NOTE TO THE FILE
SERIAL NUMBER: 79221044
DATE: 06/20/2019
NAME: lpapale
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:From: Paul.Kilmer@hklaw.com [mailto:Paul.Kilmer@hklaw.com]
Sent: Thursday, June 20, 2019 4:36 PM
To: Papale, Lisa <Lisa.Papale@USPTO.GOV>
Cc: Laurie.Milton@hklaw.com; PTDocketing@hklaw.com
Subject: RE: U.S. Trademark Application Serial No. 79221044 - TRANSCON - Ascendis Pharma A/S - Suspension and Amendment Inquiry
Thank you Lisa. Training new Examiners in very important work and I am glad you have made time for it.
I look forward to receiving your Examiner’s Amendment in due course. Best regards,
Paul
Paul Kilmer | Holland & Knight
800 17th Street N.W., Suite 1100Washington, District of Columbia 20006
Phone 202.663.7269
From: Papale, Lisa <Lisa.Papale@USPTO.GOV>
Sent: Thursday, June 20, 2019 3:10 PM
To: Kilmer, Paul (WAS - X77269) <Paul.Kilmer@hklaw.com>
Cc: Milton, Laurie C (WAS - X72408) <Laurie.Milton@hklaw.com>; PT Docketing <PTDocketing@hklaw.com>
Subject: RE: U.S. Trademark Application Serial No. 79221044 - TRANSCON - Ascendis Pharma A/S - Suspension and Amendment Inquiry
[External email]
Mr. Kilmer,
Thank you for following up with this – I apologize for the delay in getting back to you. I’m currently on a detail training new examiners which leaves very little time to work on my own applications (and things tend to get lost in my inbox.)
I agree that the amendment to the identification would obviate the conflict with the prior-filed application; I will get the examiner’s amendment processed shortly.
Again, thank you for your continued patience, and I sincerely apologize for the delay.
Best,
Lisa
From: Paul.Kilmer@hklaw.com [mailto:Paul.Kilmer@hklaw.com]
Sent: Thursday, May 30, 2019 3:12 PM
To: Papale, Lisa <Lisa.Papale@USPTO.GOV>
Cc: Laurie.Milton@hklaw.com; PTDocketing@hklaw.com
Subject: U.S. Trademark Application Serial No. 79221044 - TRANSCON - Ascendis Pharma A/S - Suspension and Amendment Inquiry
May 30, 2019 – Please let me know whether you have questions regarding the following communication and proposed amendments to the subject application for TRANSCON. Thanks, Paul
==============================
April 25, 2019
RE: U.S. Trademark Application Serial No. 79221044 - TRANSCON - Ascendis Pharma A/S - Suspension and Amendment Inquiry
Dear Examining Attorney Papale,
In relation to your suspension notice of July 11, 2018, regarding the referenced application, we note that the potentially blocking prior filing (Serial No. 86248530 for TC TRANSCONTINENTAL PACKAGING & Design) has now registered (Reg. No. 5672048). It may therefore be appropriate to lift the suspension in relation to our client’s application for TRANSCON.
In reviewing this matter, our client has advised that it will not be providing “ packaging design” in Class 42 and would therefore like to delete those services from its application. The remaining goods and services in our client’s application would therefore consist of:
Class 5: Pharmaceutical and veterinary preparations, namely, a drug delivery system in the form of polymer based prodrug formulations which allow for the controlled or continuous release of a wide variety of therapeutic agents for the treatment of mental illness and physical illness in the nature of disorder of the endocrine system, growth hormone deficiency, hypoparathyroidism, achondroplasia, diabetes, fibroblast growth factor receptor (FGFR)-related skeletal disorders, oncology, ophthalmology, infectious disease, enzyme replacement therapy, anti-inflammatory disease, pain, respiratory system disorder, autoimmune disorders, vaccines, non-alcoholic steatohepatitis, brain diseases, bone diseases, CNS diseases, myopathies, obesity, wound healing; sanitary preparations for medical purposes; dietetic substances adapted for medical use; disinfectants; fungicides; herbicides
Class 42: Scientific research within the medical, pharmaceutical and bacteriological area and consultancy and information relating thereto; conducting of tests regarding medical applications in the nature of providing medical testing services in the field of sustained release of pharmaceutical and veterinary drugs;
packaging design;designing and development of medical equipment; designing pharmaceutical and medical preparations in the nature of pharmaceutical drug development services; development of pharmaceutical formulations; design and development of pharmaceutical granulation technology and pharmaceutical tablet technology and consultancy and information relating theretoClass 45: Licensing of industrial property rights; legal services
Based on the differences in the marks TRANSCON (our client) and TC TRANSCONTINENTAL PACKAGING & Design (the prior registrant), when viewed in combination with the differences in the goods and services of the parties (as reflected in the foregoing amendment by our client), it does not appear that confusion is likely to arise, especially since consumers for the remaining goods/services of the parties would no longer overlap.
Under the circumstances, we wonder whether it might be appropriate for you:
a. to lift the suspension of prosecution of our client’s application;
b. enter the foregoing amendment to our client’s Class 42 services to remove “packaging design” therefrom;
c. waive the potential 2(d) citation to what is now Reg. No. 5672048; and
d. approve our client’s application, as amended, for publication?
If these steps are possible, then we would consent to entry of the proposed amendment by means of Examiner’s Amendment.
Thank you for your consideration of this message. Let me know if there are questions. Best regards,
Paul
/Paul Kilmer/
Attorney for Applicant/D.C. Bar Member
Paul Kilmer | Holland & Knight
Partner – Trademark and Copyright Matters
Holland & Knight LLP
800 17th Street N.W., Suite 1100 | Washington, District of Columbia 20006
Phone 202.663.7269 | Fax 202.419.2850
paul.kilmer@hklaw.com | www.hklaw.com