UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

Please note:  Applicant is encouraged to telephone the assigned trademark examining attorney to resolve the issues raised in this Office action.

 

NO LIKELIHOOD OF CONFUSION

 

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

 

IDENTIFICATION OF GOODS

 

Applicant must amend the identification of goods.

 

The wording “pharmaceuticals” in the identification of goods is indefinite and must be clarified because it does not clearly and adequately describe the exact nature of the goods intended.  See TMEP §1402.01.  Applicant must specify the exact goods intended by their common commercial names and intended purposes or uses.

 

Applicant may substitute the following wording, if accurate:

 

“Pharmaceutical preparations for the treatment of {specify disease to be treated}” in International Class 5.

 

Although identifications of goods may be amended to clarify or limit the goods, adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  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.  See TMEP §1402.04.

 

STANDARD CHARACTER CLAIM

 

Applicant must submit the following standard character claim:  “The mark is presented in standard characters without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

SIGNIFICANCE OF THE MARK

 

Applicant must specify whether the wording “CF” has any significance in the pharmaceutical trade or industry or as applied to the goods/services described in the application.  37 C.F.R. §2.61(b).  See attached acronym evidence for guidance.

 

DISCLAIMER

 

The applicant must insert a disclaimer of OMEGA in the application because it describes a feature, characteristic, and nature of the goods, namely, the chemical group or position at the end of a molecular chain in applicant’s pharmaceutical goods.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  See attached dictionary and third party registration evidence in support of the disclaimer requirement.

 

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 “OMEGA” apart from the mark as shown.

 

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

QUESTIONS

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/Marcie R. Frum Milone/

Trademark Examining Attorney

Law Office 116

571-272-9726

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.