UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION
`SERIAL NO.   79232007
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`           
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`MARK: AMIDI
`
`CORRESPONDENT
`ADDRESS:
`  
`       GEVERS
`  
`       Holidaystraat 5
`         1831 Diegem
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`              
`    
`
`    BELGIUM
`APPLICANT:
`miDiagnostics
`
`*79232007*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
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`   
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`CORRESPONDENT’S
`REFERENCE/DOCKET
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`   
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`NO:       
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`  N/A
`CORRESPONDENT
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`E-MAIL ADDRESS:       
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`OFFICE ACTION
`
`INTERNATIONAL REGISTRATION NO. 1401538
`
`STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR
`EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE
`TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
`WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
`
`In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the
`USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  To do so, enter the U.S. application serial
`number for this application and then select “Documents.”   The Mailing Date used to calculate the response deadline for this provisional full
`refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
`
`This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. 
`See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
`
`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.
`The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that
`would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).
`
`SUMMARY OF ISSUES
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`-        Amendment of Identification of Goods and Services Requirement
`-       
`Inquiry on Wording in Mark – Appears to Be Foreign
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`AMENDMENT OF IDENTIFICATION OF GOODS AND SERVICES
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`The identification of goods contains indefinite wording that must be clarified. TMEP §1402.01.  
`
`International Class 42
`Applicant must clarify the wording “ medical research and scientific study and research, namely, scientific and biotechnological facilities
`and research for the health care with regard to the production, validation, development, storage, transport, and use in an electronic
`device, consisting of one or more chips, integrated pharmaceutical compositions and in-vitro analysis - and diagnostic tools” because it is
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`indefinite.   See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  While medical research and scientific research are properly classified in
`International Class 42, the remainder of applicant’s wording makes the services being rendered unclear.   It is unclear if “scientific and
`biotechnological facilities” are a type of research or if this is where the research is being conducted.   Further, the punctuation in the wording
`makes the specific types of medical research and scientific research hard to discern.
`Suggested Amendments
`Applicant may adopt the following suggested amendments, if accurate:
`
`Class 5: Pharmaceutical preparations, namely, diagnostic reagents for medical and veterinary use, for medical in-vitro analysis
`and diagnosis in humans and animals, integrated in an electronic device, consisting of one or more chips
`
`Class 9: Software, including mobile applications, for performing an in-vitro analysis and medical diagnosis in humans and
`animals, the storing and recording of this data and for transmitting the information recorded; computer software platforms for
`enabling users to operate, cluster, view, track and to research data related to health; electronic chips, namely, semiconductor chips
`
`Class 10: Analysis and diagnostic devices for medical use, integrated in an electronic device, consisting of one or more chips,
`namely, apparatus for performing a medical in-vitro analysis and medical diagnosis in humans and animals
`
`Class 42:  Providing scientific and technological services and research and design relating thereto, namely, research and design in
`the field of in-vitro diagnostics, medical research and scientific research information in the field of pharmaceuticals and clinical
`trials; medical research and scientific study and research in scientific and biotechnological facilities, namely, research in health
`care with regard to the production, validation, development, storage, transport, and use of an electronic device consisting of one
`or more chips, integrated pharmaceutical compositions and in-vitro analysis, and diagnostic tools; designing, installing,
`maintaining, developing and updating software, mobile software applications and computer software platforms; consultancy and
`providing information regarding the aforesaid services, including provided via electronic networks such as the internet
`
`Class 44: Medical services and services in the field of healthcare, namely, healthcare and providing healthcare information
`
`Applicant may amend the identification 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.  Generally, any deleted goods
`and/or services may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the
`scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of
`the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from
`that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a)
`application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP
`§1401.03(d).
`
`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.
`
`INQUIRY ON WORDING IN MARK – APPEARS TO BE FOREIGN
`
`Applicant must specify whether “AMIDI” in the mark has any meaning in a foreign language.   If this wording has meaning in a foreign
`language, applicant must submit a statement translating the non-English wording in the mark.  See 37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.
`
`Accordingly, if the wording “AMIDI” has meaning in a foreign language, applicant should provide one of the following translation and
`transliteration statements:
`
`The English translation of the word “AMIDI” in the mark is “<English Translation>”.   
`Alternatively, if the wording “AMIDI” does not have meaning in a foreign language, applicant should provide the following statement:   
`The wording “AMIDI” has no meaning in a foreign language.
`
`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.
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`RESPONSE GUIDELINES
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`For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the
`action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should
`register.  Applicant may also have other options specified in this Office action for responding to a refusal, and should consider those options
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`carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or
`statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a
`response online, see “ Responding to Office Actions” on the USPTO’s website.
`
`If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International
`Bureau, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15
`
`U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§711, 718.01, 718.02.  
`
`When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application,
`which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within
`two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System
`(TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
`
`Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S.
`attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark
`examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no
`USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.   TMEP §§705.02, 709.06. 
`For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory
`of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of an attorney.  37 C.F.R. §2.11.
`
`Please note that foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g.,
`file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See
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`37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  
`WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be
`personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate
`officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or
`her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys
`include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S.
`commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the
`proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R.
`§2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature,
`or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).
`
`In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an
`amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-
`
`.03(b), 608.01.  
`DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to
`designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37
`
`C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.uspto.gov/trademarks/teas/correspondence.jsp.     
`
`/Anna C. Burdecki/
`Anna C. Burdecki
`Trademark Examining Attorney
`Law Office 108
`Phone: (571)270-1941
`anna.burdecki@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
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`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
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`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
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`response.  
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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