To: | Acorda Therapeutics, Inc. (joseph.guagliardo@troutman.com) |
Subject: | U.S. Trademark Application Serial No. 90043944 - PARKINSON'S PUFFER - N/A |
Sent: | August 30, 2020 05:55:00 PM |
Sent As: | ecom119@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 Attachment - 29 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90043944
Mark: PARKINSON'S PUFFER
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Correspondence Address: |
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Applicant: Acorda Therapeutics, Inc.
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Reference/Docket No. N/A
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: August 30, 2020
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.
Specifically, the applicant has applied to register the mark PARKINSON’S PUFFER for the following goods and services:
Class 5: Pharmaceutical products, namely, pharmaceutical and biological preparations used in the treatment of Parkinson's disease
Class 10: Medical devices, namely, drug delivery system that facilitates the delivery of pharmaceutical and biological preparations used in the treatment of Parkinson's disease
Class 35: Providing campaigns featuring information to promote public awareness regarding Parkinson's disease
Class 44: Providing health information regarding Parkinson's disease
Attached is dictionary evidence of the following relevant definitions:
PARKINSON’S: “a chronic progressive neurological disease chiefly of later life that is linked to decreased dopamine production in the substantia nigra and is marked especially by tremor of resting muscles, rigidity, slowness of movement, impaired balance, and a shuffling gait”
PUFFER: “an inhaler” and “A manually-operated inhaler.”
INHALER: “An apparatus for administering pharmacologically active agents by inhalation. Synonym(s): puffer”
Also attached is an excerpt from http://en.wikipedia.org/wiki/Inhaler that indicates that “[a]n inhaler (also known as a puffer, pump or allergy spray) is a medical device used for delivering medicines into the lungs through the work of a person's breathing.”
The mark immediately describes and names the characteristics and features of the goods and services, namely, it refers to preparations used in inhalers to treat Parkinson’s, inhalers used to treat Parkinson's, promoting public awareness about inhalers used to treat Parkinson’s, and providing health information about using inhalers to treat Parkinson’s.
In addition, attached is Internet evidence from http://www.apdaparkinson.org/article/fda-approves-inbrija-off-parkinsons-disease/ and http://www.alzforum.org/news/research-news/levodopa-inhaler-parkinsons about the development of inhalers for treating Parkinson’s.
Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1) of Trademark Act.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following.
INFORMATION ABOUT GOODS/SERVICES AND WORDING 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:
· Are applicant’s pharmaceutical and biological preparations used to treat Parkinson's disease via inhalation?
· Will applicant’s pharmaceutical and biological preparations be used to treat Parkinson's disease via inhalation?
· Are applicant’s drug delivery systems used to administer pharmaceutical and biological preparations via inhalation to treat Parkinson's disease?
· Will applicant’s drug delivery systems be used to administer pharmaceutical and biological preparations via inhalation to treat Parkinson's disease?
· Does or will the applicant promote public awareness regarding the treatment of Parkinson's disease via inhaled pharmaceutical and biological preparations?
· Does or will the applicant provide health information regarding treatment of Parkinson's disease via inhalation of pharmaceutical and biological preparations?
· Do applicant’s competitors use the term “PUFFER” in connection with similar goods or services?
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.
The following statements must be verified: That applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; that applicant believes applicant is entitled to use the mark in commerce on or in connection with the goods or services specified in the application; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(2), (c), 2.34(a)(2), (a)(3)(i), (a)(4)(ii).
For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.
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.
/John M.C. Kelly/
John M.C. Kelly
Examining Attorney
Law Office 119
571-272-9412
john.kelly@uspto.gov
RESPONSE GUIDANCE