including proteins that are expressed in tumors and the targeting of vasculature around the tumors rather than tumors themselves.” The further provided evidence from http://gmpnews.net/2018/12/new-bi-technology-from-argentina/ states that the applicant’s “Photon Instant BI” is the “first instant biological indicator featuring fluorescence emission and readout,” indicating that the applicant’s goods feature or involve “[t]he emission of electromagnetic radiation.” See http://www.ahdictionary.com/word/search.html?q=fluorescence defining fluorescence as the emission of electromagnetic radiation. Thus consumers of the applicant’s chemical preparations for pharmaceutical or medical purposes for sterilizing control, disinfection control and washing processes and medical diagnostic preparations and substances and reagent paper and other specified items would immediately understand that the applicant’s goods utilize or are designed to work with or feature or involve electromagnetic radiation.
For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).
Thus as the applied for mark merely describes a feature or characteristic of the applicant’s goods, the applied-for mark is not entitled to registration under Trademark Act Section 2(e)(1) on the Principal Register.
INFORMATION REQUIRED
(1) Fact sheets, instruction manuals, brochures, advertisements and pertinent screenshots of applicant’s website as it relates to the goods and/or services in the application, including any materials using the terms in the applied-for mark. Merely stating that information about the goods and/or services is available on applicant’s website is insufficient to make the information of record.;
(2) If these materials are unavailable, applicant should submit similar documentation for goods and services of the same type, explaining how its own product or services will differ. If the goods and/or services feature new technology and information regarding competing goods and/or services is not available, applicant must provide a detailed factual description of the goods and/or services. Factual information about the goods must make clear how they operate, salient features, and prospective customers and channels of trade. For services, the factual information must make clear what the services are and how they are rendered, salient features, and prospective customers and channels of trade. Conclusory statements will not satisfy this requirement.; and
(3) Applicant must respond to the following questions:
(a) Do the applicant’s goods utilize or contain electromagnetic radiation?
(b) Are the applicant’s goods designed to detect, treat, read or otherwise interact with electromagnetic radiation?
(c) How do the applicant’s chemical preparations for sterilization, disinfection and washing operate? Do they utilize photons or electromagnetic radiation?
(d) How do the applicant’s medical diagnostic test strips operate? Do they utilize photons or electromagnetic radiation?
(e) How do the applicant’s diagnostic reagents and preparations operate? Do they utilize photons or electromagnetic radiation?
(f) Do applicant’s competitors use PHOTON to advertise similar goods and/or services?
(g) Who is the typical consumer of applicant’s goods?
(h) Where are applicant’s goods typically purchased (provide examples of online and brick-and-mortar store venues)?
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
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.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
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.
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.
/Natalie L. Kenealy/
Examining Attorney
Law Office 104
571-272-7817
Natalie.Kenealy@uspto.gov
RESPONSE GUIDANCE