Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT OWNER’S TRADEMARK REGISTRATION

CLICK ON THE LINK BELOW TO RESPOND TO THIS LETTER AND SELECT FORM NUMBER 11:

 http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp

POST REGISTRATION OFFICE ACTION

ISSUE/MAILING DATE: 5/10/2019

U.S. Registration Number  5518140

The Section 7 Amendment submitted on April 25, 2019 is not accepted for the reasons set forth below.

The proposed amendment to the identification of goods and/or services cannot be accepted because it broadens the scope of the goods and/or services in the registration.  Such an amendment would require republication of the mark with the amended goods and/or services to ensure proper public notice as to the extent of the owner’s trademark rights.  The identification of goods and/or services in a registration can only be restricted or otherwise changed in ways that would not require republication of the mark.  37 C.F.R. §2.173(e); TMEP §1609.03.

The owner seeks to change the goods and/or services from “Veterinary pharmaceutical preparations for the treatment of renal, cardiovascular, ophthalmic, liver, pulmonary, metabolic, and vascular diseases and fibrosis; (Based on 44(e)) Veterinary pharmaceutical preparations for the treatment of renal, cardiovascular, ophthalmic, liver, pulmonary, metabolic, and vascular diseases and fibrosis” to “Pharmaceutical preparations for the treatment of renal, cardiovascular, ophthalmic, liver, pulmonary, metabolic, and vascular diseases and fibrosis except neurological and oncological diseases.”  Such an amendment would serve to broaden the scope to include goods and/or services not originally covered by the goods and/or services in the registration.  See In re Capp Enterprises, Inc., 32 USPQ2d 1855 (Comm’r Pats. 1993).  Accordingly, the Section 7 Amendment is not accepted.

The owner has six months from the issuance date of this letter to respond to all the issues raised in this letter.  In order to expedite the processing of your Section 7 Amendment, the early submission of a response to this letter is encouraged.  If a complete response is not received in the Office within this time period, then the Section 7 Amendment will be considered abandoned.  37 C.F.R. §2.176.  The fee for filing the Section 7 Amendment will not be refunded.

/Val Stevens/Trademark Specialist

Office of Post Registration

571-272-9228 (Office)

571-273-9228 (Fax)

val.stevens@uspto.gov

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) Response to Post-Registration Office action form number 11 at http://www.gov.uspto.report/trademarks/teas/reg_maintain.jsp.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the registration.  For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned specialist.  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 registration will be placed in the official registration record.

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual owner or someone with legal authority to bind an owner (i.e., a corporate officer, a general partner, all joint owners). If an owner is represented by an attorney, the attorney must sign the response.

CHECK THE STATUS OF THE REGISTRATION:  To check the status of your registration at any time, visit the Office’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen.  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.