NOTE TO THE FILE
SERIAL NUMBER: 88086137
DATE: 10/17/2018
NAME: twhittaker-brown
NOTE:
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for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
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Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
Good afternoon Ms. Kuhn,
I believe that the third item is acceptable in Class 1. The other two descriptions are a bit broad. While certain broad descriptions have been thoroughly vetted and approved by the PTO, they generally not acceptable. For example, the wording “protein plastics” has been vetted and approved. The following entries from the Identification Manual provide some guidance:
Select Record
001
Testing kits containing peptidesubstrates used in analyzing and detecting certain toxins for laboratory or research use
A
11/01/2005
GOODS
Select Record
001
Testing kits containing peptidesubstrates used in analyzing and detecting certain toxins for clinical or medical laboratory use
M
07/17/2008
GOODS
7/17/08 - Goods transferred from Class 5 since they are fo More >
Select Record
001
Biomedical compounds, namely, peptide substrates used in analyzing and detecting certain toxins for clinical or medical laboratory use
M
07/17/2008
GOODS
7/17/08 - Goods transferred from Class 5 since they are for laboratory use and not actual treatment or diagnosis of a particular individual. less
Select Record
005
Synthetic peptides for the treatment of {indicate specific disease or condition}
M
09/25/2008
GOODS
9/25/08 - {indicate specific disease or condition}was adde More >
Select Record
001
Protein for use in the manufacture of cosmetics
X
01/22/2015
GOODS
Select Record
001
Protein plastics
A
07/20/2004
GOODS
Select Record
001
Proteins for use in the manufacture of {indicate general nature of item, e.g., cosmetics, beverages, food products and food supplements, etc., or indicate for a wide variety of goods, if accurate}
A
02/27/2014
GOODS
I hope you find this information to be helpful. Thanks and have a great day!
/Tracy Whittaker-Brown, Esq./
Examining Attorney
U.S. Patent & Trademark Office
571-272-9397
From: Kuhn, Perla M. [mailto:pkuhn@foxrothschild.com]
Sent: Wednesday, October 17, 2018 1:19 PM
To: Whittaker-Brown, Tracy <Tracy.Whittaker-Brown@USPTO.GOV>
Cc: Lopez, Cristina <clopez@foxrothschild.com>
Subject: U.S. TRADEMARK APPLICATION NO. 88086137 - TALAMAX - 135522.04048
Examiner Whittaker-Brown,
I am the attorney of record for the above-referenced application and I refer to your October 1, 2018 office action in which you objected to the wording protein; peptides in Class 1 as being indefinite. I am writing to inquire as to whether my client's proposed amendment to the identification of goods in Class 1 (see below) would be acceptable:
Protein and peptides for industrial use;
Protein and peptides in raw material form for scientific and medical research;
Protein and peptides for use in the manufacture of pharmaceutical.
Thank you in advance for your review of this request. We look forward to hearing from you.
Regards,
Perla
Perla Kuhn
Partner
Fox Rothschild LLP
101 Park Avenue
Suite 1700
New York, NY 10178
(212) 878-1424 - direct
(212) 692-0940- fax
pkuhn@foxrothschild.com
www.foxrothschild.com