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. 88324166 KITOSCELL GEL PFD(Standard Characters, see http://uspto.report/TM/88324166/mark.png) has been amended as follows:

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

Applicant respectfully withdraws the previous request to amend the mark.

The Examining Attorney requires that Applicant clarify whether the foreign registration contains a standard character claim. Applicant affirms that under the law of the country of origin, the foreign application or registration includes a claim that the mark is in standard characters (or the equivalent).

Applicant believes it has sufficiently addressed the issues raised in the Office Action. Therefore, Applicant respectfully requests that this application be approved 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 Pharmaceutical preparations for medical use in different presentations, namely, cream, gel, solution, spray, microemulsions, tablets, and capsules, used to reduce or to eliminate scars or skin imperfections, correct fibrosis in some body organs, namely, liver, kidney, and lungs, and used to treat nephropathy and lung fibrosis
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.

Filing Basis: Section 44(e), Based on Foreign Registration: For all applications: The applicant attaches a copy of [ Mexico registration number 1581017 registered 10/16/2015 with a renewal date of __________ and an expiration date of 06/02/2025 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.

Proposed: Class 005 for Pharmaceutical preparations for medical use in different presentations, namely, cream, gel, solution, spray, microemulsions, tablets, and capsules, used to reduce or to eliminate scars or skin imperfections, correct fibrosis in some body organs, namely, liver, kidney, and lungs, and used to treat nephropathy and lung fibrosis
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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Mexico registration number 1581017 registered 10/16/2015 with a renewal date of __________ and an expiration date of 06/02/2025 ], and translation thereof, if appropriate, before the application may proceed to registration. 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. 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 on or 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 or services that meet the certification standards of the applicant.

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

The applicant hereby appoints B. Brett Heavner. Other appointed attorneys are all the other attorneys at Finnegan, Henderson, Farabow, Garrett & Dunner LLP. B. Brett Heavner of Finnegan, Henderson et al., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      901 New York Avenue NW
      Washington, District of Columbia 20001
      United States
to submit this Response to Office Action Form on behalf of the applicant.
The docket/reference number is 15059.0001.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

B. Brett Heavner 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: . , is located at

      
      ,

The applicants proposed correspondence information: B. Brett Heavner. B. Brett Heavner of Finnegan, Henderson et al., is located at

      901 New York Avenue NW
      Washington, District of Columbia 20001
      United States
The docket/reference number is 15059.0001.

The phone number is 202-408-4000.

The fax number is 202-408-4400.

The email address is docketing@finnegan.com

SIGNATURE(S)
Response Signature
Signature: /B. Brett Heavner/     Date: 09/05/2019
Signatory's Name: B. Brett Heavner
Signatory's Position: Attorney of record, DC bar member

Signatory's Phone Number: 202-408-4000

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:    
   
   
   
   ,
Mailing Address:    B. Brett Heavner
   Finnegan, Henderson et al.
   901 New York Avenue NW
   Washington, District of Columbia 20001
        
Serial Number: 88324166
Internet Transmission Date: Thu Sep 05 16:06:14 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.X.X-2019090516061433447
5-88324166-61071e3e7c44c15eab011f45ec9b5
d757fe3e9170c1f7f68512d0d9e9ef692dfe-N/A
-N/A-20190905151453553100