UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/550032
APPLICANT: Schering Aktiengesellchaft
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CORRESPONDENT ADDRESS: WILLIAM F. LAWRENCE FROMMER LAWRENCE & HAUG LLP 745 FIFTH AVENUE NEW YORK, NY 10151
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: PROTOVIST
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CORRESPONDENT’S REFERENCE/DOCKET NO: 517710-8213.
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 76/550032
The assigned examining attorney has reviewed the referenced application and determined the following.
Search Results
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.
Identification of Goods
The identification of goods is unacceptable as indefinite because the applicant must indicate the diseases or conditions to be treated by the goods or applicant may consult the on-line manual for a list of general classes of pharmaceutical preparations which are acceptable – for example, analgesics, antihypertensives, antibiotics, antiemetics. TMEP §1402.01. The applicant may use the following suggest format in formulating an acceptable identification, if accurate: “pharmaceutical preparations for use in the treatment of __________________.”
For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
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 goods that are not within the scope of goods set forth in the present identification.
Option to Delete Basis
The applicant has filed relying on its claim of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and on a foreign registration under Section 44(e), 15 U.S.C. §1126(e). The foreign registration alone may serve as the basis for obtaining a U.S. registration resulting from this application. The applicant must advise the examining attorney, however, if the applicant intends to rely solely on the foreign registration as the basis for registration.
Unless the applicant indicates otherwise, this Office will presume that the applicant wishes to rely on Section 1(b) as well as on Section 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.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Nora Buchanan Will/
Trademark Attorney, Law Office 116
ph 703-306-7915/ fax 703-746-8116
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 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.