Notation to File

Trademark

Ocugen, Inc.

RE: proposed amendment for TM app s/n 87608302, 87608302, 87608309, 87608306 - OCUGEN marks Authorization given. Thank you. Peter T. Wakiyama Partner

NOTE TO THE FILE

SERIAL NUMBER: 87608314

DATE:    07/09/2018

NAME: lmartin2

NOTE:

Searched:
     Google
     Lexis/Nexis
     OneLook
     Wikipedia
     Acronym Finder                         Protest evidence reviewed
     Other:

Checked:
     Geographic significance
     Surname
     Translation
     ID with ID/CLASS mailbox

     Checked list of approved Canadian attorneys and agents

Discussed file with
Attorney/Applicant via:
        phone                               Left message with
    X   email                               Attorney/Applicant

     Requested Law Library search      X   Issued Examiner’s Amendment
     for:                                   and entered changes in TRADEUPS

        PRINT        DO NOT PRINT           Added design code in TRADEUPS
     Description of the mark
     Translation statement                  Re-imaged standard character
                                            drawing
     Negative translation statement
     Consent of living individual           Contacted TM MADRID ID/CLASS
                                            about misclassified definite ID
     Changed TRADEUPS to:

     OTHER:

From: Wakiyama, Peter T. [mailto:wakiyamp@pepperlaw.com]
Sent: Monday, July 09, 2018 10:03 AM
To: Martin, Lief <lief.martin@USPTO.GOV>; Martell, Vincent <martellv@pepperlaw.com>
Subject: RE: proposed amendment for TM app s/n 87608302, 87608302, 87608309, 87608306 - OCUGEN marks

Authorization given. Thank you.

Peter T. Wakiyama

Partner

3000 Two Logan Square | Eighteenth and Arch Streets

Philadelphia, Pennsylvania 19103-2799

p: 215.981.4538 | f: 800.486.7194 | bio

From: Martin, Lief [mailto:lief.martin@USPTO.GOV]
Sent: Monday, July 09, 2018 9:54 AM
To: Martell, Vincent
Cc: Wakiyama, Peter T.
Subject: RE: proposed amendment for TM app s/n 87608302, 87608302, 87608309, 87608306 - OCUGEN marks

Thanks Vincent. I’ll need authorization for the amendment directly from Peter, or another appointed attorney.

Unfortunately, I cannot accept authorization to amend from anyone else. TMEP 707.01.

Best,
Lief

From: Martell, Vincent [mailto:martellv@pepperlaw.com]
Sent: Tuesday, July 03, 2018 6:00 PM
To: Martin, Lief <lief.martin@USPTO.GOV>
Cc: Wakiyama, Peter T. <wakiyamp@pepperlaw.com>
Subject: RE: proposed amendment for TM app s/n 87608302, 87608302, 87608309, 87608306 - OCUGEN marks

Dear Lief,

We have spoken with our client and the proposed amendment is acceptable. Please proceed. Thank you.

Best regards,

Vincent

Vincent Martell

Paralegal

From: Martin, Lief [mailto:lief.martin@USPTO.GOV]
Sent: Friday, June 15, 2018 2:12 PM
To: Wakiyama, Peter T.
Subject: proposed amendment for TM app s/n 87608302, 87608302, 87608309, 87608306 - OCUGEN marks

Re:

Serial no.             Mark

87608302            OCUGEN

87608314            eye design

87608309            eye design                          (amendment can be performed upon filing of statement of use)

87608306            OCUGEN and design        (amendment can be performed upon filing of statement of use)

Good afternoon Peter,

I am writing to propose the following amendment to the identification of goods for the referenced TM applications: ~~House mark for pharmaceutical preparations;~~ House mark for pharmaceutical preparations for treating diseases and disorders affecting the eye

Alternatively, we can retain “House mark for pharmaceutical preparations” and the applicant will be required to provide additional evidence to substantiate this portion of the identification. See TMEP Sec. 1402.03(c):

The "full line of" language may be used only in appropriate situations and the circumstances and specimens or other evidence of record must be analyzed carefully to ensure that an applicant who does not in fact use a particular mark on a sufficient number or variety of goods or services in its line does not receive a trademark registration that could potentially bar the registration of another applicant who uses a similar mark on different goods or services. If the goods are a "full line of pharmaceuticals," the examining attorney must require the applicant to provide evidence that it uses the mark in connection with pharmaceuticals to treat diseases or health problems in all chapters in the World Health Organization ("WHO") International Statistical Classification of Diseases and Related Health Problems. See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products). See also TMEP §904.01(a).

Please let me know if the proposed amendment is acceptable.

Best,
Lief

Lief Martin

Trademark Examining Attorney

U.S. Patent and Trademark Office

Law Office 112

571.272.3434 phone

571.273.3434 fax

Notice to trademark applicants and attorneys: All relevant e-mail communications will be added to the official application record in accordance with 37 C.F.R. §2.191 and TMEP §§709.04 - .05.

Sent to TICRS as Serial Number: 87608302