Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88237293 GIVLAARI (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8823729 3/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Please see the argument submitted in the Evidence section.

EVIDENCE
Evidence has been attached: applicant's argument, pages from websites discussing JPEG compression artifacts, and information on the USPTO's consistency initiative
Original PDF file:
evi_172584339-20200801212 034210887_._GIVLAARI_-_Ar gument.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_172584339-20200801212 034210887_._Web_page_on_d igital_photography.pdf
Converted PDF file(s) ( 6 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6
Original PDF file:
evi_172584339-20200801212 034210887_._Web_page_on_d igital_photography2.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_172584339-20200801212 034210887_._Consistency_I nitiative_.pdf
Converted PDF file(s) ( 1 page) Evidence-1

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical preparations for the treatment of porphyria
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

In International Class 005, the mark was first used at least as early as 12/10/2019 and first used in commerce at least as early as 12/10/2019.


Proposed:
Class 005 for Pharmaceutical preparations for the treatment of porphyria

Deleted Filing Basis: 1(b)
In International Class 005, the mark was first used at least as early as 12/10/2019 . and first used in commerce at least as early as 12/10/2019 .

Applicant hereby submits one(or more) specimen(s) for Class 005. The specimen(s) submitted consists of photo of a container for the goods, to be considered in conjunction with the previously submitted specimen.
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Specimen File1

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Alnylam Pharmaceuticals, Inc., a corporation of Delaware, having an address of
      300 Third Street
      Cambridge, Massachusetts 02142
      United States

Proposed: Alnylam Pharmaceuticals, Inc., a corporation of Delaware, having an address of
      300 Third Street
      Cambridge, Massachusetts 02142
      United States
      Email Address: XXXX

ADDITIONAL STATEMENTS
Claim of Active Prior Registration(s)
The applicant claims ownership of active prior U.S. Registration Number(s) 5985026.

Correspondence Information (current):
      Timothy H. Hiebert
      PRIMARY EMAIL FOR CORRESPONDENCE: timothy.hiebert@wbd-us.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED
Correspondence Information (proposed):
      Timothy H. Hiebert
      PRIMARY EMAIL FOR CORRESPONDENCE: timothy.hiebert@wbd-us.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Timothy H. Hiebert/      Date: 08/01/2020
Signatory's Name: Timothy H. Hiebert
Signatory's Position: Attorney of record, Massachusetts bar member
Signatory's Phone Number: 8572873180


Response Signature
Signature: /Timothy H. Hiebert/     Date: 08/01/2020
Signatory's Name: Timothy H. Hiebert
Signatory's Position: Attorney of record, Massachusetts bar member

Signatory's Phone Number: 8572873180

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Timothy H. Hiebert
   Womble Bond Dickinson (US) LLP
   
   470 Atlantic Ave., Suite 600
   Boston, Massachusetts 02210-2228
Mailing Address:    Timothy H. Hiebert
   Womble Bond Dickinson (US) LLP
   470 Atlantic Ave., Suite 600
   Boston, Massachusetts 02210-2228
        
Serial Number: 88237293
Internet Transmission Date: Sat Aug 01 21:35:54 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XX.XX-20200801213554408
872-88237293-7402881c58f46b1593fafe39dc8
850247f21d84a316be7b4959f6ee0a7308b55-N/
A-N/A-20200801212034210887