Response to Office Action

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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87245470 IMCORE(Standard Characters, see http://uspto.report/TM/87245470/mark.png) has been amended as follows:

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

SECTION 2(d) REFUSAL?LIKELIHOOD OF CONFUSION The Examiner has refused registration of Applicant?s IMCORE mark in connection with ?Research and development of advanced learning technologies and teaching methods to identify approaches to extend the benefit of cancer immunotherapy to patients and collaborate to identify new treatment approaches, to rapidly initiate clinical trials and to aggregate and share data to accelerate progress in the field of cancer immunotherapy? in Class 42 on the grounds that it is likely to be confused with Registration No. 5410175 for IMMUNOCORE in connection with ?Pharmaceutical preparations for the treatment of cancer, infectious diseases and autoimmune diseases; biological preparations for the treatment of cancer; biological preparations for medical use for the treatment of cancer, infectious diseases and autoimmune diseases; immunotherapeutic drugs; reagents for medical use; Biological preparations for the treatment of viral infections; biological preparations for the treatment of autoimmune diseases; diagnostic preparations for medical purposes; diagnostic reagents for medical use? in Class 5 and ?Pharmaceutical testing and clinical trials for others; provision of information and consultancy in relation to the aforesaid services; scientific and technological services, namely, research and design in the field of drug development for the treatment of cancer, infectious diseases and autoimmune diseases; pharmaceutical research and development services; research and development in the biotechnology field; provision of information and consultancy in relation to the aforesaid services? in Class 42. Applicant respectfully disagrees with the refusal and requests that the Section 2(d) refusal be withdrawn. First, Applicant believes there is no likelihood of confusion because the marks are sufficiently different in appearance, sound, connotation, and commercial impression for the following reasons, among others: (1) The IMMUNOCORE mark is comprised of ten letters while the IMCORE mark is half the length with only five letters. IMCORE is a significantly shorter mark that looks different from the cited registration from a visual perspective; (2) The IMMUNOCORE mark is four syllables when pronounced while the IMCORE mark is half the amount with only two syllables. This difference in number of syllables makes IMCORE sound markedly different from IMMUNOCORE when pronounced; (3) The IMMUNOCORE mark includes the prefix IMMUNO which is readily understood as representing immunity, immunology, and/or immunotherapy. The IMCORE mark only has the two letter prefix IM at its beginning which is not readily understood as representing immunotherapy. In fact, the ?im? prefix is often understood as ?not? or ?no,? for example, in the words impossible, impatient, and immature. The Examiner erroneously dissects the marks as both representing IM and CORE, ignoring four letters in the middle of the cited registration. Instead, the Examiner should compare the marks in their entireties, namely as comprised of IMMUNO and CORE and IM and CORE respectively. If compared correctly, the cited registration will represent IMMUNOTHERAPY and CORE to the consumer while the applied for mark will represent IM and CORE. As such, each of the marks present a different connotation and make a different commercial impression on the consumer. Second, Applicant believes consumers will not confuse IMCORE with IMMUNOCORE because IMMUNOCORE is comprised of two diluted terms that consumers are often exposed to and are made to distinguish between as part of various third party marks used in the pharmaceutical and medical research fields. Indeed, there are numerous third party registrations for IMMUNO-formative marks already coexisting on the trademark register. Examples include: IMMUNOVANT, Registration No. 5688494 for providing information relating to diagnostic, prophylactic and therapeutic properties of pharmaceuticals and biological preparations; IMMUNOSEQ, Registration No. 4706763 for providing medical and scientific research information in the fields of pharmaceuticals and genetics; IMMUNOCLIN, Registration No. 4655372 for pharmaceutical research and information services; and IMMUNOPOLIS, Registration No. 5399663 for medical and scientific research in the field of treatment of immunological diseases, cancer treatment, and treatment of infectious diseases and providing medical and scientific research information, consultancy, and advisory services in the field of pharmaceuticals and clinical trials. There are also numerous third party registrations for ?CORE marks already coexisting on the trademark register in the pharmaceutical field. Examples include: LIFECORE, Registration No. 5528166 for the design and development of pharmaceuticals; OPTICORE, Registration No. 4615554 for pharmaceutical preparations; HERNICORE, Registration No. 4595115 for pharmaceutical preparations; APICORE, Registration No. 3101714 for manufacture of ingredients for pharmaceuticals; and PHARMA CORE, Registration No. 2785534 for chemicals used in the manufacture of pharmaceuticals. In fact, there is even an active registration for IMMUNOSCORE at Registration No. 4513051 covering research and development of pharmaceutical products in the name of INSERM of France. If IMMUNOCORE and IMMUNOSCORE can coexist on the trademark register while differing only be one letter, presumably without confusion, then IMCORE surely can coexist as well. Given the proliferation of IMMUNO and CORE marks on the Trademark Register and in the marketplace, consumers have become accustomed to distinguishing between marks that share these common terms even if there are only minor differences between the marks. As such, consumers will not be confuse IMCORE with IMMUNOCORE or assume that the services offered under the respective marks emanate from the same source. Third, Applicant believes there is no likelihood of confusion between IMMUNOCORE and IMCORE because of the differences between the services offered under the marks. IMMUNOCORE is used as the company name for a biotechnology company that is developing its own immunotherapy treatments and molecules to treat diseases. IMCORE, on the other hand, is used in connection with a global network of leading scientific and clinical experts in cancer immunotherapy to collaborate in investigating new treatment approaches. IMCORE will not be used as a company name and will not be placed on a product. It is a ??Center Of Research Excellence? or a ?core? network of experts working in collaboration. Consumers will not confuse a private company operating under the name IMMUNOCORE with a global research network operating under the name IMCORE. For all of the reasons stated above, Applicant requests that the 2(d) refusal be withdrawn and the IMCORE application be published for opposition.

SIGNATURE(S)
Response Signature
Signature: /TimothySchwartz/     Date: 07/03/2019
Signatory's Name: Timothy Schwartz
Signatory's Position: Counsel at Genentech, Virgina Bar Member

Signatory's Phone Number: 650-866-2054

The signatory has confirmed that he/she is not represented by either an authorized attorney or Canadian attorney/agent, and that he/she is either: (1) the owner/holder ; or (2) a person(s) with legal authority to bind the owner/holder; and if an authorized U.S. attorney or Canadian attorney/agent previously represented him/her in this matter, either he/she has filed a signed revocation of power of attorney with the USPTO or the USPTO has granted the request of his/her prior representative to withdraw.

        
Serial Number: 87245470
Internet Transmission Date: Wed Jul 03 13:07:59 EDT 2019
TEAS Stamp: USPTO/ROA-XX.X.XX.XXX-201907031307590951
00-87245470-6204639e1cf34fe25985b569e92d
6e236da717ed8f11d026c283a4575ae8d2706c-N
/A-N/A-20190703124459394212