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 30, 2021

 

 

 

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

 

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:

 

• Filing bases requirements
• Identification and classification of goods and services not acceptable as is

 

Intent to Perfect Filing Basis

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

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, an 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, 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 has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  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), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

Identification and Classification of Goods and Services

 

The identification of goods and services is indefinite and must be clarified because some of the goods and services are not identified specifically enough.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The identification of the Class 42 services contains parentheses.  Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “sash bands for kimono (obi).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.

 

Additionally, note that “liposome preparation for use in pharmaceuticals, medical or veterinary preparations” are classified incorrectly and should be classified in Class 5.  “Blood medical tests kits” are in Class 10.  “Medical apparatus for management of examination data of patients” in the nature of computer hardware and recorded software sold as a unit for use with medical patient monitoring equipment, for receiving, processing, transmitting and displaying data is classified in Class 9.  The identification “database construction” also appears to be classified incorrectly, as “Database design and development” is a Class 42 service.

 

It is unclear what the following Class 35 services are:  “providing information relating to file management by digitization, storage and output of photos and documents.”  Providing information relating to business file management is in Class 35.  Digitization and electronic storage of photos and documents is in Class 42.  Provision of access to data or documents stored electronically in central files for remote consultation (if that is what applicant means by “output”) is in Class 38. 

 

It is unclear what the service or classification actually is in the Class 35 identification “business consultancy services relating to technology, design, development, clinical trials, product launch in the field of pharmaceuticals, biotechnology and life science.”  The applicant must provide a definite and acceptable identification for the above service and classify it correctly.

 

The Office accepts the following identifications in Class 35: 

 

Business consulting in the field of clinical trials, namely, clinical data and regulatory submission management on behalf of medical, biopharmaceutical and biotechnology companies to assist them with clinical trials and applications for drug approval in the fields of pharmaceuticals, biotechnology and life science.

 

Business consultation regarding marketing activities and launching of new products in the fields of pharmaceuticals, biotechnology and life science.

 

Business consulting services, namely, providing assistance in development of business strategies and creative ideation in the fields of pharmaceuticals, biotechnology and life science.

 

Business management consulting with relation to product design particularly specializing in the use of analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions in the fields of pharmaceuticals, biotechnology and life science.

 

The Class 35 identifications “computerized data and material search services using artificial intelligence; computerized search services in computer database using artificial intelligence” appear to identify “computer services, namely, providing search engines for obtaining data using artificial intelligence on a global computer network”, which is classified in Class 42.  The identification “and providing information relating to search results” would be classified as to the subject matter of the information.  For instance, “Providing commercial information in the field of {indicate field or goods/services} that was found using a search engine for obtaining data using artificial intelligence” would be in Class 35.

 

The Class 42 identification of services “information processing using artificial intelligence” appears to be a data processing service which is classified in Class 35. 

 

The Class 42 identification of services “introduction and explanation of computer program performance and operation methods” appears to be an educational service classified in Class 41.

 

The Class 42 identifications of services “consultancy in the field of energy efficiency” and “consultancy in the field of energy-saving” (as “Consulting services in the field of energy usage management for the purpose of saving energy”)  are classified in Class 35.

 

The Class 42 identification of services “computer information processing consulting” is indefinite and may be classified incorrectly.  Data processing is in Class 35.  The applicant must clarify what the services actually are.

 

The applicant may not broaden the scope of the original identifications.

 

Applicant may adopt the following identifications with suggestions for acceptable identifications, if accurate:

 

Class 1:  chemicals for use in industry and science; chemical reagents for non-medical purposes; chemical reagents for use in genetic research, other than for medical or veterinary purposes; chemicals for use in the manufacture of peptides; liposomes, other than for medical or veterinary purposes, for use in the manufacture of pharmaceutical and cosmetic products; chemicals containing liposomes for use in industry and science; Biological preparations, namely, vectors, being independent replicating pieces of DNA that can transfer DNA sequences, for manufacture and development in the biotechnology industries; Biological preparations, namely, plasmids, being small independently replicating pieces of DNA that can transfer DNA sequences for manufacture and development in the biotechnology and pharmaceutical industries other than for medical or veterinary purposes; chemicals, in the nature of adjuvants, for use in the manufacture of vaccines; Active chemical ingredients for use in the manufacture of pharmaceuticals for treating {specify diseases or conditions}; Active chemical ingredients for use in the manufacture of veterinary preparations for treating {specify diseases or conditions}; proteins for {specify use, e.g. for industrial use, in raw material form for scientific and medical research}; enzymes for {specify use, e.g.  for scientific and research purposes}; microbial preparations for {specify use that is in Class 1, e.g. Microbial inoculants for application to seeds used in agriculture}; chemical and biochemical preparations for industrial and scientific purposes, in particular, agents for the transfer of biological molecules into living cells, integration of foreign nucleic acids into the genome of living cells; soluble substances and solutions, in particular buffer and standard solutions for the transfer of biological molecules into living cells, integration of foreign nucleic acids into the genome of living cells; nucleic acids and nucleotides for scientific and research purposes for use in clinical researches, pharmaceutical development, agriculture and genetic research; reagent kits consisting primarily of reagents and chemical preparations for scientific purposes, other than for medical or veterinary use; diagnostic reagent kits consisting of reagents and chemical preparations for use in the field of scientific research and clinical research; reagent kits consisting of enzymes and biological preparations having the nature of human tissues, human body fluids, animal tissues, animal body fluids, culture of microorganism and plant tissues, other than for medical or veterinary purposes; samples of diagnostic nucleotide sequence variants and modifications for use in the field of scientific research and clinical research; antibodies used for auxiliary diagnosis of pathology such as cancer tissue or animal experiments, not for medical use; stem cells for laboratory use, other than for medical or veterinary purposes; stem cells, other than for medical or veterinary purposes; stem cells for research purposes; stem cells for scientific purposes; cells for scientific, laboratory, medical research and clinical use; chemical reagents with skin, cartilage, cornea, liver, nerves, blood vessels and other cells for research purposes; kits consisting primarily of cell lines, reagents, enzyme substrates and genetically modified chemical preparations, other than medical or veterinary purposes; cell culture media for scientific and research purposes; cell culture media for laboratory use; cells for scientific or research purposes, other than for medical or veterinary purposes; cell derived preparations for scientific or research purposes; reagents for use in chemical testing; chemical preparations for scientific purposes, other than for medical or veterinary purposes; peptides, collagen and proteins manufactured by gene recombination, other than for medical or veterinary purposes; peptides, proteins and nucleic acids or complexes of these molecules for detecting gene expression and localizing proteins as well as for integrating foreign nucleic acids into the genome of living cells, other than for medical or veterinary purposes; biological preparations, namely, genetically modified cells and vectors being independent replicating pieces of DNA that can transfer DNA sequences for production of human, animal and synthetic proteins, for use in scientific research, in pharmaceutical research and for clinical and commercial use, other than for medical or veterinary purposes; genes being DNA sequences for other than medical and veterinary purposes; chemicals for use in biotechnological manufacturing processes, namely, mammalian cell cultures and vectors, being independent replicating pieces of DNA that can transfer DNA sequences, each for manufacturing processes and product development in the biotechnology industries; chemical preparations and substances for manufacturing pharmaceutical preparations; chemical additives for manufacturing medicines; chemicals for manufacturing cosmetics, skin cleansers and medicines; chemical preservatives for pharmaceutical preparations; biochemicals for producing products for genetic pharmacology; genetic material, namely, chemical substances for producing products for genetic cell therapy, other than for medical or veterinary purposes; biotechnological material, namely, chemical substance for manufacturing pharmaceutical products, other than for medical or veterinary purposes; Bacteria removing preparations and antibacterial preparations, other than for medical and veterinary use and not for laundry purpose, not included in pharmaceutical preparations; unexposed X-ray film; chemical compositions for developing photographs; gelatin for photographic purposes; biological preparations for use in industry and science; biological preparations for use in cell cultures, other than for medical or veterinary purposes; biological preparations for use in cell cultures for use in laboratory, diagnosis, analysis and environment analysis, other than for medical or veterinary purposes; biological preparation for use in cell cultures other than for medical or veterinary use; diagnostic preparations, other than for medical or veterinary purposes; diagnostic preparations for scientific or research use, other than for medical or veterinary purposes; diagnostic preparations for scientific or research use; cultures of microorganisms, other than for medical or veterinary use; chemical solutions containing nutrients for culturing living cells; preservatives for pharmaceutical preparations [NOTE: this may be a duplicate entry to an entry above.  The applicant must delete one or differentiate the identification]; proteins and enzymes for biotechnology use; Cell growth media for growing cells for biotechnology research use.

 

Class 5:  liposome preparations for use in pharmaceuticals, medical and veterinary preparations;  pharmaceutical preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}; pharmaceutical preparations and substances for the treatment of viral diseases, infectious diseases, cardiovascular diseases, metabolic disorders, endocrine disease, circulatory diseases, cardiopulmonary diseases, neoplastic diseases, liver diseases, eye diseases, respiratory diseases, neurologic diseases, digestive diseases, immune system diseases and immune system disorders; pharmaceutical preparations for the treatment of cancer and viral infections; pharmaceutical preparations for gene therapy; pharmaceutical preparations for diagnosis, treatment and prevention of Alzheimer's disease; pharmaceutical preparations, veterinary preparations and sanitary preparations for use in the field of gene therapy; Dietetic preparations adapted for medical purposes, namely, gene therapy; Diagnostic biochemical preparations for medical purposes; diagnostic preparations for medical or veterinary use; diagnostic preparations for diagnosis and analysis of genetic abnormalities, viral diseases, infectious diseases, circulatory diseases and cancer for medical purposes; reagent paper for medical purposes; biological stem cells for medical or veterinary use; cultures of microorganisms and proteins for medical or veterinary use; Synthetic peptides for the treatment of {indicate specific disease or condition}, nucleic acids and complexes of these molecules, for medical or veterinary use; peptides, nucleic acids sequences and complexes of these molecules for gene therapy and for the treatment of genetic abnormalities in viral diseases, infectious diseases, circulatory diseases and cancer; gene therapy products, namely, modified cells and modified cell platforms in the nature of genetically engineered tissues for transplant purposes; biological preparations, namely, vectors, being independent replicating pieces of DNA that can transfer DNA sequences, for gene therapy; gene-manipulated cells and vectors, being independent replicating pieces of DNA that can transfer DNA sequences, for use in the manufacture of human proteins, animal proteins and synthetic proteins for medical treatment and clinical use; biological preparations for use in clinical and medical cell therapy; gene-manipulated carriers, namely, vectors, being independent replicating pieces of DNA that can transfer DNA sequences, and cells for use in the manufacture of human proteins, animal proteins and synthetic proteins for treatment and clinical use for human beings and animals; biological preparations for medical purposes for the treatment of {specify disease or physical condition, e.g., cancer}; biological preparations for veterinary purposes for the treatment of {specify disease or physical condition, e.g., cancer}; biological preparations for the treatment of cancer; veterinary preparations for {indicate type of animal and condition being treated}; pharmaceutical preparations for use in medical testing for {specify what is being tested for}; vaccines; vaccine preparations; diagnostic radiopharmaceuticals for use in nuclear medicine; diagnostic radiopharmaceutical preparations; radioactive pharmaceutical preparations for in vivo diagnostics or therapeutic use; liposome preparations for use in anesthesia and for the treatment and control of pain; Surgical implants comprising living tissue for transplant surgery; Clinical medical reagents with skin, cartilage, cornea, liver, nerves, blood vessels and other cells; diagnostic reagent kits consisting primarily of cell lines, reagents, enzyme substrates, genetically modified biochemical preparations for medical purposes; cell growth media for growing cells for medical purposes; media for bacteriological cultures; culture media for cultivating microorganisms for medical purposes; culture media for sanitary inspection; diagnostic media for bacteriological cultures; cellular function activating agents for medical purposes; cells for medical use; stem cells for medical purposes; pharmaceutical cell preparations for treating {specify specific disease treated} disease; Capsules sold empty for pharmaceuticals; capsules sold empty for pharmaceuticals; medicinal preparations and substances for {specify disease or condition to be prevented or treated, or the health goal to be achieved}; Drug delivery agents consisting of compounds that facilitate delivery of a wide range of pharmaceuticals; diagnostic reagents for medical or veterinary use; reagents for diagnostic analysis for medical or veterinary use; reagents for diagnosis and analysis of viral diseases, infectious diseases, cardiovascular diseases and neoplastic diseases; reagents for use in medical or veterinary genetic testing; diagnostic biomarker reagents for medical purposes; diagnostic preparations for blood testing for medical purposes; Synthetic peptides, collagen and protein produced by gene recombination for the treatment of {indicate specific disease or condition} for medical or veterinary use; peptides, proteins and nucleic acids or complexes of these molecules for detecting gene expression and localizing proteins as well as for integrating foreign nucleic acids into the genome of living cells, for medical or veterinary purposes; biotechnological preparations for medical purposes for {specify disease or condition to be prevented or treated or the health goal to be achieved}; medical tissue for gene cell therapy, namely, genetically engineered tissues for transplant purposes; culture media for cultivating stem cells for medical purposes; Capsules made from gelatin sold empty for pharmaceuticals for medical purposes; gelatin capsules sold empty for pharmaceuticals; antibacterial substances for medical purposes, excluding for laundry or industrial purposes; dietary supplements for humans; nutritional supplements for animal foodstuffs; dietetic beverages adapted for medical purposes; dietetic food adapted for medical purposes; dietary supplements for animals; dental materials, namely, {specify the common commercial name for the materials, e.g. composite materials, impression materials}; Diagnostic kits comprised of medical diagnostic reagents and assays for testing of bodily fluids for use in disease detection, namely, {indicate disease or condition, e.g., HIV, malaria}; adhesive tapes for medical purposes; cotton swabs for medical purposes; biological {indicate specific type, e.g., bone, skin} tissue for implantation; Biological {indicate specific type, e.g., bone, skin} cell tissue pieces intended for subsequent implantation for transplant operation; cell growth media for growing cells for medical use; implants comprising living tissue; cultured preparations of microorganisms for medical purposes; cultured preparations of microorganisms for veterinary purposes; cultures of microorganisms for medical purposes; antibacterial agents for industrial purposes 

 

Class 9:  Medical apparatus for management of examination data of patients in the nature of computer hardware and recorded software sold as a unit for use with medical patient monitoring equipment, for receiving, processing, transmitting and displaying data.

 

Class 10:  Blood medical tests kits comprised primarily of blood testing apparatus and blood collecting tubes; medical apparatus and instruments for use in {specify nature of medical procedures, e.g., endovascular, cardiovascular, endoscopy} procedures; veterinary apparatus and instruments for use in {specify nature of veterinary procedures, e.g., endovascular, cardiovascular, endoscopy, etc.} procedures; apparatus for the regeneration of stem cells for medical purposes; artificial cultured skin for surgical purposes; artificial cultured cartilage for surgical purposes; artificial cultured bone for surgical purposes; auxiliary medical devices, namely, {specify the common commercial names of the devices} and orthodontic apparatus namely, {specify the common commercial names of the apparatus, e.g. appliances, brackets}; medical apparatus and instruments for cell culture, namely, {specify items, e.g., cell culture chambers, etc.}; ultrasonic medical diagnostic imaging apparatus; ultrasonic medical diagnostic apparatus; endoscopes for medical purposes; medical endoscopes for diagnostic and procedural purposes, and their parts and fittings; cleaning and disinfecting equipment in the nature of {specify the common commercial name of the equipment in Class 10} for endoscopes; endoscopy surgical instruments; medicinal catheters with endoscopes; medical diagnostic imaging apparatus for endoscopes; medical X-ray apparatus; X-ray CT scanners for medical purposes; Apparatus and installations for the production of X-rays, for medical purposes; X-ray tubes for medical purposes; protection devices against X-rays, for medical purposes, namely, X-ray aprons; digital radiography for medical purposes; X-ray image diagnostic apparatus for medical purposes; apparatus for medical ultrasound therapy; diagnostic apparatus for medical purposes; medical ultrasound apparatus; ultrasonic medical diagnostic apparatus; computed tomography (CT) scanners; computed tomography (CT) apparatus; X-ray CT scanners; Electromagnetic diagnostic imaging apparatus for medical purposes; medical diagnostic apparatus with computer displays, computer hardware and recorded software for processing medical images; medical diagnostic apparatus with computer displays, computer hardware and recorded software for processing medical ultrasonic images; medical apparatus for cerebrovascular treatment support system, namely, {specify the common commercial name of the components of the system, e.g. Medical devices for treating vascular bifurcations, Vascular closure devices}; blood testing apparatus; genetic testing apparatus for medical purposes; Medical diagnostic apparatus for testing {specify condition or subject matter tested, e.g., blood sugar levels, cancer cells, DNA}; diagnostic apparatus in the form of test kits for medical purposes for testing {specify what is being tested}; diagnostic apparatus for medical purposes for testing {specify condition or subject matter tested, e.g., blood sugar levels, cancer cells, DNA}; fluid injectors for medical purposes; surgical materials, namely, {specify the common commercial name of the materials in Class 10}; artificial limbs; artificial eyes; artificial teeth; surgical implants comprising artificial materials; X-ray image intensifier apparatus; medical X-ray irradiation devices; medical X-ray high voltage devices; medical and dental X-ray appliances; fluoroscopic radiographic imaging apparatus; holding devices specially adapted for medical X-rays tubes; digital radiography apparatus for medical use; medical and dental X-ray imaging processing apparatus; cordless mobile X-ray apparatus of inverter type for medical purposes; cameras incorporating charged couple devices for medical X-rays; supporting devices specially adapted for X-ray tubes; X-ray tubes apparatus for medical purposes; whole body X-ray tubes apparatus for medical purposes; whole body MRI apparatus of permanent magnet form for medical purposes; whole body MRI apparatus with superconducting magnet for medical purposes; specially adapted high frequency coils for MRI apparatus; cryosurgery apparatus for use in performing ablative surgery; pulse oximeters for medical purposes; X-ray tubes for medical purposes; X-ray tubes apparatus for computed tomography (CT) for medical purposes; X-ray tubes apparatus for irradiation for medical purposes; ultrasonic diagnostic probe for nonvascular surgery; hand-held external ultrasonic diagnostic probe for medical purposes; ultrasonic diagnostic probe for esophagus for medical purposes; ultrasonic surgical devices; ultrasonic diagnostic probe for rectum for medical purposes; ultrasonic diagnostic probe for vagina for medical purposes; ultrasonic medical diagnostic imaging apparatus for generic purposes; ultrasonic diagnostic probe for body cavities for medical purposes; instrument for attaching puncture needles for ultrasonic probes for medical purposes; ultrasonic medical diagnostic probe of external water tank type; mouthpieces specially adapted for endoscopes for medical purposes; specially adapted covers for ultrasonic probes used on body surfaces; cable and lead wires specially adapted for electrocardiographs; ultrasonic medical diagnostic imaging apparatus [DELETE: duplicate entry]; therapeutic inhalers; Vacuum pumps for medical purposes; apparatus for the regeneration of stem cells for medical purposes [DELETE: duplicate entry]; osseous implants made of artificial materials; medical implants made of artificial materials; pharmaceutical apparatus and instruments, namely, {specify the common commercial name of the apparatus and instruments}; medical diagnostic imaging apparatus with computer displays and computer hardware with incorporated recorded software for processing medical endoscopic images; endoscopy cameras for medical purposes; diagnostic imaging apparatus for medical and surgical endoscopes; light sources for use in medical and surgical endoscopy; LED light sources for medical use; chemiluminescent light sources for use in endoscopy; apparatus for DNA and RNA exams for medical purposes; apparatus for clinical and medical diagnosis, namely, {specify the common commercial name of the apparatus}; apparatus for analyzing nucleic acid sequences for clinical and medical diagnostic use; apparatus for analyzing nucleic acid sequences for the medical and veterinary diagnosis and treatment; medical x-ray films. 

 

Class 35:  Consultancy in the field of energy efficiency; Consulting services in the field of energy usage management for the purpose of saving energy; data processing using artificial intelligence; business efficiency expert services; statistical analysis and reporting for business purposes; compilation of statistical information for business purposes; providing statistical information; business advice and information; business planning; business management; business process re-engineering; business work efficiency expert services; compilation and input of information into computer databases; database management; Updating of data in computer databases; maintenance of data in computer databases; collating of data in computer databases in the nature of compilation and systemization of data into computer databases; Compilation and systematization of information in databanks; analysis of business data; marketing research and analysis; Business assistance services in the field of preparation and filing of business forms; providing office functions; marketing services; promoting the goods and services of others; Mediation of commercial transactions for others; provision of an online marketplace for buyers and sellers of goods and services; advertising and publicity services; rental of advertisement space and advertising material; providing commercial information and advice for consumers in the choice of products and services; computerized file management; providing information and advice relating to the entry and systemization of information in computer databases; compilation of information into computer databases; data entry services into computer database; Services consisting of the registration of written communications and data; business management analysis and business consultancy; providing information concerning commercial sales; computerized database management of digital data files; computerized document creation in the nature of word processing and file management; computerized management of document files; updating and maintenance of data in computer databases; systemization of information into computer databases; marketing analysis services through analysis of big data, data log and electronic data; business data analysis; business data compilation and analysis based on market research; database management and compilation of computerized databases; business file management using computers and computer database; database management services; computerized digital business data file management and provision of information and advice relating thereto; business consultancy services relating to data processing; advisory service relating to digitized file management; management and maintenance of document data and image data in computer database; business management [DELETE: duplicate entry]; business advisory services in the field of {indicate field with a business component, e.g., transportation logistics, database management}; provision of business information via global computer networks; business research services in the field of {indicate field or subject matter}; business data analysis; business appraisals; assistance and advisory services relating to business management and business operations in the field of biotechnology research; data processing using computer 

 

Class 40:  custom manufacture and processing of human cells for medical purposes; treatment of therapeutic cells, namely, pharmacological and non-pharmacological treatment and processing of therapeutic cells to modify their function for therapeutic purposes; custom blending and processing of chemical products, and consultancy and provision of information relating thereto; custom production and processing of proteins and chemicals, and consultancy and provision of information relating thereto; custom manufacture of soaps, cosmetics and perfumery, and consultancy and provision of information relating thereto; custom manufacture of peptide synthesis; custom manufacture of compound synthesis; custom manufacture of chemicals; custom manufacture of medical products, namely, {specify the common commercial name of the products, e.g. pharmaceutical ingredients} by the extraction, purification and synthesis of those ingredients; custom manufacture of medicinal preparations and substances; custom manufacture of dietary supplements for humans; custom manufacture and processing of cells, viruses and genes; processing of medical materials, namely, {specify the common commercial name of the materials}; custom processing and manufacture of genetically modified cells and vectors for production of human, animal and synthetic proteins; custom processing and manufacture of genetically modified cells and carriers for the manufacture of human, animal and synthetic proteins; custom processing and manufacture of biological products, namely, cells, viruses, genes and proteins; custom processing and manufacture of cells, viruses, genes and proteins; custom processing and manufacture of vectors, cultured cells and recombinant proteins for use in the field of biotechnology; custom processing and manufacture of biopharmaceuticals for use in manufacturing process; custom manufacture of cells for use in gene-manipulated DNA, biomass, cells, viruses, pathogens for scientific, research, medical and laboratory use; processing of genes of cells for use in gene-manipulated DNA, biomass, cells, viruses, pathogens for scientific, research, medical and laboratory use; custom processing and manufacture of biopharmaceuticals; custom processing and manufacture of biopharmaceuticals using biomass; custom manufacture of chemical substances for use in the field of life science, namely, pharmaceuticals and agricultural chemicals; rental of chemical processing machines and apparatus; collection, sorting and disposal of waste and trash; processing of artificial limbs or artificial teeth; processing of medical materials [DELETE: duplicate entry]; processing of chemical reagents;   custom manufacture of cell culture for scientific and research purposes, for others

 

Class 41:  Educational services, namely, providing {specify mode of instruction, e.g. workshops, classes, seminars} on introducing and explaining computer program performance and operation methods.

 

Class 42:  Database design and development; computer software design, computer programming, and maintenance of computer software; providing technology information relating to computers, automobiles and industrial machines; testing, inspection or research of pharmaceuticals, cosmetics or foodstuffs; research and development services in the field of cytology; testing, inspection, research and development of cell culture and tissue culture; research and development of pharmaceuticals; research and development in the field of life science; medical and scientific research and development in the field of healthcare; technological research and development in the field of healthcare; technological research and development in the field of life science; provision of information on web portals relating to research and development of biopharmaceuticals that are manufactured using biological treatment and bioproduction platforms; research, development and consultancy relating to biotechnology featuring biological treatment and bioproduction platforms for use in the manufacture of biopharmaceuticals; design and development of computer platforms relating to biological treatment and bioproduction for use in the manufacture of biopharmaceuticals; Software as a service (SAAS) services, namely, hosting computer software for others for use in custom design and order of assay, nucleic acids and reagents in the field of nucleic acid sequence analysis, genotyping, medical diagnosis, veterinary medicine diagnosis, clinical diagnosis, medical research, veterinary medicine research, diagnostic research, clinical research, drug discovery, drug discovery research, medical experimental research, veterinary medicine and research, life science, biology science, microbiology, biotechnology, agriculture, forensic medicine, food safety, metagenomics and genetics; testing the functionality of machines; research on machines; testing and inspection of medical apparatus and instruments; providing temporary use of online nondownloadable computer programs for {identify the function of the software} on data networks; rental of server memory space via a computer communications network; cloud computing featuring software for use in the preservation, analysis and sharing of information in the field of medical evaluation services; cloud computing featuring software for use {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content- or field-specific, the field of use}; providing temporary use of online non-downloadable computer software for operating software for accessing and using a cloud computing network; rental of computer software for operating software for accessing and using a cloud computing network; server hosting; Application service provider (ASP), namely, hosting computer software applications of others on the Internet; information technology (IT) consultancy; consultancy and information services relating to information technology architecture and infrastructure; medical analysis and [NOTE:  medical analysis services are in Class 44.  This part of the identification must be removed here] research services, and consultancy thereof; electronic data storage and management [NOTE:  database management services are already in Class 35.  This part of the identification must be removed here] using computers; electronic data storage of sound, data and image; services of biotechnical, chemical and pharmacological laboratories, namely, scientific and technological research relating to the production of chemicals and biotechnological products for use in preparing pharmaceutical and veterinary preparations, as well as providing expert advice on the subject; biotechnology research; carrying out early evaluations in the field of new medicines as part of scientific research; development of pharmaceutical preparations, medicines and medicaments; providing technological services, namely, technical consultancy, project research and research in the field of pharmaceuticals and new product development for medical industries in the pharmaceutical and health care industries; Pharmaceutical product quality evaluation as part of scientific research and analysis; research and development in the pharmaceutical field; scientific research and development in the fields of medicines as well as the preparation of test products as part of the development of products; scientific research; scientific research for medical care and provision of information relating thereto; software as a service (SaaS) featuring software for {specify the function of the programs, e.g., for use in database management, for service desk management, for accounting, etc., and, if software is content- or field-specific, the content or field of use}; platform as a service (PaaS) featuring computer software platforms for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use}; providing temporary use of online nondownloadable computer programs for developing software platforms for providing e-commerce services to others; scientific or technological data analysis using artificial intelligence in the field of pharmaceutical and medical research; providing technological advice relating to artificial intelligence; design and development of artificial intelligence; scientific analysis using images in the field of pharmaceutical and medical research; scientific analysis using videos in the field of pharmaceutical and medical research; rental of computer software and computer hardware; rental of computer programs; rental of operating software for accessing and using cloud computing networks; electronic data storage and data back-up services; design and development of operating software for accessing and using cloud computing networks; design, creation, and maintenance of computer programs for information management; maintenance of database software; Application service provider (ASP), namely, hosting computer software platforms of others on the internet and communication networks; electronic storage of data, drawings, documents, digital photographs, music, images, videos and electronic data by cloud computing; technological advice in the field of selecting industrial machines suitable for their intended uses; engineering services, particularly technical project planning for the designing of machines, apparatus, instruments and systems composed of such machines, apparatus and instruments; testing and research on {specify type of machines and equipment, e.g. industrial} machines and equipment; designing of machines, apparatus, instruments and systems composed of such machines, apparatus and instruments; design and development of computer hardware, software and databases; data encryption and decoding services; data analysis on technical matters in the nature of {specify the common commercial name of the technical matters}; industrial research, testing and analysis services in the field of {indicate field or goods that are subject of the research, testing and analysis}; energy auditing; design and development of electronic data security systems; rental of computers; digitization of documents in the nature of scanning; electronic data storage; computer technology consultancy; off-site data backup; monitoring of computer systems to detect breakdowns; monitoring of computer systems by remote access to ensure proper functioning; computer system design; computer software design; updating of computer software; maintenance of computer software; duplication of computer programs; data encryption services; conversion of data or documents from physical to electronic media; monitoring of computer systems for detecting unauthorized access or data breach; Hosting the web sites of others on a computer server for a global computer network; rental of computer software; providing quality control information on data collection results, data analysis results and data storage results of electronic data; data log collection, analysis and storage; providing quality control information on collection results, analysis results and storage results of data logs; Data automation service using proprietary software to collect, analyze and store big data; Data automation service using proprietary software to provide information on collection results, analysis results and storage results of big data; providing temporary use of online nondownloadable computer software for scientific and technical analysis of data using artificial intelligence (AI); providing temporary use of online nondownloadable computer software for corporate data analysis and report creation; Data automation service using proprietary software to collect, analyze and store electronic data; providing temporary use of online nondownloadable computer software for non-downloadable document processing; design, development, maintenance, update and rental of computer software for document processing; providing information on the design of computer equipment for document processing; installation and maintenance of computer programs for document management; design, creation and maintenance of computer software for document processing; designing, creation and maintenance of computer programs for electronic data security; consultancy and advice on the design and development of electronic data security; information processing using computers, namely, data conversion of electronic information; electronic information data conversion using computers; remote monitoring of computer systems for document processing to ensure proper functioning; monitoring services using computer programs for document processing to prevent unauthorized access by others; providing temporary use of online nondownloadable document management application software; Application service provider (ASP) featuring computer software for health management performed by managing body weight, body fat percentage and body composition information; hosting computer websites for health management by managing weight, body fat percentage and body composition information; rental of measuring apparatus; rental of laboratory apparatus and instruments; providing temporary use of online nondownloadable computer programs with artificial intelligence functions for {specify function of software, e.g. word processing}; providing temporary use of online nondownloadable computer software for scientific and technical data analysis using artificial intelligence (AI); consultancy and advice on designing computer programs using artificial intelligence; biotechnology testing and research and advice related thereto 

 

Class 44:  Medical analysis services relating to the treatment of patients; providing medical information; providing information on prevention and treatment of viral diseases, infectious diseases, cardiovascular diseases, metabolic disorders, endocrine diseases, cardiovascular diseases, cardiopulmonary diseases, neoplastic diseases, liver diseases, eye diseases, respiratory diseases, neurological diseases, musculoskeletal diseases, digestive diseases and immune system diseases and disorders; medical services for the treatment of medical diseases, illnesses and conditions in the therapeutic areas of central nervous systems (CNS), endocrine disorders, musculoskeletal, anti-viral, pain control, sexual dysfunction, anti-addictive, respiratory and allergies; performing diagnosis of viral infections and providing information relating thereto; consultancy on managed public health care services and providing information relating thereto; providing advice and information on the prevention of pet diseases; providing advice and information on disease prevention; providing medical information via the cable and computer communication network; providing medical diagnosis of {indicate condition or disease, e.g., speech disorders, breast cancer, infertility, etc.} via images and movies; consultancy relating to medical services; consultancy relating to medical services for animals; providing medical information on biotechnology; Medical diagnosis and treatment of {indicate condition or disease, e.g., speech disorders, breast cancer, infertility, etc.} via regenerative medicine; Medical treatment of {indicate condition or disease, e.g., speech disorders, breast cancer, infertility} using cell cultures; medical diagnosis and treatment of {indicate condition or disease, e.g., speech disorders, breast cancer, infertility} using gene information; medical diagnosis of {indicate condition or disease, e.g., speech disorders, breast cancer, infertility} via the X-ray photographs analysis; intermediary services for medical diagnosis of {indicate condition or disease, e.g., speech disorders, breast cancer, infertility} via the X-ray photographs analysis; providing blood tests for medical purposes; provision of data relating to the medically related results of blood tests and blood analysis; in-home medical blood test services; consultancy and information services relating to health care; medical institutions in the nature of hospitals for health management; providing medical information regarding health examinations; health care for animals and providing information thereof; dietary and nutritional guidance; animal breeding; veterinary services; grooming beautification for animals; nursing care; beauty care services; providing information about beauty; make-up application services; beauty consultancy; massage and therapeutic Shiatsu massage; chiropractic services; moxibustion; medical treatment for dislocated joints, sprain, and bone fractures; bodywork therapy; acupuncture; providing medical information using website or electronic bulletin boards via the computer or mobile phone; providing medical information using text messaging services; collection, analysis and provision of medical information; medical consultancy on prescribing and wearing cultured skin for the treatment of skin conditions; providing medical information and consultancy on long-term care; medical consultancy on nursing care for the elderly, sick and physically handicapped; providing medical information to provide effective treatment by evaluation of recovery programs for patients during the recovery phase of illness; rental of imaging medical apparatus for medical use; medical equipment rental; consultancy relating to medical examination services. 

 

If no suggestions were made above, then that wording is acceptable as is.

 

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.

 

How to Add Classes

 

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 Sections 1(b) and 44:

 

(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 nine classes; however, applicant submitted a fee(s) sufficient for only seven 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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Amy E. Thomas/

Examining Attorney

Law Office 110

U.S. Patent & Trademark Office

571-272-9171

Amy.Thomas@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.  

 

• 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 30, 2021 for

U.S. Trademark Application Serial No. 90754468

 

A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You must respond to this Office action in order to avoid your application abandoning.  Follow the steps below.

 

(1)  Read the Office action HERE.  This email is NOT the Office action.

 

(2)  Respond to the Office action by the deadline using the Trademark Electronic Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.

 

(3)  Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).

 

After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in the Office action.

 

 

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 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 may mail or email you trademark-related offers and notices – most of which require fees.  The USPTO will only email official USPTO correspondence from the domain “@uspto.gov.”

 

·       Hiring a U.S.-licensed attorney.  If you do not have an attorney and are not required to have one under the trademark rules, we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration process.  The USPTO examining attorney identified above is not your attorney and cannot give you legal advice, but rather works for and represents the USPTO in trademark matters.