UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/611609
APPLICANT: PIERRE FABRE MEDICAMENT
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PIERRE FABRE
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
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 76/611609
The assigned examining attorney has reviewed the referenced application and determined the following.
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.
Applicant must amend the application to specify at least one filing basis in the application; and applicant must also satisfy all the requirements for the basis or bases asserted. TMEP §806. In the present case, applicant has failed to set forth or satisfy the requirements for a basis.
An application may be filed based on the following:
(1) use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a) (TMEP §806.01(a));
(2) a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §1051(b) (TMEP §806.01(b));
(3) a claim of priority, based on an earlier-filed foreign application under Trademark Act Section 44(d), 15 U.S.C. §1126(d) (TMEP §806.01(c));
(4) foreign registration of a mark in the applicant’s country of origin under Trademark Act Section 44(e), 15 U.S.C. §1126(e) (TMEP §806.01(d)).
Depending on the circumstances, applicant may be entitled to assert more than one of the above bases for filing. In such a case, applicant must: (1) satisfy all requirements for each basis claimed; (2) clearly indicate that it is claiming more than one basis; and (3) separately list each basis, followed by the goods or services to which that basis applies. See 37 C.F.R. §2.34; TMEP §§806.02 et seq.
Although multi-basis applications are permitted, applicant may not assert both use in commerce under Trademark Act Section 1(a) and intent to use the mark in commerce under Trademark Act Section 1(b) for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
The wording “dietetic preparations” in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the common commercial name of the goods. If there is no common commercial name, the applicant must describe the product and its intended uses. TMEP §1402.01.
The applicant may adopt the following identification of goods, if accurate: pharmaceutical preparations, namely, anti-depressants, anti-cancerous preparations, vaccines, medicated preparations for the preservation and treatment of respiratory diseases and infections, medicated preparations for the prevention and treatment of prostatic and urinary disorders and their consequences; dietary drink mixes for use as a meal replacement in Class 5.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
Applicant must clarify whether the name in the mark identifies a particular living individual.
If the name in the mark identifies a particular living individual, then applicant must submit the following:
(1) a signed, written consent from that individual, authorizing applicant to register the name as a trademark with the USPTO; and
(2) a statement that “Pierre Fabre identifies a living individual whose consent is of record.”
However, if the name in the mark does not identify a living individual, then applicant must submit a statement that “Pierre Fabre does not identify a living individual.” Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813 and 1206.
The applicant must indicate whether “Pierre Fabre” has any significance in the relevant trade, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Applicant must submit a concise description of the design component in the mark. 37 C.F.R. §2.37; TMEP §§808 et seq. Note that depending upon Applicant’s response, additional searching of the Office records may be required. The following format is suggested:
The design component of the mark consists of ^.
Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52. The current drawing is not acceptable because the horizontal lines are not crisp and clear and it will not reproduce satisfactorily. TMEP §807.07(a).
The requirements for a standard character drawing submitted on paper are as follows:
· a sheet of nonshiny white paper that is separate from the application and is 8 to 8.5 inches wide by 11 to 11.69 inches long (or 20.3 to 21.6 cm. wide and 27.9 to 29.7cm. long);
· one of the shorter sides of the sheet should be regarded as its top edge;
· include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 cm.) from the top edge;
· depict the mark in black print;
· depict all letters and words in the mark in Latin characters;
· depict all numerals in the mark in Roman or Arabic numerals; and
· the mark includes only common punctuation or diacritical marks as shown on the Office’s official table of acceptable standard characters.
37 C.F.R. §§2.52(a) and 2.54; See TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.06.
Applicant must submit a statement that the lining in the drawing is for shading purposes only. 37 C.F.R. §2.37; TMEP §807.09(e).
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Montia Givens Pressey/
Examining Attorney
Law Office 111
Tel. No.: (571) 272-9717
Fax No.: (571) 273-9717
Email: montia.pressey@uspto.gov
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.