UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/373277.  This application has been reassigned to the examining attorney listed below.  This letter responds to the applicant’s communication of December 12, 2002.  The refusal based on the descriptiveness of the mark is withdrawn.  The following issues remain outstanding.

 

Specimen

The specimen is unacceptable as evidence of use of the trademark on goods.  Invoices, announcements, order forms, bills of lading, leaflets, brochures, publicity releases and other printed advertising material generally are not acceptable specimens.  In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979); TMEP sections 905.05 and 905.07.  See In re Ultraflight Inc., 221 USPQ 903 (TTAB 1984). 

 

The applicant must submit a specimen showing the mark as it is used in commerce.  37 C.F.R. Section 2.56.  Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. 

 

The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. Section 2.59(a); TMEP section 905.10.

Identification of Goods

The amended identification of goods is unacceptable because the use of the pharmaceutical preparations is not given.  For example, do they treat a specific illness, or act as carrier preparations used for eliciting an immune response, or act as vaccines?  The applicant must indicate the specific purpose of the pharmaceutical preparations.

 

The applicant may adopt the following identification, if accurate (suggested changes given in bold):

 

• Pharmaceutical preparations consisting of nano and micro particles that contain bioactive agents and utilize lyotropic liquids and liquid crystals, and ingredients and components thereof for use in [indicate specific use, e.g., the treatment of cancer]; veterinary preparations consisting of nano and micro particles containing bioactive agents and utilize lyotropic liquids and liquid crystals, and ingredients and components thereof for use in [indicate specific use, e.g., the treatment of cancer] (Class 5)

 

TMEP section 1402.01.  The applicant should note that, although an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b); TMEP section 1402.01.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

Additional Classes of Goods

Only one class of goods is suggested above.  If the applicant were to include more than one class in the application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods by class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  The fee for filing a trademark application is $335 for each class.

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

 

                                                                                            Leigh Caroline Case

        /Leigh Caroline Case/

                                                                                                Trademark Attorney, Law Office 105

 

                  Ecom105@uspto.gov    Law Office e-mail                  (703) 872-9875                     Law Office Fax

                  (703) 308-9105               Law Office phone                  (703) 308-9105 x 148                  Attorney phone

                             

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.