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  76/533879

 

 

 

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

 

Search Results

The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

I Identification of Goods-Clarification Required

However, the following wording in the identification of goods is unacceptable as indefinite for federal registration purposes because it is too vague:

 

Pharmaceutical, veterinary and sanitary preparations, except gastrointestinal preparations;

 

dietetic substances adapted for medical use;

 

dietetic preparations including dietetic foodstuffs not adapted for medical use, with a base of vitamins, minerals and/or trace elements;

 

vitamin preparations,

 

mineral preparations,  

 

plasters,

 

materials for dressings.

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “materials,” “preparations” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a).

 

The applicant may adopt the following identification of goods, if accurate: 

 

Pharmaceutical, veterinary and sanitary preparations, except gastrointestinal preparations, namely, [specify; e.g., anticoagulants, antidepressants, etc.] OR Pharmaceutical, veterinary and sanitary preparations, except gastrointestinal preparations for [specify disease/condition that the preparations are intended to treat]; diagnostic preparations for medical purposes; dietetic substances adapted for medical use, namely [specify]; dietetic preparations, namely, [specify] including dietetic foodstuffs not adapted for medical use, with a base of vitamins, minerals and trace elements, namely, [specify]; food for babies; vitamins and vitamin preparations in the nature of [specify], minerals and mineral preparations in the nature of [specify], food supplements for medical purposes; food supplements not for medical use with a base of vitamins, minerals, and/or trace elements; medical plasters, materials for dressings, namely, [specify type, e.g., wound, burn, surgical]dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides in IC 5.

 

 

For additional guidance, the applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual for the United States Trademark Office which may be found at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual is searchable using Ctrl+F. 

 

The applicant is also advised 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 goods/services that are not within the scope of the goods/services set forth in the present identification.

 

II  Certificate of Registration Required

Applicant must also submit a copy of the foreign registration.  If the foreign certificate of registration is not written in English, then applicant must provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

The application does not presently contain a copy of the foreign registration.  An application filed under Trademark Act Section 44(e), 15 U.S.C. §1126(e), must include a true copy, photocopy, certification or certified copy of a foreign registration from the applicant’s country of origin.  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.

 

III   Significance of Mark

Finally, applicant must specify whether “XEOMIN” has any significance in the specific field or trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

 

 

 

/kbp/

Kimberly Boulware Perry

Attorney, US Patent & Trademark Office

phone: 703-308-9112 x251

fax: 703-746-8112

email: kimberly.perry@uspto.govperry@uspto.gov

 

 

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.