UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/023114
APPLICANT: Actavis Group hf.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: ACTAVIS
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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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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.
Serial Number 79/023114
INTERNATIONAL REGISTRATION NO. 0882935
This is a PROVISIONAL FULL REFUSAL of the trademark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the United States Patent and Trademark Office (USPTO) in trademark matters are:
(1) Attorneys in good standing with the bar of any U.S. federal court or the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney will be considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS
The assigned examining attorney reviewed the referenced application and determined the following:
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 1398216 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
A likelihood of confusion determination requires a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
The applicant’s mark is ACTAVIS, and the registrant’s mark is ACTIVASE. The marks are highly similar in sound, appearance, meaning, connotation and commercial impression.
The applicant’s goods, including pharmaceutical and veterinary preparations, pharmaceuticals and pharmaceutical compositions, are highly related to Registrant’s pharmaceutical drug- namely, a tissue plasminogen activator. Likelihood of confusion is determined on the basis of the goods as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). Because the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
Because the marks are highly similar in sound, appearance, connotation and commercial impression and because the goods are highly related, registration is refused. Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond, it must also respond to the following requirements.
The wording “preparations, dietetic substances, plasters, materials, disinfectants, pharmaceuticals and pharmaceutical compositions” in the identification of goods is indefinite because it must further specify each good and/or too broad because it could include goods classified in other international classes. See suggestions below. TMEP §§1402.01 and 1402.03. The applicant may adopt the following identification of goods, if accurate:
Pharmaceutical preparations for the treatment of [specify particular disease and/or condition to be treated, e.g., gout], and veterinary preparations for the treatment of [specify particular disease and/or condition to be treated, e.g., skin disorders]; sanitary preparations for medical purposes; dietetic foods adapted for medical use, food for babies; [specify type, e.g., medical, corn] plasters, materials for dressings, namely, [individually specify each item, e.g., gauze]; material for stopping teeth, dental wax; disinfectants for [specify use, e.g., contact lenses]; preparations for destroying vermin; fungicides, herbicides, pharmaceuticals and pharmaceutical compositions, namely, [individually specify each item, e.g., almond oils for pharmaceutical purposes]; in International Class 5
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).
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.
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.
The application identifies the applicant’s entity type as “a public limited company” but does not indicate its country of organization. The applicant appears to be the equivalent of a U.S. corporation and, thus, must set forth the country or U.S. state under whose laws the applicant is organized. 37 C.F.R. §§2.32(a)(3)(ii) and (iii); TMEP §§803.03(i) and 803.04.
The applicant submitted a drawing showing the mark in the color grey coupled with black and/or white, but has not specified whether grey is used as a color in the mark or if the mark is intended to be represented in black and white. The appearance of the color grey creates an ambiguity as to whether the mark features color or is intended to be in black and white. There are only two options for presenting the mark: (1) color drawings, and (2) black and white drawings. 37 C.F.R. §§2.52(b)-(b)(1); TMEP §807.07(e).
Therefore, if grey is considered a color and is a feature of the mark, then the applicant must submit a color claim and description for all the colors in the mark, including black and white, as follows:
The colors grey and white are claimed as features of the mark. The color grey appears in the quadrilateral design and the bands; and the color white appears in the wording ACTAVIS and the semicircular design.
If grey is not considered a color or a feature of the mark, then the applicant must submit a statement that “the mark is not in color.” 37 C.F.R. §§2.52(b) and (b)(1); TMEP §§807.07(a)(i) and (a)(ii).
The applicant must submit an English translation of the mark. 37 C.F.R. §2.61(b); TMEP §809. The following form is suggested:
The English translation of ACTAVIS is _______.
The applicant must indicate what significance the wording “ACTAVIS” has as applied to the identified goods and in the relevant trade or industry. 37 C.F.R. §2.61(b).
The applicant may designate a domestic representative upon whom notices or process may be served. Trademark Act Section 1(e), 15 U.S.C. §1051(e); 37 C.F.R. §2.24; TMEP §§604, 811 and 1013. If the applicant does not designate a domestic representative, notices or process in proceedings affecting the mark may be served on the Director of the United States Patent and Trademark Office. Trademark Act Section 1(e), 15 U.S.C. §1051(e). The examining attorney provides the following example for the applicant's convenience in preparing an Appointment of Domestic Representative.
DESIGNATION OF DOMESTIC REPRESENTATIVE
________________________ _________________________
Identify the mark Serial No.
________________________ _________________________
Name of the applicant Date of signature
_____________________________________________________________
(Name of domestic representative)
whose postal address is
________________________________________________
________________________________________________
is hereby designated as the applicant's representative upon whom notices or process in proceedings affecting the mark may be served.
_________________________
(Signature of the applicant)
Please note that there is no required format or form for responding to this Office Action. However, the applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) the applicant's telephone number.
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).
When responding to this Office Action, the applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then the applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then the applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. The applicant must sign and date its response.
If the applicant has questions about its application or needs assistance in responding to this Office Action, please telephone the assigned examining attorney at the number below.
/LeighLowry/
Leigh A. Lowry
Examining Attorney
U.S. Patent and Trademark Office
Law Office 104
(571) 272-9725
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.