Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

---

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/30/2011)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85201601 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

REMARKS

 

Entity Information

 

The Office Action inquired as to the nature of the Applicant’s legal entity.  Applicant has now amended the record to specify that it is a corporation organized and existing under the laws of Japan.

 

Advisory – Potential Section 2(d) Refusal – Prior-pending Application

 

The Office Action identified prior-pending application Serial No. 85/017065 as a potential bar to registration on the ground of likelihood of confusion.  The prior-pending application is owned by Millennium Pharmaceuticals, Inc., and that company is a wholly owned subsidiary of Applicant.  There is unity of control and source as to all of the goods.  See TMEP §1201.07(b)(i).  Applicant therefore requests that this refusal of registration be withdrawn. 

 

Basis

 

Applicant is the owner of a registration for this mark in Japan, and Applicant now attaches a copy of its home country registration along with a signed English translation.  Please amend the record to reflect that registration is now sought under Section 44(e).  Provided that the attached Japanese registration is accepted as a valid basis for registration under Section 44, please amend the application by dropping the Section 1(b) basis.  Applicant retains its priority claim under Section 44(d).

 

CONCLUSION

With the above, Applicant requests that this application be passed for publication.

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for pharmaceutical preparations for treatment and prevention of oncological diseases and disorders
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant has made of record the following information concerning a foreign application: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2010-52124 filed 07/01/2010].
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number __________ registered __________ with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.

Proposed: Class 005 for pharmaceutical preparations for treatment and prevention of oncological diseases and disorders
Deleted Filing Basis: 1(b)
Filing Basis: Section 44(d), Priority based on foreign filing: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and/or services, and asserts a claim of priority based on [Japan application number 2010-52124 filed 07/01/2010]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

Filing Basis: Section 44(e), Based on Foreign Registration: Applicant has a bona fide intention to use the mark in commerce on or in connection with the identified goods and /or services, and submits a copy of [ Japan registration number 5372093 registered 11/26/2010 with a renewal date of __________ and an expiration date of __________ ], and translation thereof, if appropriate. 15 U.S.C. Section 1126(e), as amended.
Original PDF file:
FRU0-631381729-150747200_._INZELM_-_Home_Country_Registration___Translation__F0882054_.PDF
Converted PDF file(s) (2 pages)
Foreign Registration-1
Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

APPLICANT AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Takeda Pharmaceutical Company Limited a(n) limited company (ltd.), having an address of
      1-1, Doshomachi 4-chome
      Chuo-ku, Osaka,
      Japan

Proposed: Takeda Pharmaceutical Company Limited, a corporation of Japan, having an address of
      1-1, Doshomachi 4-chome
      Chuo-ku, Osaka,
      Japan

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /Nancy DiConza/     Date: 09/21/2011
Signatory's Name: Nancy DiConza
Signatory's Position: Attorney, New York State Bar Member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85201601
Internet Transmission Date: Wed Sep 21 15:15:02 EDT 2011
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20110921151502754
383-85201601-4808f8ecea9635b2f540bd5bb07
4747eb0-N/A-N/A-20110921150747200952