Offc Action Outgoing

Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.

Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).

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

Search Results

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).

Issues Applicant Must Address:

Identification of Goods
Email Address

Amended Identification of Goods Required

Some of the wording in the identification of goods is unacceptable as it is indefinite and does not adequately identify the goods. See TMEP §§1402.01, 1402.03.

In addition, the identification of goods contains parentheses. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.

Indefinite identifications are in bold. The following changes are suggested:

Class 5-Pharmaceutical agents affecting sensory organs; pharmaceutical preparations for treating cramps; pharmaceutical preparations for treating muscle; pharmaceutical preparations for treating cerebral palsy; pharmaceutical preparations for treating hyperhidrosis; pharmaceutical agents affecting metabolism;-acceptable

Poisons;-indefinite. Specify type of poison, e.g., Strychnine poisons; Rat poisons; Bacteria poisons

Pharmaceutical preparations for treating headache; anaesthetics;-acceptable

Pharmaceutical preparations for use in the cosmetic field;-indefinite. Specify the good, e.g., Pharmaceutical preparations for wounds; Pharmaceutical preparations for use in dermatology; Pharmaceutical preparations for treating skin disorders; Pharmaceutical preparation for skin care; Pharmaceutical preparations and substances for the treatment of damaged skin and tissue

Pharmaceuticals containing botulinum toxin; botulinum toxin;-indefinite. Specify goods, e.g., Botulinum toxin for medical use for use in the treatment of {indicate specific condition or illness, e.g., excessive sweating, excessive eye blinking, neuropathy pain, facial wrinkles}

Pharmaceutical preparations for urogenital organs; pharmaceutical preparations for plastic surgery; anti-inflammatory and antipyretic preparations; pharmaceutical agents affecting digestive organs;-acceptable

Veterinary substances and preparations;-indefinite. Specify goods, e.g., Veterinary preparations for {indicate type of animal and condition being treated}; Veterinary vaccines; Veterinary pharmaceutical preparations for the prevention of {specify disease to be prevented}

Cardiovascular agents for medical purposes; pharmaceutical preparations for treating neurological disorders;-acceptable

Pharmaceutical preparations for treating neurological diseases (including botulinum toxin, botulinum toxin-haemagglutin complex, botulinum toxin fragments and other derivatives);-Remove parenthesis. Amend to: pharmaceutical preparations in the nature of botulinum toxin, botulinum toxin-haemagglutin complex, botulinum toxin fragments and other derivatives used to treat neurological diseases

Ophthalmic preparations; allergy medications;-acceptable

Chemical preparations for pharmaceutical purposes;-indefinite. Amend to: Chemical preparations for pharmaceutical purposes, namely, for {specify disease or condition to be prevented or treated or the health goal to be achieved}

Pharmaceutical agents for epidermis;-acceptable

Drugs for medical purposes;-indefinite. Amend to: Pharmaceutical preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}

Pharmaceutical products for skin care for medical purposes (including botulinum toxin, botulinum toxin-haemagglutin complex, botulinum toxin fragments and other derivatives); -Remove parenthesis. Amend to: pharmaceutical preparations for skincare in the nature of botulinum toxin, botulinum toxin-haemagglutin complex, botulinum toxin fragments and other derivatives for medical purposes

Pharmaceutical products for skin care treatment for medical purposes (including botulinum toxin, botulinum toxin-haemagglutin complex, botulinum toxin fragments and other derivatives); Remove parenthesis. Amend to: pharmaceutical preparations for skin care treatment in the nature of botulinum toxin, botulinum toxin-haemagglutin complex, botulinum toxin fragments and other derivatives for medical purposes

Medicines for human purposes;-indefinite. Amend to: Medicinal preparations for {specify disease or condition to be prevented or treated, or the health goal to be achieved}

Pharmaceutical preparations for orthopedic purposes; pharmaceutical preparations for treating wrinkles; analgesic preparations; medicines for dental purposes; pharmaceutical preparations for treating pain; pharmaceutical preparation for skin care; medicated preparations for skin treatment; pharmaceutical preparations for respiratory organs; preparations for the treatment of burns; preparations for the treatment of scar-acceptable.

All suggested identifications are classified in Class 5.

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. See TMEP §1402.04.

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

Applicant’s Email Required

Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.

APPLICANT MUST BE REPRESENTED BY A U.S.-LICENSED ATTORNEY AT THE USPTO TO RESPOND TO OR APPEAL THE PROVISIONAL REFUSAL. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.

To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).

How to respond. Click to file a response to this nonfinal Office action.

/Angela M Micheli/

Trademark Examining Attorney, Law Office 101

571.272.9196

angela.micheli@uspto.gov

RESPONSE GUIDANCE

Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.

Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.

If needed, find contact information for the supervisor of the office or unit listed in the signature block.