TEAS Request Reconsideration after FOA

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011)

OMB No. 0651-0050 (Exp 07/31/2017)

Request for Reconsideration after Final Action

To the Commissioner for Trademarks:

Application serial no. 86647537 RANA(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/86647537/large) has been amended as follows:

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

RESPONSE

Identification of Services

• Class 42: Conducting scientific and medical research in the field of genetics and pharmaceutical development for others, not for use in connection with rheumatoid arthritis

Descriptiveness

The Examining Attorney has maintained his refusal of registration of the applied-for mark under the Trademark Act Section 2(e)(1) on the grounds that the mark RANA is merely descriptive of Applicant’s services, contending that RANA is an abbreviation for “RA(Rheumatoid Arthritis)-Associated Nuclear Antigen” and that the mark is therefore descriptive.  The refusal to register is respectfully traversed.

Applicant submits that its modified identification of services underscores that RANA is a term coined by Applicant which was intended to be a play on RNA.  Applicant intends to use its mark in connection with research that focuses on activating genes by targeting RNA. Applicant’s research and development efforts have broad therapeutic potential; though these therapeutic targets include various forms of inflammatory disease, RANA was neither coined nor selected to have any connotation related to Rheumatoid Arthritis.

Conclusion

If it is convenient for the Examining Attorney and if it is believed a telephone conference will further the prosecution of this application, Applicant’s undersigned counsel encourages a telephone call from the Examining Attorney.  In view of the foregoing, Applicant believes the application is in condition for publication.  Such action is solicited.

                                                                       

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Conducting scientific and medical research in the field of genetics and pharmaceutical development for others
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 042, the mark was first used at least as early as 01/00/2012 and first used in commerce at least as early as 01/00/2012 .

Proposed:
Tracked Text Description: Conducting scientific and medical research in the field of genetics and pharmaceutical development for others; Conducting scientific and medical research in the field of genetics and pharmaceutical development for others, not for use in connection with rheumatoid arthritisClass 042 for Conducting scientific and medical research in the field of genetics and pharmaceutical development for others, not for use in connection with rheumatoid arthritis
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 042, the mark was first used at least as early as 01/00/2012 . and first used in commerce at least as early as 01/00/2012 .

SIGNATURE(S)
Request for Reconsideration Signature
Signature: /cml/     Date: 10/18/2016
Signatory's Name: Christina M. Licursi
Signatory's Position: Attorney for Applicant

Signatory's Phone Number: (617) 646-8384

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.

        
Serial Number: 86647537
Internet Transmission Date: Tue Oct 18 12:39:03 EDT 2016
TEAS Stamp: USPTO/RFR-XX.XXX.XX.X-201610181239032064
25-86647537-570cb7ec34bd752578e5d86411f2
34758882efdf9f90f6a381d088f4424adff639-N
/A-N/A-20161018123218485345