To: | RaNA Therapeutics, Inc. (cxltrademarks@wolfgreenfield.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86647537 - RANA - R0693.20000U |
Sent: | 4/22/2016 3:34:03 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 Attachment - 48 Attachment - 49 Attachment - 50 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86647537
MARK: RANA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: RaNA Therapeutics, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 4/22/2016
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on March 11, 2016.
In a previous Office action, dated September 11, 2015, the trademark examining attorney refused registration of the applied-for mark, pursuant to Trademark Act Section 2(e)(1), because it merely describes a feature of applicant’s services. Additionally, registration was refused because the activities recited in the identification of services, when viewed in conjunction with the specimen, are not registrable services as contemplated by Trademark Act Sections 1, 2, 3, and 45. In addition, applicant was required to satisfy the following requirements: amend the identification of services, and provide a declaration supporting the application.
Applicant submitted a response which argued against both statutory refusals and complied with both requirements. As to the failure to function issue, the response stated: “In the event the Examining Attorney disagrees, Applicant requests that the mark be amended to reflect an intent-to-use basis.”
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: provide a definite identification of services and provide a declaration. Moreover, pursuant to applicant’s authorization, the filing basis has been amended to intent-to-use.
In view of the amended filing basis, the failure to function statutory refusal has been obviated. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a feature of applicant’s services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
Applicant seeks registration of the mark “RANA” for “Conducting scientific and medical research in the field of genetics and pharmaceutical development for others”. The term “RANA” is an abbreviation for “Rheumatoid Arthritis Nuclear Antigen”. See entry from acronymfinder.com attached to initial Office action. See also attached entry from allacronyms.com, and abbreviation of “RANA” in attached article “Systematic review and meta-analysis of the sero-epidemiological association between Epstein-Barr virus and rheumatoid arthritis”.
Such antigens appear to be used as tracers or tags for rheumatoid arthritis. See article “A Search for Rheumatoid Arthritis-associated Nuclear Antigen and Esptein-Barr Virus Specific Antigens or Genomes in Tissues and Cells from Patients with Rheumatoid Arthritis”, attached to the initial Office action; see also articles from National Institutes of Health, attached to the initial Office action. For example, one article states: “Antibodies to rheumatoid arthritis nuclear antigen (RANA) are four- to sixfold increased in sera from patients with rheumatoid arthritis (RA), whereas levels of antibodies to other EBV encoded antigens are slightly elevated or normal.” See attached article, “Antibodies in rheumatoid arthritis react specifically with the glycine alanine repeat sequence of Epstein-Barr nuclear antigen-1”.
Another article noted that “[p]atients with seropositive rheumatoid arthritis (RA) have elevated titers of precipitating antibody toward an antigen designated RA nuclear antigen (RANA). Anti-RANA reactivity has been associated with prior Epstein-Barr virus (EBV) infection.” See attached article “Antibodies to the Epstein-Barr virus nuclear antigen and to rheumatoid arthritis nuclear antigen identify the same polypeptide”.
Medical research has focused on the Rheumatoid Arthritis Nuclear Antigen, or RANA. See articles cited above. For example, an article entitled “Antibody to the Rheumatoid Arthritis Nuclear Antigen: Its Relationship to In Vivo Epstein-Barr Virus Infection” states:
Most patients with seropositive rheumatoid arthritis, and a variable but lesser percentage of normal subjects, have precipitating antibodies to a nuclear antigen, rheumatoid arthritis nuclear antigen, present in Epstein-Barr virus-infected human B lymphoblastoid cells. We have used a sensitive indirect immunofluorescence assay for antibody to rheumatoid arthritis nuclear antigen in a study of patients with infectious mononucleosis and healthy control subjects.
See attached article (emphasis supplied).
Another article states:
Control of EBV infection has been suggested to be impaired in RA patients [6] with studies using real-time polymerase chain reaction (rt-PCR) techniques demonstrating EBV DNA loads in peripheral
blood mononuclear cells greater than ten times those of normal controls [7]. EBV has been hypothesised to cause RA through several mechanisms. Most notable is molecular mimicry, which was first
suggested following the identification of serum from RA patients exhibiting reactivity against a nuclear antigen in EBV-infected lymphocytes, called the RA nuclear antigen
(RANA)
See attached article “Systematic review and meta-analysis of the sero-epidemiological association between Epstein-Barr virus and rheumatoid arthritis”. (Emphasis supplied).
Rheumatoid arthritis is defined as a “chronic autoimmune disease marked by stiffness and inflammation of the joints, fatigue, and weakness, and often, in later stages, severe joint damage and disability”. See attached definition.
Pharmaceuticals are used to combat rheumatoid arthritis. According to the Arthritis Foundation, “[t]here are different drugs used in the treatment of rheumatoid arthritis. Some are used primarily to ease the symptoms of RA; others are used to slow or stop the course of the disease and to inhibit structural damage.” See attached excerpt from the arthritis.org website.
Accordingly, Applicant’s “RANA” mark merely describes a feature of applicant’s medical research services in the field of pharmaceutical development, namely, the potential use, or study, of RANA in the development of pharmaceuticals to combat rheumatoid arthritis. Indeed, according to applicant’s website, one of applicant’s areas of focus is “immunology/inflammation”.
SUPPLEMENTAL REGISTER NOT PRESENTLY AVAILABLE
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(c) for the amendment to allege use. 37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03. In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
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 e-mail technical questions to TEAS@uspto.gov.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
/Matthew J. Cuccias/
/MJC/
Matthew J. Cuccias
Trademark Examining Attorney
Law Office 116
(571) 272-4648
Matthew.Cuccias@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.