To: | NovImmune SA (trademarks@cooley.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87283834 - GAMIFANT - 322145-20000 |
Sent: | 3/27/2017 4:44:43 PM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87283834
MARK: GAMIFANT
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: NovImmune SA
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/27/2017
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
Requirement for Acceptable Identification/Classification of Goods
Some of the wording in the recitation of goods must be clarified because it is indefinite and/or overly broad. See TMEP §1402.01.
Where applicant’s goods are properly classified in other classes, applicant is required to either (1) specify the goods acceptably, add the appropriate international class(es) to the application, and classify the good therein, or (2) delete the goods from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.
International Class 1
Acceptable as identified.
International Class 5
The wording “Pharmaceutical and biological preparations” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 5: Pharmaceutical and biological preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}.
The wording “pharmaceutical and biological preparations based on polypeptides, superantigens, biomarkers and antibodies” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 5: Pharmaceutical and biological preparations based on polypeptides, superantigens, biomarkers and antibodies for {specify disease or condition to be prevented or treated or the health goal to be achieved}.
The wording “immunotherapies, pharmaceutical and biological preparations for use in the diagnosis, prevention, management and treatment of immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, “immunotherapies” is not clear and needs further explanation. Applicant may substitute the following wording, if accurate:
Class 5: Pharmaceutical and biological preparations for use in the diagnosis, prevention, management and treatment of immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions.
The wording “therapeutic and diagnostic agents, preparations and substances for use in therapies for immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 5: Therapeutic and diagnostic agents, preparations and substances for medical purposes being use in therapies for immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions.
The wording “biochemicals, polypeptides, antibodies, biomarkers and superantigens for use in diagnoses and therapies for immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 5: Biochemical {specify nature, e.g., preparations, reagents} polypeptides, antibodies, diagnostic biomarkers and superantigens for use in diagnoses and therapies for immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions;
The wording “engineered cell therapies for medical purposes” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
Class 5: Engineered cell therapies, namely, {specify the nature of the goods by common commercial name, e.g., “engineered T cells”, “cultured skin grafts”, etc.} for medical purposes.
General Suggestions for Identification/Classification of Goods
Class 1 |
Biochemicals, namely, polypeptides, superantigens, biomarkers and antibodies for medical and scientific research; cells, cell extracts and components of cells for medical and scientific research; diagnostic agents for medical and scientific research; diagnostic biomarker reagent for biomarker reagents for medical and scientific research; diagnostic test kits consisting primarily of biomarkers for medical and scientific research; biochemical test kits consisting of assays and reagents for medical and scientific research purposes |
Class 5 |
Pharmaceutical and biological preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}; Pharmaceutical and biological preparations based on polypeptides, superantigens, biomarkers and antibodies for {specify disease or condition to be prevented or treated or the health goal to be achieved}; Pharmaceutical and biological preparations for use in the diagnosis, prevention, management and treatment of immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions; Therapeutic and diagnostic agents, preparations and substances for medical purposes being use in therapies for immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions; Biochemical {specify nature, e.g., preparations, reagents} polypeptides, antibodies, diagnostic biomarkers and superantigens for use in diagnoses and therapies for immunological, inflammatory, oncological, viral, infectious, neurological, musculoskeletal, respiratory, and dermatological diseases, disorders and conditions; Engineered cell therapies, namely, {specify the nature of the goods by common commercial name, e.g., “engineered T cells”, “cultured skin grafts”, etc.} for medical purposes; diagnostic biomarker reagents for medical purposes; diagnostic test kits consisting primarily of biomarkers for medical purposes; biochemical test kits comprised of assays and reagents for medical, diagnostic and therapeutic purposes |
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Requirement for Copy of Foreign Registration
The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).
Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).
RESPONSE GUIDELINES
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 $125 per 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 or e-mail without incurring this additional fee.
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.
/Jeanie H. Lee/
Examining Attorney
Law Office 105
(571) 272-6110
jeanie.lee@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.