To: | RaNA Therapeutics, Inc. (cxltrademarks@wolfgreenfield.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86647537 - RANA - R0693.20000U |
Sent: | 10/22/2016 12:20:44 PM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: |
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: 10/22/2016
This Office action is in response to applicant’s communication filed on October 18, 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, dated March 11, 2016, 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.” Undersigned accepted this written authorization to change the filing basis without requiring the submission of a declaration attesting to applicant’s bona fide intent to use the mark, as of the application filing date.
In reviewing the file, undersigned believes this was in error. See TMEP §806.03(c) (“Although there is a presumption of a continuing valid basis, when amending from §1(a) to §1(b) in a trademark or service mark application, the applicant must confirm the presumption by submitting a verified statement that the applicant has a bona fide intention to use the mark in commerce, and that the applicant had a bona fide intention to use the mark in commerce as of the application filing date.”). Accordingly, applicant must respond to the below issues. Any inconvenience caused by this requirements is regretted.
Based on applicant’s October 18, 2016 response, the application is otherwise in a condition for publication.
DECLARATION REQUIRED TO SUPPORT AMENDED FILING BASIS
As set forth in the September 11, 2015 Office action, the means for amending the application filing basis to Section 1(b) is as follows:
To amend to Section 1(b) online using TEAS, applicant should (1) answer “yes” to the TEAS response form wizard question to “change filing basis,” and then do the following for each relevant class for which the filing basis is being amended: (2) uncheck the box for “Filing Basis Section 1(a),” (3) delete the use dates, and (4) check the box for “Filing Basis Section 1(b).”
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.
/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.