UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
|
U.S. APPLICATION SERIAL NO. 79152899
MARK: SHARP
|
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
|
APPLICANT: UDG Healthcare Plc
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1218134
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.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
Summary of Issues that Applicant Must Address
Note: Applicant may expedite the resolution of these issues by calling or emailing the examining attorney below to issue an Examiner’s Amendment.
· Entity Type and Status
· Identification of Goods and Services
ENTITY UNCERTAIN
Acceptable entity types include an individual, a partnership, a corporation, a joint venture, or the foreign equivalent. See 37 C.F.R. §2.32(a)(3)(i)-(ii); TMEP §§803.03 et seq.
If applicant’s entity type is an individual, applicant must indicate his or her national citizenship for the record. See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04. If applicant’s entity type is a corporation, association, partnership, joint venture, or the foreign equivalent, applicant must set forth the foreign country under whose laws applicant is organized or incorporated. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(b)-(c), 803.04. For an association, applicant must also specify whether the association is incorporated or unincorporated, unless the foreign country and the designation or description “association/associazione” appear in Appendix D of the Trademark Manual of Examining Procedure (TMEP). TMEP §803.03(c).
If applicant is organized under the laws of a foreign province or geographical region, applicant should specify both the foreign province or geographical region and the foreign country in which the province or region is located. See TMEP §803.04. To provide this information online via the Trademark Electronic Application System (TEAS) response form, applicant must (1) locate the “Entity Type” heading and select “Other;” (2) locate the “Specify Entity Type” heading and select “Other” under the Foreign Entity option, and enter in the free-text field below both applicant’s entity type and the foreign province or geographical region of its organization (e.g., partnership of Victoria); and (3) locate the “State or Country Where Legally Organized” heading and select the appropriate foreign country (e.g., Australia) under the Non-U.S. Entity option. See id.
The identification of goods is:
Class 05: Pharmaceutical and veterinary substances and preparations; sanitary preparations for medical purposes; dietary supplements; vitamins and mineral supplements
Class 35: Retail and wholesale services connected with the sale of pharmaceutical and veterinary substances and preparations, sanitary preparations for medical purposes, dietary supplements, vitamins and minerals, medical and veterinary apparatus, instruments, equipment and devices; advertising; sales and marketing; promotion; market research services; business development and research services; contract sales outsourcing; pharmaceutical outsourcing; recruitment services for the pharmaceutical and medical sectors; cost comparison services; supply chain management services for the pharmaceutical and medical sectors; auditing services for the pharmaceutical and medical sectors; information, advice and consultancy related to all the aforesaid services
Class 39: Transport, packaging, labeling, distribution and storage of pharmaceutical and veterinary substances and preparations, sanitary preparations for medical purposes, dietary supplements, vitamins and minerals, medical and veterinary apparatus, instruments, equipment and devices; logistics services consisting of the storage, and movement of goods; bottling services; cold storage services for the pharmaceutical and medical sector; warehouse storage services; rental, leasing and hire of warehouse space; vehicle rental and leasing services; information, advice and consultancy related to all the aforesaid services
Class 40: Custom manufacture of pharmaceutical and veterinary substances and preparations; information, advice and consultancy related to the aforesaid services; printing of packaging and labels
Class 41: Education and training; event management for the pharmaceutical and medical sectors
Class 42: Scientific and technological services and research and design relating thereto; medical research and development; research and development of pharmaceutical preparations and medicines; laboratory research services; pharmaceutical product evaluation; conducting clinical trials; testing of pharmaceuticals; design of packaging for pharmaceutical, veterinary and medical products; analysis, namely, medical research; chemical, biochemical and pharmaceutical engineering services; information technology services, namely, provision of information technology solutions, design and development of computer software and hardware; installation and maintenance of computer systems, installation and maintenance of computer hardware and computer software solutions (terms considered too vague by the International Bureau - rule 13(2)(b) of the Common Regulations); information, advice and consultancy relating to the aforementioned services; design, creation, hosting and maintaining an interactive website, online portal and interactive web-based response system for others; computer and web programming services; medical compliance services, namely, providing regulatory and quality control services to other in the field of medicine and pharmaceuticals; information, advice and consultancy related to all the aforesaid services
Class 44: Medical services; veterinary services; analysis, namely, medical treatment; nursing services; information, advice and consultancy related to all the aforesaid services
The wording used to describe the goods is indefinite and must be clarified. See TMEP §1402.01.
The applicant may adopt the following language, if accurate:
Class 05: Pharmaceutical and veterinary substances and preparations for the treatment of<Specify>; sanitary preparations for medical purposes; dietary supplements; vitamins and mineral supplements
Class 35: Retail and wholesale store services
connected with the sale of featuring pharmaceutical and veterinary substances and preparations, sanitary preparations for medical purposes,
dietary supplements, vitamins and minerals, medical and veterinary apparatus, instruments, equipment and devices; advertising services; sales
and <Sales is not a service>marketing services; <Specify type of promotion, i.e. promotion of goods of
others, sales promotions, etc.> promotion; market research services; business development and business research services; contract sales
outsourcing, namely<specify>; pharmaceutical outsourcing namely<specify>; <specify who is being recruited, i.e. personnel,
medical personnel, etc.> recruitment services for the pharmaceutical and medical sectors; cost price comparison services; supply
chain management services for the pharmaceutical and medical sectors; business auditing services for the pharmaceutical and medical sectors; information, advice and consultancy related to all the aforesaid services<Applicant must specify what specifically the fields where these services are offered, as a reference to full
services above may not be properly classified in this class).
Class 39: Transport, packaging, labeling<Namely, specify
service further>, distribution and storage of pharmaceutical and veterinary substances and preparations, sanitary preparations for medical purposes, dietary supplements, vitamins and
minerals, medical and veterinary apparatus, instruments, equipment and devices; logistics services consisting of the storage, and movement <transportation?> of goods; bottling services; cold storage services for the pharmaceutical and medical sector; warehouse storage services; rental, leasing and hire of
warehouse space; vehicle rental and leasing services; information, advice and consultancy related to all the aforesaid services <Applicant must
specify what specifically the fields where these services are offered, as a reference to full services above may not be properly classified in this class).
Class 40: Custom manufacture of pharmaceutical and veterinary substances and preparations; information, advice and consultancy related to custom manufacture of pharmaceutical and veterinary substances and preparations; printing services, namely printing of packaging and labels
Class 41: Education and training namely<indefinite>; event management for the pharmaceutical and medical sectors namely<Specify these services further>
Class 42: Scientific and technological services and research and design relating
thereto namely<specify>; medical research and development; research and development of pharmaceutical preparations and medicines; laboratory research services
relating to pharmaceuticals; pharmaceutical product evaluation; conducting clinical trials for others; testing of pharmaceuticals; design of
packaging for pharmaceutical, veterinary and medical products; analysis, namely, medical research; chemical, biochemical and pharmaceutical engineering services; information technology services,
namely, provision of information technology solutions, design and development of computer software and hardware; installation and maintenance of computer systems, installation and
maintenance of computer hardware and computer software solutions <indefinite language. Solutions may be deleted, otherwise need to be fully explained as a
service>; information, advice and consultancy relating to <specify services>; design, creation, hosting and maintaining an interactive website, online
portal and interactive web-based response system for others; computer and web programming services; medical compliance services, namely, providing regulatory
<Indefinite, no qualifying service can be offered.> quality control services to others in the field of medicine and pharmaceuticals; information, advice
and consultancy related to <specify>.
Class 44: Medical services; veterinary services; analysis, namely, medical treatment of<specify>; nursing services; information, advice and consultancy related to Medical services, veterinary services, medical treatment of<specify>, and nursing services.
For assistance with identifying and classifying goods and 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.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
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.
If the applicant has any questions or needs assistance regarding this action, please telephone the assigned examining attorney
/Frank Lattuca/
Frank J Lattuca
Examining Attorney
Law Office 109
EMAIL: Frank.Lattuca@uspto.gov
PHONE: (571) 270-1518
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.