Offc Action Outgoing

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  76/443912

 

The assigned examining attorney has reviewed the referenced application and determined the following:

 

EARLIER-FILED APPLICATION

 

Although the examining attorney has searched the office records and has found no similar registered mark which would bar registration under Trademark Act §2(d), 15 U.S.C. §1052(d), the examining attorney encloses information regarding pending Application Serial No. 76/244404.  37 C.F.R. §2.83. 

 

There may be a likelihood of confusion between the applicant’s mark and the mark in the above- noted application under §2(d) of the Act.  The filing date of the referenced application precedes the applicant’s filing date.  If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under §2(d).

 

UNSIGNED DECLARATION

 

The application must be signed, and verified or supported by a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application.

 

The verified statement must include an allegation that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101. 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The application identifies goods and services that may be classified in more than one international class.  Therefore, the applicant must either:  (1) restrict the application to one class, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application increased to $335.00 for each class.  This applies to classes added to pending applications as well as to new applications filed after that date.  37 C.F.R. §2.6(a)(1). 

 

In addition, portions of the identification are unacceptable because they are indefinite.  TMEP §§1402.01 and 1402.11.  The applicant is advised as follows regarding the identification, by class:

 

Class 9 – “Computer software for use in searching of data” and “computer software for use in sharing of data or of information” must specify the field of use if there is a specific field of use; otherwise, the function or purpose of the software must be clarified.  FUNCTION = WHAT DOES THE SOFTWARE DO?                          

 

With respect to the remainder of the Class 9 identification, the portions that include the wording “software for” must be amended to include the function of the software.

 

“Database development services” is classified in Class 42.  This wording may be moved to the Class 42 identification.

 

The wording beginning with “downloadable electronic publications” is acceptable in Class 9.

 

Class 35 – “Offering technical assistance in the establishment and/or marketing of pharmaceutical or medical products” includes services in two classes.  “Offering technical assistance in the establishment of pharmaceutical or medical products” is classified in Class 42, while “offering technical assistance in the marketing of pharmaceutical or medical products” is classified in Class 35.

 

The  wording “business management information on a wide variety of topics to service-providing professionals in the field of medicine and pharmacology” is unclear.  What is meant by “wide variety of topics to service-providing professionals….”?  This language should be rewritten to more clearly identify the service.

 

“Providing an on-line computer database of clinical trial assessments” is classified in Class 42.

 

“Providing business intelligence solutions to the pharmaceutical industry including databases and market analysis” is unacceptable because the applicant uses the word “including.”  The recitation must be all‑inclusive.  The applicant should amend the identification to replace “including” with “namely.”  In addition, the subject matter of the databases must be specified.  “Market analysis” is an acceptable recitation in Class 35.

 

The remainder of the Class 35 recitation is acceptable.

 

Class 41 – “Provision of reprints from medical journals” is unclear.  The following language is suggested:  “providing reprints of text of articles from medical journals via a website on the Internet,” in Class 44.

 

The word “including” in the language “electronic publishing services…” must be amended to “namely.”

 

“Presentations training” is unclear.  The meaning of “presentations” must be specified.

 

“Delivery of medical and pharmacological publications, journals and newsletters” is unclear; if this refers to the physical delivery of these goods, similar to newspaper delivery, the service is classified in Class 39.

 

The remainder of the recitation in Class 41 is acceptable.

 

Class 42 [§1(b) only] – The wording “commercial information” in “providing electronic information for others regarding clinical and commercial information on drugs in development by the pharmaceutical industry” is unclear; what is meant by “commercial information”?  Providing information on the drugs themselves is a service classified in Class 44.

 

“Leasing access time to a computer database concerning the pharmaceutical industry” is unacceptable because it is indefinite; “leasing access time” is no longer considered acceptable wording by the Trademark Office.  More specific wording must be substituted.

 

Class 42 [§§1(b) and 44(e)] --

 

“Design of literature” is unclear; more specific language is required.

 

“Professional and expert services relating to medicine and pharmacology” is indefinite; the specific nature of the services must be stated.

 

“Monitoring press clippings” is unclear; more specific wording is required.

 

While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

For assistance in preparing identifications of goods and services, the applicant may log on to the Internet and access the Acceptable Identification of Goods and Services Manual which took effect for applications filed after 1-1-02 at http://atlas.gov.uspto.report/netahtml/tidm.html.  The previous version may be accessed at http://atlas/netahtml/ticm.html.

 

FOREIGN REGISTRATION

 

An application under Trademark Act §44(e), 15 U.S.C. §1126(e), must include a copy of a foreign registration from the applicant’s country of origin.  The applicant’s country of origin must either 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.  See TMEP §§1002.01 and 1004.

 

The application does not contain a copy of the foreign registration.  Therefore, the applicant must submit a true copy, a photocopy, a certification, or a certified copy of the foreign registration.  If the foreign certificate of registration is not written in English, the applicant must provide an English translation.  The translator should sign the translation.  See TMEP §§1004.01 and 1004.01(b).

 

The applicant has also filed relying on its claim of a bona fide intention to use the mark in commerce under Trademark Act §1(b), 15 U.S.C. §1051(b).  The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application.  Unless the applicant indicates otherwise, the Trademark Office will assume that the applicant wishes to rely on §1(b) as well as on §44(e) as the bases for registration.  In this case, although the application may be approved for publication, the mark will not be registered until an acceptable allegation of use has been filed.

 

At the time the applicant submits the foreign registration, the applicant should clearly state if the applicant intends to rely solely on the foreign registration as the basis of registration.  If so, the applicant should request that the §1(b) filing basis be deleted.

 

OWNED REGISTRATIONS

 

If the applicant is the owner of Registration Nos. 1,523,931; 1,689,407; and 1,727,487, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

 

/Sue Carruthers/

Examining Attorney, Law Office 108

Phone: 703.671.9735 ext. 169

Fax: 703.746.8108 (formal responses only)

E-mail: ecom108@uspto.gov (formal responses only)

   sue.carruthers@uspto.gov (informal communications)

 

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.