To: | Hookipa Biotech GmbH (mike-pto@lozaip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88066345 - THERAT - REDL-235 |
Sent: | 11/26/2018 1:47:39 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88066345
MARK: THERAT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Hookipa Biotech GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 11/26/2018
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).
INDEFINITE IDENTIFICATION OF GOODS & SERVICES
Particular wording in the U.S. application’s identification of goods and/or services is not acceptable because it exceeds the scope of the goods and/or services in the foreign registration. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.06 et seq., 1402.07. For a U.S. application based on Trademark Act Section 44, an applicant is required to list only goods and/or services that are within the scope of the goods and/or services in the foreign registration. 37 C.F.R. §2.32(a)(6); TMEP §§1012, 1402.01(b). Therefore, this wording is not considered part of the identification of goods and/or services in the U.S. application, and the remaining wording in the identification is operative for purposes of future amendment. See TMEP §1402.01(b); cf. TMEP §1402.07(d).
In this case, the U.S. application identifies the particular goods in International Class 5 as follows: “Pharmaceutical and veterinary preparations for active and passive immunization, Vaccines; Vaccines for infectious diseases, cancer, and autoimmune diseases; Vaccine preparations; Human vaccine preparations; Veterinary vaccines; Therapeutic vaccines.”
However, the foreign registration identifies the following goods in International Class 5: “Pharmaceutical and veterinary preparations, in particular preparations for active and passive immunisation, in particular for vaccines, such as for infectious disease, cancer and autoimmune disease.”
The goods in the U.S. application identified as “Pharmaceutical and veterinary preparations for active and passive immunization, Vaccines” exceed the scope of the goods in the foreign registration because as identified the goods include pharmaceutical and veterinary preparations for active and passive immunization that are not limited to vaccines. The wording “in particular” that follows “pharmaceutical and veterinary preparations, in particular preparations for active and passive immunization” and that precedes “vaccines” limits the preparations to vaccines. Therefore, applicant must specify that its pharmaceutical and veterinary preparations are in the nature of vaccines. Additionally, for purposes of consistency with identification of goods set forth in the foreign registration, applicant must specify that its vaccines for infectious diseases, cancer, and autoimmune diseases as well as its vaccine preparations, human vaccine preparations, veterinary vaccines, and therapeutic vaccines are all in the nature of pharmaceutical and veterinary preparations for active and passive immunization.
Therefore, applicant may respond by satisfying one of the following:
(1) Amending the identification of goods and/or services in the U.S. application to correspond to the goods and/or services in the foreign registration, ensuring that all goods and/or services beyond the scope of the foreign registration are deleted from the U.S. application; or
(2) Substituting a basis under Section 1(a) or 1(b) for those goods and/or services in the U.S. application that are beyond the scope of the foreign registration. An applicant may assert more than one basis in an application (except Section 1(a) and 1(b) may not be asserted for the same goods and/or services), provided all requirements are satisfied for each claimed basis.
See 15 U.S.C. §§1051(a)-(b), 1126; 37 C.F.R. §§2.32(a)(6), 2.34(b), 2.35(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.03(h), 1402.01(b).
Additionally, applicant may respond by arguing that these goods are within the scope of the foreign registration and should remain in the U.S. application.
The identification of services in International Class 42 is indefinite and must be clarified because, as identified, the relationship between “pharmaceutical research and development” and “pharmaceutical testing, analysis, and evaluation” to “vaccines for infectious diseases, cancer and autoimmune diseases” is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to clarify the nature of the relationship between these elements. Furthermore, the “pharmaceutical testing, analysis, and evaluation” element of these services is indefinite. Applicant must specify that these testing, analysis, and evaluation services are of the pharmaceuticals of others. Also, applicant must specify that the testing, analysis, and evaluation is to assure compliance with industry standards or are for the order and specification of accrediting bodies or certification boards.
For applicant’s convenience, the undersigned trademark examining attorney has duplicated its identification of goods and services below with suggested amendments and commentary appearing in a bold and italicized font. Applicant may adopt the following wording, if accurate:
International Class 5 – (Based on 44(e)) Pharmaceutical and veterinary preparations for active and passive immunization, namely, vaccines; Pharmaceutical and veterinary preparations for active and passive immunization, namely, vaccines for infectious diseases, cancer, and autoimmune diseases; Pharmaceutical and veterinary preparations for active and passive immunization, namely, vaccine preparations, human vaccine preparations, veterinary vaccines, and therapeutic vaccines
[No Change] International Class 40 – (Based on Intent to Use) Treatment of materials for the manufacture of preparations for active and passive immunization for vaccines of infectious diseases, cancer and autoimmune diseases
International Class 42 – (Based on 44(e)) Scientific and technological services related to active and passive immunization, namely, scientific research, pharmaceutical research, pharmaceutical development, and industrial research in the field of vaccines for infectious diseases, cancer and autoimmune diseases; Scientific and technological services related to active and passive immunization, namely, testing, analysis, and evaluation of the pharmaceuticals of others to assure compliance with industry standards
Applicant’s services in International Class 40 may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
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.
RESPONSE GUIDELINES
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Christopher M. Law/
Trademark Examining Attorney
Law Office 103
(571) 272-2913
christopher.law@uspto.gov
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.
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.