Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

The assigned trademark examining attorney has reviewed the referenced application and has 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.

 

Identification of Goods

 

The wording in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01. 

 

          Prescription and non-prescription medications for use in the treatment of (specify the

          disease or condition to be treated) and (specify e.g., dietary or nutritional supplements,

          in International Class 5

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying 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.

 

The applicant should use the listings located in this database exactly as worded if possible.  Please note that use by the applicant of parenthesis within an identification of the goods is unacceptable as indefinite.  With regard to those listings in the Office’s database that include terms within parenthesis and/or brackets, the applicant must set forth the term(s) that specifically cover the applicant’s goods or services.  As always, any identification of goods or recitation of services the applicant chooses to adopt should 1) accurately describe the applicant’s goods or services; 2) be placed in the correct class of goods or services; and 3) list only those goods or services within the scope of those included in the original application.

 

Disclaimers

 

Applicant must disclaim the descriptive wording “PHARMACEUTICALS” apart from the mark as shown because it merely describes a feature, function, use, and/or characteristic of the applicant’s goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  The following is the standard format used by the Office:

 

No claim is made to the exclusive right to use “PHARMACEUTICALS” apart from

the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a). 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  A disclaimer does not affect the appearance of the applied-for mark.

 

Significance of Mark

 

Applicant must specify whether “STESSO” has any significance in the identified trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

How to Respond to this Office Action:

 

ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).

 

REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

Mailing/E-mailing Date Information: 

 

If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

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.

 

Copies of Documents 

 

The applicant may view and download any or all documents contained in the electronic file wrapper of all pending trademark applications, as well as many registrations via the Trademark Document Retrieval (TDR) system available online at the following site:

 

http://portal.gov.uspto.report/external/portal/tow. 

 

Currently, applicant’s can access all pending applications and all Madrid Protocol filings, as well as many valid registrations, via TDR.  The USPTO is in the process of converting all remaining registrations into digital format, to permit future TDR access.  This conversion process is expected to take several years.

 

New TEAS Plus Filing System

 

On July 18, 2005, the USPTO introduced a new version of the application for a Trademark/Service mark, Principal Register.  The TEAS Plus form features a lower filing fee of $275 per class of goods and/or services (the TEAS form fee is $325 per class of goods and/or services), but has stricter filing requirements than the regular TEAS form.  Applicants are encouraged to read more about this new alternative filing program at the following site:

 

http://www.gov.uspto.report/teas/eTEASupcoming.html#TEASPlus.

 

Status of Application:

 

To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at the following site:

 

http://tarr.uspto.gov.

 

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.

 

 

 

 

/JSD/

 

Jeffrey S. DeFord

Examining Attorney

United States Patent & Trademark Office

Law Office 115

(571) 272-9469