To: | Rousselot B.V. (tmdocket@cgolaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88212602 - X-PURE - 68044-001 T1 |
Sent: | 5/14/2019 12:41:25 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88212602
MARK: X-PURE
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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: Rousselot B.V.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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: 5/14/2019
Applicant’s response of April 22, 2019 resolved the entity issue identified in prior Office Action of March 8, 2019. See TMEP §§713.02, 714.04. Additionally, the refusal under Section 2(d) has been withdrawn based on applicant’s amended identification of goods and argument. See id.
ISSUES APPLICANT MUST ADDRESS: On April 26, 2019, the trademark examining attorney and Timothy C. Bradley, attorney of record, discussed the outstanding issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
The wording in the identification of goods for International Class 5 must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, collagen for industrial purposes (e.g., collagen used as a raw ingredient in the manufacture of cosmetics) is classified in Class 1 whereas collagen for medical purposes is classified in Class 5. In this case, for example, it is not clear for example whether the collagen used for 3D printing for biomedical engineering is used for medical purposes. 3D printing services for others are classified in Class 40, while biomedical engineering services are in Class 42, because they are scientific services, even if they are concerned with product development in the medical field. Thus, a raw substance like gelatin or collagen used in product development would be considered an industrial use, rather than a medical use.
Applicant may adopt the following wording, which includes various suggestions for clarity, if accurate:
Class 1: Gelatin and collagen, whether or not modified, for 3D printing for biomedical engineering for industrial purposes
Class 5: Gelatin and collagen, modified gelatin and collagen for medical or veterinary use as an extracellular matrix in contact with human or animal
cells; gelatin for absorbable hemostatic devices for medical purposes; gelatin and collagen for stabilizing parenteral formulations for medical purposes; gelatin and collagen, whether or not modified, for tissue engineering and cell cultures for medical
or veterinary purposes; gelatin and collagen, whether or not modified, as a biomaterial or bioink in 3D bioprinting for biomedical engineering
The applicant should also note the following when amending the identifications:
Applicant must also address the following requirement.
The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least two (2) classes; however, applicant submitted a fee sufficient for only one (1) class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
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.
/Valeriya Painter/
Examining Attorney
Law Office 121
(571) 270-7132
valeriya.painter@uspto.gov
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.