To: | TIZONA THERAPEUTICS, INC. (sharon.smith@morganlewis.com) |
Subject: | U.S. Trademark Application Serial No. 88241606 - TIZONA - 116891-2030 |
Sent: | August 04, 2020 08:58:30 AM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88241606
Mark: TIZONA
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Correspondence Address: ONE MARKET ST., SPEAR STREET TOWER
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Applicant: TIZONA THERAPEUTICS, INC.
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Reference/Docket No. 116891-2030
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 04, 2020
The statement of use 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, 2.65(a); TMEP §§711, 718.03.
Does Not Show Mark with Any Specified Goods/Services or Specific Classes – SOU
THIS REFUSAL APPLIES ONLY TO THE SPECIFIED CLASS 42 SERVICES
Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class(es) 42. 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Specifically, the specimen is a label for pharmaceutical preparations, not, for example, an advertisement for applicant’s Class 42 services.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the statement of use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013).
Examples of specimens for goods may include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services may include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §§1301.04 et seq.
Applicant may respond to this refusal by submitting a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce prior to the expiration of the deadline for filing the statement of use and (b) shows the mark in actual use in commerce for the goods and/or services identified in International Class(es) 42.
Applicant, however, may not withdraw the statement of use. See 37 C.F.R. §2.88(g); TMEP §1109.17.
For more information about this refusal and instructions on how to submit a verified “substitute” specimen online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Partial Abandonment Advisory
If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class(es) 42 will be deleted from the application: research and development of pharmaceuticals and compounds for the treatment of cancer and autoimmune diseases; research and development of pharmaceuticals and compounds for modulation of the immune system and the tumor microenvironment. The application will then proceed with the following goods and/or services in International Class(es) 5 only: pharmaceutical preparations for use in the treatment of cancer; pharmaceutical preparations and compounds for modulation of the immune system and the tumor microenvironment. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Assistance
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
Jimmy Stein
/Jimmy Stein/
Trademark Examining Attorney
Law Office 107
(571) 272-3056
james.stein@uspto.gov
RESPONSE GUIDANCE