UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79132936
MARK: FIELD
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CORRESPONDENT ADDRESS: LEO Pharma A/S Trademarks Designs and Domain Names, DK-2750 Ballerup |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: LEO Pharma A/S
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1160838
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
Country of Stock Corporation Organized
Identification of Goods and Services
Therefore, applicant must remove the parentheses from the identification of services and incorporate the parenthetical information into the description if appropriate.
The examining attorney may require an amendment of the identification language to accurately describe the goods. In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979). For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Specific wording in the identification noted below is indefinite and must be clarified as indicated. Applicant must amend the identification to specify the common commercial name of the goods and services. See TMEP §1402.01.
“Artificial fingernails for medical use” in International Class 3; [ACCCEPTABLE]
“Pharmaceutical preparations for the treatment of cancer and dermatological, hematological, renal and endocrine disorders; powders, talcum powders, creams, lotions, gels, foundation and lip balm for the treatment of dermatological disorders, cancer and skin infections; glues for medical use, namely, [identify specific purpose, e.g. for surgery]; medical and wound dressings; dressings for the treatment of dermatological disorders, cancer and skin infections” in International Class 5;
“Providing educational and training services (gymnastic instruction) [parenthetical is unacceptable], including, [term “including” is indefinite—may substitute with “namely,”] conducting classes, seminars and workshops in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders; educational services, [namely,] [identify services more specifically as illustrated by the online ID Manual referenced above] in the field [fields] of treatment of cancer and dermatological, hematological, renal and endocrine disorders; education services, including, [term “including” is indefinite—may substitute with “namely,”] providing on-line classes, seminars, and workshops in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders; arranging and conducting of lectures in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders; organizing events [wording “organizing events” is indefinite and may identify services in another class] for educational purposes [wording “for educational purposes” is indefinite] in the field [fields] of pharmaceutical and medical products; providing on-line electronic publications (not downloadable) [parenthetical is unpermitted], including, [term “including” is indefinite—may substitute with “namely,”] books, booklets, brochures, papers, periodical publications [term “publications” is indefinite], magazines, newspapers and newsletters, leaflets, and instructional and teaching materials in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders; publication [term “publication” is incomplete—may adopt: “on-line publication”] of electronic books, booklets, brochures, papers, periodical publications, magazines, newspapers and newsletters, leaflets, and instructional and teaching materials in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders; providing online educational and informational [specify, computer] games in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders and the treatment thereof” in International Class 41;
“Development of pharmaceutical preparations and medicines; pharmaceutical research services; medical research services in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders; conducting clinical trials [specify, “for others”] for pharmaceutical products in the field [fields] of cancer and dermatological, hematological, renal and endocrine disorders; providing [specify type of information, e.g. medical and scientific research information] information about the results of clinical trials for pharmaceutical products; providing online[,] [specify, non-downloadable] software applications containing information on the use of pharmaceutical products and for calculating use [wording “for calculating use” is ambiguous—clarify what is actually calculated] of medicine” in International Class 42.
In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Christopher Buongiorno/
Christopher Buongiorno, Attorney
Law Office 102
(571) 272-9251
christopher.buongiorno@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.