NOTE TO THE FILE
SERIAL NUMBER: 88057968
DATE: 07/31/2020
NAME: lfox
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT 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:X OTHER: email
From: Maury Tepper <mtepper@teiplaw.com>
Sent: Friday, July 31, 2020 11:56 AM
To: Fox, Lyal <Lyal.Fox@USPTO.GOV>
Cc: Terri Morris <tmorris@teiplaw.com>
Subject: RE: U.S. Trademark Application No. 88057968 for PARAPLATIN
Thank you for your email.
Although we do not believe the ending of this mark raises any 2(a) issues, our client is nevertheless able to confirm that the goods are platinum-based antineoplastic agents.
We therefore agree to the proposed amendment to the ID outlined in your email, and we look forward to receiving an Examiner’s amendment.
Thank you for your assistance.
Maury Tepper
Maury M. Tepper, III
Tepper & Eyster, PLLC
3724 Benson Drive
Raleigh, North Carolina 27609
Direct Dial: (919) 861-8903
Fax: (919) 861-8913
From: Fox, Lyal <Lyal.Fox@USPTO.GOV>
Sent: Friday, July 31, 2020 10:20 AM
To: Maury Tepper <mtepper@teiplaw.com>
Cc: Terri Morris <tmorris@teiplaw.com>
Subject: U.S. Trademark Application No. 88057968 for PARAPLATIN
Hello Attorney Maury Tepper III,
I am the attorney assigned to U.S. Trademark Application No. 88057968 for PARAPLATIN. I have reviewed the Statement of Use and the provided specimen is acceptable. However, an additional minor issue is preventing approval.
Specifically, the office of legal policy has identified that the stem “PLATIN” within the mark is a descriptive INN (international nonproprietary name) stem for pharmaceutical products (http://apps.who.int/iris/bitstream/10665/63779/1/WHO_PHARM_S_NOM_1570.pdf). Moreover, due to the health nature of the products provided, if the wording is not descriptive it may be deceptively misdescriptive. Therefore a minor amendment is needed to the identification of goods to ensure the mark is not misdescriptive. The following identification is required or a refusal will have to issue under Section 2a (edits in bold):
005: Pharmaceuticals, namely, anti-cancer drugs containing platinum-based antineoplastic agents
Please respond ASAP advising if the above change is acceptable. If so, I will make the change via Examiner’s Amendment and approve the application for registration.
If you would like to call and discuss the application my direct line is listed below.
Please be aware that I will need to refuse the application if I have not received your response by Friday, August 07, 2020, at 5 p.m. EST.
Regards,
Lyal Fox III
Trademark Examining Attorney
Law Office 113
571-270-7884