Offc Action Outgoing

The examining attorney acknowledges the applicant’s arguments that all of the cited references have been abandoned. For reasons that follow, the previously raised specimen and evidence needed to support a “full line” of goods requirement is maintained and made FINAL.

FINAL –SPECIMEN/EVIDENCE DOES NOT SUPPORT A FULL LINE OF GOODS

In the initial office action dated March 24, 2003, the examining attorney found that neither the specimen of record not the record as a whole supported the identified “full line of pharmaceuticals” as required by TMEP section 1402.03(c).

By way of response dated August 19, 2003, the applicant provided record specimens and evidence, generally in the nature of a product catalog, in an attempt to support the same. However, by office action dated May 14, 2004, the examining attorney noted that the specimens/evidence, while extensive, were not seen to be sufficient to support a “full line” of pharmaceuticals. It was noted that the specimens and evidence of record would however support the following identification of goods: A line of pharmaceuticals in the following therapeutic categories: anti infectives, cardiovascular agents, hormonal agents, analgesics, oncology and psychotherapeutic products. Accordingly the specimen requirement was MAINTAINED, and this requirement has been MAINTAINED while application has remained subsequently suspended.

TMEP section 1402.03(c) makes it clear that full line terminology is acceptable in “rare circumstances” and “limited circumstances” where the applicant can substantiate a true full line of products. Specifically, the section reads in pertinent part as follows.

The “full line of” language may be used only in appropriate situations and the circumstances and specimens or other evidence of record should be analyzed carefully, to ensure that an applicant who does not in fact use a particular mark on a sufficient number or variety of products in its line does not receive a trademark registration that could potentially bar the registration of another applicant who uses a similar mark on different products. See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products).

In this limited situation, the Office permits the applicant to use broad language to identify the genre of products that constitute the full line (i.e., clothing or pharmaceuticals), because the applicant is committing to virtually all the goods described by the broad language and the validity of the registration depends on the applicant’s statement that it is using the mark on all the goods and the evidence of such use as a “full line.” Therefore, while the Office will accept “a full line of clothing” as a sufficient identification, the Office will not accept an identification of goods as merely “clothing.” In the latter situation, the applicant must identify the items of the clothing by their common commercial name since the applicant is not likely using the mark for all items of clothing and the registration should be limited to only those items of clothing in conjunction with which the applicant is actually using the mark.

In some cases, it may be more appropriate to indicate that the applicant is providing a full line of a subset of a genre of products (e.g., “a full line of sports clothing” or “a full line of anti-viral and cardiovascular pharmaceuticals”). As with an identification that refers to a full line of a genre of products, all of the products must be classifiable in one class and the specimens and/or other evidence must show use of the mark on virtually all of the relevant goods.

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The USPTO will register a mark for a “full line of” a genre of products only in the limited circumstances where the mark is actually used as such. If an applicant seeks to register a mark for a “full line of” a genre of products in an application under §44 or §66(a) of the Trademark Act, the examining attorney must require evidence to substantiate use for a full line of products. This is not a requirement for specimens, but rather a requirement that applicant provide evidence to substantiate the claim of use as a mark for a “full line of” a genre of products. 37 C.F.R. §2.61(b). If the applicant cannot do so, the identification of goods must be amended to conform to the usual standards for specificity.

The specimens and evidence of record do not show use of a full line of pharmaceuticals, that is, nearly a complete line of pharmaceuticals of every type. To the contrary, the record shows a substantial line of pharmaceuticals which fall into the following therapeutic categories: anti infectives, cardiovascular agents, hormonal agents, analgesics, oncology and psychotherapeutic products. The record does not meet the heavy burden needed to show a full line of goods. Therefore the requirement is maintained and made FINAL.

Applicant may provide further specimen and record evidence to support a full line of goods, or alternatively, may amend the identification to identify those goods actually supported by the specimens of record as previously suggested by the examining attorney.

For the forgoing reasons, the specimen and evidence needed to support a “full line” of goods requirement maintained and made FINAL. If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:

(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

Please feel free to contact the undersigned attorney if you wish to discuss this application.

/John S. Yard/

Trademark Examining Attorney

Law Office 115

(571) 272-9486

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.