UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 12/13/2013

 

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).

 

SUMMARY OF ISSUES

 

Summary of issues that applicant must address:

 

• Evidence Requirement;
• Identification of Goods Requirement;
• Mark Description Requirement.

 

EVIDENCE REQUIRED FOR FULL LINE

 

Applicant’s request for registration of the applied-for mark on a full line of pharmaceuticals is not acceptable because it does not include evidence that applicant uses the mark in connection with pharmaceuticals to treat diseases or health problems in all chapters in the World Health Organization (WHO) International Statistical Classification of Diseases and Related Health Problems (ICD), a medical classification system that provides codes to classify diseases and health conditions.  See TMEP §§904.01(a), 1402.03(c).  Given the breadth of a “full line of pharmaceuticals,” evidence of use of the mark on a full line is necessary for examination of this application.  Therefore, applicant must provide this evidence.  See 37 C.F.R. §2.61(b); TMEP §§904.01(a), 1402.03(c). 

 

To comply with this requirement, applicant must submit product catalogs or similar evidence to show that applicant uses the applied-for mark in connection with pharmaceuticals to treat diseases or health problems in all chapters in the WHO ICD.  See 37 C.F.R. §2.61(b); TMEP §§904.01(a), 1402.03(c); see also In re Astra Merck Inc., 50 USPQ2d 1216, 1218-19 (TTAB 1999) (affirming a requirement for proof of broad use on a full line of pharmaceuticals to secure a registration for a full line).  A list of these ICD chapters can be located in the WHO ICD at http://apps.who.int/classifications/apps/icd/icd10online/. 

 

If applicant is unable to provide this evidence, applicant may amend “full line of pharmaceuticals” to identify a full line of a subset of a genre of pharmaceuticals (e.g., “a full line of anti-viral cardiovascular pharmaceuticals”) on which applicant can provide evidence of use of the applied-for mark.  See TMEP §1402.03(c); see also In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007) (“The PTO has discretion to determine whether and how a trademark registration should include a more particularized statement of the goods for which the mark is [to] be used”).

 

Otherwise, applicant must amend the identification to delete the wording “full line of” and specify the common commercial or generic name of each pharmaceutical product.  See TMEP §§1402.01, 1402.03(c).

 

 

IDENTIFICATION OF GOODS

 

Applicant has identified its goods as:  “house mark for a full line of pharmaceutical preparations; pharmaceutical preparations used for the relief of pain and to reduce fever; pharmaceutical preparations and substances for the prevention and/or treatment of cardiovascular diseases, hemophilia, metabolic diseases, cancer, multiple sclerosis, urologic diseases, sexual dysfunction, osteoporosis, and climacteric diseases; pharmaceutical preparations, namely, anticoagulants and platelet aggregation inhibitors; contraceptives, analgesics, anti-pyretics, anti-inflammatory preparations, anti-septic preparations, medicated lip balm, anesthetic spray, astringents, pediculicides, decongestants, antifungal agents, antiinfective pharmaceutical preparations, antacids, cold preparations, menstrual symptom treatment preparations and dermatologicals; vitamin and mineral supplements; calcium supplements; medical diagnostic reagents for the analysis of body fluids; test strips with technology for enhancing the accuracy of the analysis of body fluids; mediator embedded in medical diagnostic reagents for the analysis of body fluids that enhances the accuracy of the analysis; preparations used in medical diagnostic procedures, namely, contrast media for use with x-ray, magnetic resonance and ultrasound equipment.”

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

The wording “test strips with technology for enhancing the accuracy of the analysis of body fluids” in the identification of goods is indefinite and must be clarified because it is unclear what is meant by “with technology” and the purpose of the goods.  See TMEP §1402.01.  The wording “mediator embedded in medical diagnostic reagents for the analysis of body fluids that enhances the accuracy of the analysis” is indefinite and must be amended to clarify what is meant by “mediator.”  Applicant must specify the form of the “contraceptives”, e.g. foams, preparations, sponges and the “cold preparations”, e.g. preparations for treating colds.  Finally, applicant must specify the use of the “anesthetic spray.”

 

If accurate, applicant may adopt the following identification of goods as acceptable language (added language in bold):

 

“house mark for a full line of pharmaceutical preparations; pharmaceutical preparations used for the relief of pain and to reduce fever; pharmaceutical preparations and substances for the prevention and/or treatment of cardiovascular diseases, hemophilia, metabolic diseases, cancer, multiple sclerosis, urologic diseases, sexual dysfunction, osteoporosis, and climacteric diseases; pharmaceutical preparations, namely, anticoagulants and platelet aggregation inhibitors; contraceptive preparations, analgesics, anti-pyretics, anti-inflammatory preparations, anti-septic preparations, medicated lip balm, anesthetic spray for {specify use, e.g. topical, surgical, non-surgical}, astringents, pediculicides, decongestants, antifungal agents, antiinfective pharmaceutical preparations, antacids, cold preparations in the nature of preparations for treating colds, menstrual symptom treatment preparations and dermatologicals; vitamin and mineral supplements; calcium supplements; medical diagnostic reagents for the analysis of body fluids; medical diagnostic test strips, containing technology for enhancing the accuracy of the analysis of body fluids, for use for analyzing body fluids; mediator in the nature of {specify common commercial name} embedded in medical diagnostic reagents for the analysis of body fluids that enhances the accuracy of the analysis; preparations used in medical diagnostic procedures, namely, contrast media for use with x-ray, magnetic resonance and ultrasound equipment,” in International Class 5.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

For assistance with identifying and classifying goods 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.

 

MARK DESCRIPTION

 

The description of the mark uses broad, vague language that does not accurately describe the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description that identifies all literal elements as well as any design elements in the mark.  See 37 C.F.R. §2.37; TMEP §808.02. 

 

Therefore, applicant must provide a more detailed description of the applied-for mark.  The following is suggested:

 

The mark consists of a circle containing the word BAYER appearing twice with each word intersecting with each other at the letter Y as if in a cross.

 

RESPONSE GUIDELINES

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

 

 

 

/Tashia A. Bunch/

Tashia A. Bunch

Examining Attorney

Law Office 105

571-272-3941

tashia.bunch@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/13/2013 FOR U.S. APPLICATION SERIAL NO. 86046217

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 12/13/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.