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. 88302588 A2 BIOTHERAPEUTICS(Standard Characters, see http://uspto.report/TM/88302588/mark.png) has been amended as follows:

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

In the Office Action dated May 2, 2019, the Examining Attorney (1) required Applicant to enter a disclaimer of BIOTHERAPEUTICS pursuant to TMEP §§1213, 1213.03(a); (2) required amendment to the goods and services pursuant to TMEP §§1402.01, 1402.03; (3) required additional information on the significance of the mark pursuant to TMEP §814 and (4) reported that a search of the Office’s database of registered and pending marks revealed no conflicting marks that would bar registration under Trademark Act Section 2(d).

1. Disclaimer.  With no effect on its rights in the terms or in the mark as a whole, Applicant has entered the required disclaimer of the word BIOTHERAPEUTICS.

2. Amendment. The Examining Attorney has required amendment to clarify some terms in the goods and services, such as “therapeutic targets.” A therapeutic target is a term of art that is recognized in the field, but Applicant has offered further clarification of its targets in the proposed amendments. Applicant has also offered amendments to clarify its “therapeutic cells…for the treatment and prevention of cancer,” but would like to point out that the broad phrase, “cells for medical or clinical use” is listed as acceptable in the Trademark ID Manual. Thus, Applicant believes that proposed amendments to its goods, such as “therapeutic cells, for medical use, for the treatment and prevention of cancer,” should be acceptable.

3. Information Required. In response to the requirement for further information, Applicant confirms that to its knowledge the only significance of A2 in the pharmaceutical trade or industry, and as applied to its goods and services, is as part of its trademark and trade name. Applicant is not aware of use of A2 as a term of art.

Applicant believes that the Application, as amended, is in condition for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for T-cell pharmaceutical products for the treatment of cancer and inflammatory diseases; therapeutic targets for the treatment and prevention of cancer, inflammation and inflammatory diseases; therapeutic cells, therapeutic proteins and therapeutic antibodies for human use for the treatment and prevention of cancer, inflammation and inflammatory diseases; therapeutics and cellular therapies for the treatment of cancer, inflammation, and inflammatory diseases; biologics for in-vitro diagnostic use
Original Filing Basis:
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.

Proposed:
Tracked Text Description: T-cell pharmaceutical products for the treatment of cancer and inflammatory diseases; T-cell pharmaceutical products for the treatment of cancer; therapeutic targets for the treatment and prevention of cancer, inflammation and inflammatory diseases; therapeutic targets, namely, proteins or protein complexes, for the treatment and prevention of cancer; therapeutic cells, therapeutic proteins and therapeutic antibodies for human use for the treatment and prevention of cancer, inflammation and inflammatory diseases; therapeutic cells, for medical use, for the treatment and prevention of cancer; therapeutics and cellular therapies for the treatment of cancer, inflammation, and inflammatory diseases; therapeutic proteins and therapeutic antibodies, for medical use, for the treatment and prevention of cancer in humans; biologics for in-vitro diagnostic use; therapeutics and cellular therapies in the nature of proteins and protein complexes for the treatment of cancer; biologics, namely, proteins and protein complexes for in-vitro diagnostic use for the treatment of cancerClass 005 for T-cell pharmaceutical products for the treatment of cancer; therapeutic targets, namely, proteins or protein complexes, for the treatment and prevention of cancer; therapeutic cells, for medical use, for the treatment and prevention of cancer; therapeutic proteins and therapeutic antibodies, for medical use, for the treatment and prevention of cancer in humans; therapeutics and cellular therapies in the nature of proteins and protein complexes for the treatment of cancer; biologics, namely, proteins and protein complexes for in-vitro diagnostic use for the treatment of cancer;
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.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for Provision of, and identification and development of, therapeutic targets for others for the treatment and prevention of cancer, inflammation and inflammatory diseases; development of therapeutics and cellular therapies for treatment of cancer, inflammation, and inflammatory diseases; biotechnology research, development, testing and analysis for the treatment of cancer, inflammation, and inflammatory diseases; Scientific research and development services; providing information relating to treatment and prevention of cancer, inflammation and inflammatory diseases
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Provision of, and identification and development of, therapeutic targets for others for the treatment and prevention of cancer, inflammation and inflammatory diseases; Provision of, and identification and development of, therapeutic targets, namely, proteins and protein complexes, for others for the treatment and prevention of cancer; development of therapeutics and cellular therapies for treatment of cancer, inflammation, and inflammatory diseases; development of therapeutics and cellular therapies, namely, pharmaceutical, biological and medical therapies for the treatment of cancer; biotechnology research, development, testing and analysis for the treatment of cancer, inflammation, and inflammatory diseases; biotechnology research, development, testing and analysis for the treatment of cancer; Scientific research and development services; providing information relating to treatment and prevention of cancer, inflammation and inflammatory diseases; providing scientific information in the fields of treatment and prevention of cancerClass 042 for Provision of, and identification and development of, therapeutic targets, namely, proteins and protein complexes, for others for the treatment and prevention of cancer; development of therapeutics and cellular therapies, namely, pharmaceutical, biological and medical therapies for the treatment of cancer; biotechnology research, development, testing and analysis for the treatment of cancer; Scientific research and development services; providing scientific information in the fields of treatment and prevention of cancer;
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.

The applicant's current attorney information: Joi A. White. Joi A. White of CARR & FERRELL LLP, is located at

      120 CONSTITUTION DRIVE
      MENLO PARK, California 94025
      US
The docket/reference number is T-4336 US.

The phone number is 650-812-3400.

The fax number is 650-812-3444.

The email address is usptomail@carrferrell.com

The applicants proposed attorney information: Joi A. White. Other appointed attorneys are Jefferson F. Scher, Aylin Demirci, Jessica E. Galaif and all other attorneys of the Firm. Joi A. White of CARR & FERRELL LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      120 CONSTITUTION DRIVE
      MENLO PARK, California 94025
      United States
The docket/reference number is T-4336 US.

The phone number is 650-812-3400.

The fax number is 650-812-3444.

The email address is usptomail@carrferrell.com

Joi A. White submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JOI A. WHITE. JOI A. WHITE of CARR & FERRELL LLP, is located at

      120 CONSTITUTION DRIVE
      MENLO PARK, California 94025
      US
The docket/reference number is T-4336 US.

The phone number is 650-812-3400.

The fax number is 650-812-3444.

The email address is usptomail@carrferrell.com; jwhite@carrferrell.com

The applicants proposed correspondence information: Joi A. White. Joi A. White of CARR & FERRELL LLP, is located at

      120 CONSTITUTION DRIVE
      MENLO PARK, California 94025
      United States
The docket/reference number is T-4336 US.

The phone number is 650-812-3400.

The fax number is 650-812-3444.

The email address is usptomail@carrferrell.com; jwhite@carrferrell.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "BIOTHERAPEUTICS" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Joi A. White/     Date: 11/01/2019
Signatory's Name: Joi A. White
Signatory's Position: Attorney of record, California Bar member

Signatory's Phone Number: 650-812-3400

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:    JOI A. WHITE
   CARR & FERRELL LLP
   
   120 CONSTITUTION DRIVE
   MENLO PARK, California 94025
Mailing Address:    Joi A. White
   CARR & FERRELL LLP
   120 CONSTITUTION DRIVE
   MENLO PARK, California 94025
        
Serial Number: 88302588
Internet Transmission Date: Fri Nov 01 19:27:53 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2019110119275383
5160-88302588-700fda1a4744430617bcbcc69b
4f1a01f4e1f7ffcdf297dc4351c22beab553943-
N/A-N/A-20191101190012957930