NOTE TO THE FILE
SERIAL NUMBER: 88161461
DATE: 01/31/2019
NAME: kcrennan
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 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:From: Allison S. Ricketts [mailto:aricketts@fzlz.com]
Sent: Thursday, January 31, 2019 11:47 AM
To: Crennan, Kevin <Kevin.Crennan@USPTO.GOV>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: U.S. Trademark Application Serial Nos. 88155255, 88155324, and 88155342 (NEUROCRINE BIOSCIENCES), 88155301, 88155421, and 88155436 (NEUROCRINE), 88155279 and 88155370 (triangle design) (Response Requested by January 31st)
Hi, I just saw the INGREZZA OA’s pop up as well. Why don’t you go ahead on the others as I do not think I will receive instructions today.
Regards,
Allison
Allison Strickland Ricketts
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 Times Square, 17th Floor | New York, NY 10036
Tel: (212) 813-5967 | Fax: (212) 813-5901
aricketts@fzlz.com | www.frosszelnick.com
From: Crennan, Kevin [mailto:Kevin.Crennan@USPTO.GOV]
Sent: Thursday, January 31, 2019 11:46 AM
To: Allison S. Ricketts <aricketts@fzlz.com>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: U.S. Trademark Application Serial Nos. 88155255, 88155324, and 88155342 (NEUROCRINE BIOSCIENCES), 88155301, 88155421, and 88155436 (NEUROCRINE), 88155279 and 88155370 (triangle design) (Response Requested by January 31st)
Hello Ms. Ricketts,
Just touching base regarding the below issues. Let me know if I should send out my action sometime today or wait to hear back by COB today.
Thanks,
Kevin
From: Crennan, Kevin
Sent: Monday, January 28, 2019 2:55 PM
To: Allison S. Ricketts <aricketts@fzlz.com>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: U.S. Trademark Application Serial Nos. 88155255, 88155324, and 88155342 (NEUROCRINE BIOSCIENCES), 88155301, 88155421, and 88155436 (NEUROCRINE), 88155279 and 88155370 (triangle design) (Response Requested by January 31st)
Hello Ms. Ricketts,
I spoke to my managing attorney, and she said that we can take that document as showing proof of same ownership. So the 2(d) issue is gone. I’ll await your response to the other issues.
Thanks,
Kevin
From: Allison S. Ricketts [mailto:aricketts@fzlz.com]
Sent: Monday, January 28, 2019 2:48 PM
To: Crennan, Kevin <Kevin.Crennan@USPTO.GOV>
Cc: Michelle Klein <mklein@fzlz.com>
Subject: RE: U.S. Trademark Application Serial Nos. 88155255, 88155324, and 88155342 (NEUROCRINE BIOSCIENCES), 88155301, 88155421, and 88155436 (NEUROCRINE), 88155279 and 88155370 (triangle design) (Response Requested by January 31st)
Dear Mr. Crennan:
Thank you for your email.
US Reg No. 2691306 is owned by the applicant. Applicant filed an amendment on April 12, 2002 to correct the state of incorporation (see attached). It appears that the amendment was overlooked and/or not acted upon at that time. I suspect that you are not able to make this correction now, but is this sufficient to avoid issuance of the 2(d) refusal?
I confirm that the applicant performs pharmaceutical research and development services for others.
I will get back to you on the other issues before January 31 if I can. However, I am not sure I will be able to. You can go ahead and issue priority actions if necessary.
Regards,
/Allison Strickland Ricketts/
Allison Strickland Ricketts
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
4 Times Square, 17th Floor | New York, NY 10036
Tel: (212) 813-5967 | Fax: (212) 813-5901
aricketts@fzlz.com | www.frosszelnick.com
From: Crennan, Kevin [mailto:Kevin.Crennan@USPTO.GOV]
Sent: Monday, January 28, 2019 12:06 PM
To: Ricketts Docket <ricketts-docket@fzlz.com>
Subject: U.S. Trademark Application Serial Nos. 88155255, 88155324, and 88155342 (NEUROCRINE BIOSCIENCES), 88155301, 88155421, and 88155436 (NEUROCRINE), 88155279 and 88155370 (triangle design) (Response Requested by January 31st)
Hello Ms. Ricketts,
I’ve reviewed the above trademark applications for registration. Before they may be approved for publication for opposition, a few issues must be resolved.
First, there is a prior-registered mark NEUROCRINE BIOSCIENCES (U.S. Registration No. 2691306) that will present a bar to registration of your client’s NEUROCRINE and NEUROCRINE BIOSCIENCES marks under Section 2(d) because the citizenships of the corporations do not line up: your client is a Delaware corporation, but the prior-registered mark is a California corporation. That being said, if you’d like you can file a voluntary amendment, http://teas.gov.uspto.report/office/pra, claiming U.S. Registration No. 2691306 in applications 88155255, 88155324, 88155342, 88155301, 88155421, 88155436.
Second, a disclaimer of BIOSCIENCES is required in applications 88155255, 88155324, and 88155342.
Third, the identification of goods in applications 88155301, 88155255, and 88155279, “Pharmaceutical preparations for human use”, must specify the disease or disorder that the drugs treat. Given your client’s About Us page, I suggest something like “Pharmaceutical preparations for the treatment of neurological and endocrine disorders.”
Fourth, can you please clarify whether your client, in fact, researches and develops pharmaceuticals for others, not just its own? The specimens that you provided in 88155324, 88155370, and 88155436 make it unclear whether your client researches and develops its own drugs, which would be a non-fuctioning trademark as it is not a service rendered to others, or whether it, in fact, does research and develop drugs for others.
Please let me know your thoughts. By January 31st, if possible. If we can’t fix all the issues, hopefully we can fix some of them.
Thanks,
/KGC/
Kevin G. Crennan
Trademark Examining Attorney
Law Office 113
United States Patent and Trademark Office
(571) 272-7949
The information contained in this email message may be privileged, confidential, and protected from disclosure. Any unauthorized use, printing, copying, disclosure or dissemination of this communication may be subject to legal restriction or sanction. If you think that you have received this email message in error, please reply to the sender.From: Crennan, Kevin
Sent: Monday, January 28, 2019 3:46 PM
To: ricketts-docket@fzlz.com
Subject: U.S. Trademark Application Serial Nos. 88155208 and 88161461 INGREZZA (Response Requested by January 31st)
Hello Ms. Ricketts,
I’ve also reviewed the above trademark applications for registration. Before these applications may be approved for publication for opposition, two minor issues must be resolved.
First, in application 88155208 where the color white is claimed, the mark description must reference all elements of white appearing therein. I suggest the following amendment: The mark consists of a sequence of right pointing arrows colored pink on the left shading into orange outlined with white lines and the word “INGREZZA” in black. The other white in the mark is background and is not claimed as a feature.
Second, the clause “Pharmaceutical preparations for human use” is indefinite and must be amended to specify the disease or disorder that the drugs treat. Given your client’s About Us page, I suggest something like “Pharmaceutical preparations for the treatment of neurological and endocrine disorders and tardive dyskinesia.”
Please let me know your thoughts. By January 31st, if possible.
Thanks,
/KGC/
Kevin G. Crennan
Trademark Examining Attorney
Law Office 113
United States Patent and Trademark Office
(571) 272-7949