UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/488509
APPLICANT: Texas Biotechnology Corporation
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CORRESPONDENT ADDRESS: MARTIN L. KATZ WOOD, PHILLIPS, KATZ, CLARK & MORTIMER CITICORP CENTER, SUITE 3800 500 WEST MADISON ST. CHICAGO, ILLINOIS 60661-2511 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: ENCYSIVE PHARMACEUTICALS INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/488509
The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02. Before this mark may be approved for publication, the applicant must respond to the following items.
Disclaimer
The applicant must disclaim “PHARMACEUTICALS INC.” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a). The term “pharmaceuticals” is merely descriptive of the subject matter of the services. A corporate designation serves no service mark purpose. The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP §1213.08(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use PHARMACEUTICALS INC. apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
The bolded wording in the recitation of services is unacceptable because it does not provide enough clarity for proper classification or does not comply with the Office’s Identification Manual. Suggestions within brackets are provided for guidance. A manual containing a listing of goods or services and proper wording for each classification is available on-line at the U.S. Patent and Trademark Office’s web site: www.uspto.gov. The applicant may adopt following formats, if accurate:
“distributorships in the field of [indicate field, e.g. pharmaceuticals]” in International Class 35;
“manufacture of [indicate specific items, e.g. furniture, plastic parts] to order and/or specification of others” in International Class 40;
“corporation engaged in the [delete wording unnecessary] research [specify type of research and field of research, e.g., “laboratory research in the field of [indicate specific field, e.g. bacteriology”], development [pharmaceutical products development], manufacturing [manufacturing one’s own goods is not a service recognized under the Lanham Act], distribution [term unacceptable and incorrect classification], marketing and sale of pharmaceutical products [incorrect classification—the terms “marketing” and “sale” are unacceptable—check on-line ID Manual for proper wording ” in International Class 42.
TMEP section 804.
Please note that, 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 services that are not within the scope of the services recited in the present identification.
If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.
(1) The applicant must list the services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
/Christopher L. Buongiorno/
Law Office 113
(703) 308-9113 ext. 460
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.