NOTE TO THE FILE
SERIAL NUMBER: 87567463
DATE: 11/22/2017
NAME: thussain
NOTE:
From: Hussain, Tasneem
Sent: Tuesday, November 21, 2017 12:17 PM
To: 'Jennings, Patrick J.' <patrick.jennings@pillsburylaw.com>; DCTM <DCTM@Pillsburylaw.com>
Subject: RE: SERIAL NUMBER 87567463 MATRIDERM - one issue
Pat,
First, “or” is unacceptable – applicant must definitively state what it is offering. See below. Second, “pharmaceutical and veterinary preparations … in the form of dressings” does not make sense as dressings are not preparations and the type of dressing is not stated. The following is suggested:
“Pharmaceutical and veterinary preparations for the treatment of skin defects; Pharmaceutical and veterinary products for the treatment of skin defects, in the form of medical dressings and skin implants comprising natural biomaterials featuring primarily reconstructed collagen, and in the form of skin implants comprising natural biomaterials; Health care preparations for medical purposes, namely, sanitary sterilizing preparations for medical purposes; Dietetic foods and drinks adapted for medical use, food for babies; Medical plasters; Materials for dressings, namely, gauze, cotton balls, bandages; Material for stopping teeth and dental wax; All-purpose disinfectants; Preparations for destroying vermin; Fungicides; Herbicides” in Class 005
I look forward to hearing back from you today.
Sincerely,
/Ms. Tasneem Hussain/
The term “ “or” in is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods; (2) the nature of the goods is unclear; or (3) classification cannot be determined from such wording. See TMEP §1402.03(a). In this case, it is unclear whether applicant is using the mark on one item but not the other or both. An application must specify, in an explicit manner, the particular goods on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “or” with “and” in the identification of goods, if appropriate, or rewrite the identification with the “or” deleted and the goods specified using definite and unambiguous language.
From: Jennings, Patrick J. [mailto:patrick.jennings@pillsburylaw.com]
Sent: Tuesday, November 21, 2017 12:11 PM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>; DCTM <DCTM@Pillsburylaw.com>
Subject: RE: SERIAL NUMBER 87567463 MATRIDERM - one issue
Tasneem,
My client has proposed the following amendments:
Pharmaceutical and veterinary preparations for the treatment of skin defects; Pharmaceutical and veterinary preparations for the treatment of skin defects, in the form of dressings or skin implants comprising natural biomaterials featuring primarily reconstructed collagen, and in the form of skin implants comprising natural biomaterials; Health care preparations for medical purposes, namely, sanitary sterilizing preparations for medical purposes; Dietetic foods and drinks adapted for medical use, food for babies; Medical plasters; Materials for dressings, namely, gauze, cotton balls, bandages; Material for stopping teeth and dental wax; All-purpose disinfectants; Preparations for destroying vermin; Fungicides; Herbicides.
Would you be willing to accept this amendment?
I look forward to hearing back from you.
Pat
From: Hussain, Tasneem [mailto:Tasneem.Hussain@USPTO.GOV]
Sent: Monday, November 20, 2017 12:40 PM
To: Jennings, Patrick J. <patrick.jennings@pillsburylaw.com>; DCTM <DCTM@Pillsburylaw.com>
Subject: RE: SERIAL NUMBER 87567463 MATRIDERM - one issue
Good morning,
I can wait until the close of business on Tuesday but then will need to issue a Priority Action – you can email me after that to resolve the ID issue as well. I look forward to hearing back from you before then.
Sincerely,
/Ms. Tasneem Hussain/
From: Jennings, Patrick J. [mailto:patrick.jennings@pillsburylaw.com]
Sent: Monday, November 20, 2017 12:37 PM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>; DCTM <DCTM@Pillsburylaw.com>
Subject: RE: SERIAL NUMBER 87567463 MATRIDERM - one issue
Okay.
My client is still trying to figure out what it wants to do here. Would you be able to hold off on issuing an Office Action for another couple of days?
Pat
From: Hussain, Tasneem [mailto:Tasneem.Hussain@USPTO.GOV]
Sent: Friday, November 17, 2017 10:14 AM
To: Jennings, Patrick J. <patrick.jennings@pillsburylaw.com>; DCTM <DCTM@Pillsburylaw.com>
Subject: RE: SERIAL NUMBER 87567463 MATRIDERM - one issue
Good morning, Patrick
Thank you for your email. Implants consisting of artificial or synthetic materials are in Class 10. Because “biomaterials” can also be “artificial,” to ensure that the goods are properly classified, I would recommend “skin implants comprising natural biomaterials featuring primarily reconstructed collagen…” and “skin implants comprising natural biomaterials”. Please let me know if that is acceptable.
Sincerely,
/Ms. Tasneem Hussain/
From: Jennings, Patrick J. [mailto:patrick.jennings@pillsburylaw.com]
Sent: Friday, November 17, 2017 10:09 AM
To: Hussain, Tasneem <Tasneem.Hussain@USPTO.GOV>; DCTM <DCTM@Pillsburylaw.com>
Subject: RE: SERIAL NUMBER 87567463 MATRIDERM - one issue
Hi, Tasneem.
My client would prefer the following amendment, with its changes to your proposal highlighted in yellow:
Pharmaceutical and veterinary preparations for the treatment of skin defects; pharmaceutical and veterinary products for the treatment of skin defects in the form of dressings, in the form of skin implants comprising biomaterials primarily reconstructed collagen, and in the form of skin implants comprising biomaterials; health care preparations for medical purposes, namely, sanitary sterilizing preparations for medical purposes; dietetic foods and drinks adapted for medical use, food for babies; medical plasters; materials for dressings, namely, gauze, cotton balls, bandages; material for stopping teeth and dental wax; all-purpose disinfectants; preparations for destroying vermin; fungicides, herbicides
Would you accept this amendment?
I look forward to hearing back from you on this.
Pat
Patrick J. Jennings | Partner
Pillsbury Winthrop Shaw Pittman LLP
1200 Seventeenth Street NW | Washington, DC 20036-3006
t 202.663.8918 | f 703.905.2500
From: Hussain, Tasneem [mailto:Tasneem.Hussain@USPTO.GOV]
Sent: Thursday, November 16, 2017 7:28 AM
To: DCTM <DCTM@Pillsburylaw.com>
Cc: Jennings, Patrick J. <patrick.jennings@pillsburylaw.com>
Subject: SERIAL NUMBER 87567463 MATRIDERM - one issue
Good morning, Mr. Jennings,
I am the examining attorney assigned to the application cited above. The following must be resolved before the application can proceed to registration.
Identification of Goods
The wording in the identification of goods is indefinite and must be clarified because “products” is indefinite and some of the wording could encompass goods in other classes. See TMEP §§1402.01, 1402.03. For example, “products destroying vermin” encompasses “mousetraps” which are in Class 021 while “Implants consisting of artificial materials” are in Class 010. Further, “sanitary preparations” are not listed in the foreign registration and thus must be accompanied by wording existing in the foreign registration to be within the scope of such. Applicant may substitute the following wording, if accurate:
“Pharmaceutical and veterinary preparations for the treatment of skin defects; pharmaceutical and veterinary products for the treatment of skin defects in the form of dressings, in the form of skin implants comprising living tissue featuring primarily reconstructed collagen, and in the form of skin implants comprising living tissue; health care preparations for medical purposes, namely, sanitary sterilizing preparations for medical purposes; dietetic foods and drinks adapted for medical use, food for babies; medical plasters; materials for dressings, namely, gauze, cotton balls, bandages; material for stopping teeth and dental wax; all-purpose disinfectants; preparations for destroying vermin; fungicides, herbicides” in International Class 005
For assistance with identifying and classifying goods in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tmidm.gov.uspto.report/id-master-list-public.html. See TMEP §1402.04.
CONCLUSION: If you/an authorized person (e.g., attorney of record– please provide title) agree(s) to the above, I can prepare an Examiner's Amendment and approve the mark for publication. Alternatively, if you propose new amendments clarifying the nature of the goods and the wording is not directly from the USPTO's online ID Manual at http://tmidm.gov.uspto.report/id-master-list-public.html, please explain why you believe the wording would be acceptable and properly classified.
If I do not hear from you by the close of business on MONDAY, I will have to proceed with an Office Action but you may still respond by phone (voice mail is acceptable) or by email thereafter to agree to the above. Thank you in advance for your response.
/Ms. Tasneem Hussain/
Trademark Examining Attorney
(571) 272-8273