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. 88340176 CAPLYTA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8834017 6/large) has been amended as follows:

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

The examining attorney has asserted that the previously presented specimens are allegedly digitally altered or a mock-up. The examining attorney argues that "the mark on the specimens is pixelated in such a way that the mark does not appear to actually be affixed to the goods". Applicant respectfully disagrees. Applicant has submitted bona-fide digital photographs of the product packaged in boxes bearing the mark which were shipped in interstate commerce. There has been no digital manipulation of the photographs. Applicant submits that if the examining attorney has magnified the pictures to the extent that the mark appears pixelated, then the examining attorney should observe that all other aspects of the photo appear equally pixelated- including the edges of the paperboard package and the edges of the cardboard outer carton. Applicant does not believe that there is any basis to believe that the mark itself is pixelated or overlaid with respect to the rest of the image. Applicant submits that any digital photograph, by its nature, will appear pixelated if sufficiently magnified. Applicant notes that according to Examination Guide 3-19, it is only suggestive of alteration if "The image includes pixelization around the mark," but in this case there is no pixelization around the mark that is any different than throughout the rest of the image (at such magnification that any such pixelization would be visible at all). Applicant notes that the additional photograph submitted herewith further supports that the entire set of digital photographs are bona fide and unaltered, as demonstrated by the way the shadow falls across the edge of the side of the box bearing the mark, inside the outer carton. Applicant further submits the attached evidence (website print outs) which demonstrate that the product in question was first made available for sale in March, 2020, and which also demonstrates concurrent advertising of the product with the mark. Applicant notes that the product is a prescription-only drug product and as a result it is not sold in a manner in which the product is displayed for retail sale directly by consumers. As a result, the first sale in commerce is from the drug manufacturer to a distributor, from whom the product is further sold to retail pharmacies for behind-the-counter sales. Applicant's specimens show packaging of the product bearing the mark for shipping of the product from the manufacturer to the distributors in interstate commerce, ahead of re-sale to pharmacies.

EVIDENCE
Evidence has been attached: Applicant submits a printout of a website advertising the product and including the mark, and a printout of a press release announcing the availability of the product and including a photograph of the packaging bearing the mark. The advertisement website and press release website URLs are, respectively, http://www.capylta.com, and http://ir.intracellulartherapies.com/news-releases/news-release-details/intra-cellular-therapies-announces-availability-caplytatm. Both websites were last accessed on 7/13/2020.
Original PDF file:
evi_26018a4031a43bd97ae74 2e59c5b2-2020071312172840 9911_._APLYTA___lumateper one__for_Adult_Patients_w ith_Schizophrenia.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_26018a4031a43bd97ae74 2e59c5b2-2020071312172840 9911_._IT-US_Specimen_CAP LYTA___lumateperone____Pa tient_Information.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical preparations for the treatment of central nervous system diseases and disorders
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 03/20/2020 and first used in commerce at least as early as 03/20/2020.


Proposed:
Class 005 for Pharmaceutical preparations for the treatment of central nervous system diseases and disorders

Deleted Filing Basis: 1(b)
In International Class 005, the mark was first used at least as early as 03/20/2020 . and first used in commerce at least as early as 03/20/2020 .

Applicant hereby submits one(or more) specimen(s) for Class 005. The specimen(s) submitted consists of An additional speciment is submitted, a digital photograph of product packaging bearing the mark..
"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
Correspondence Information (current):
      Cory Poker
      PRIMARY EMAIL FOR CORRESPONDENCE: file@hoxpat.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cory@hoxpat.com

The docket/reference number is TM-01-IT-DES.
Correspondence Information (proposed):
      Cory Poker
      PRIMARY EMAIL FOR CORRESPONDENCE: file@hoxpat.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): cory@hoxpat.com

The docket/reference number is TM-01-IT-DES.

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: /Cory Poker/      Date: 07/13/2020
Signatory's Name: /Cory Poker/
Signatory's Position: Attorney of Record, New Jersey Bar member
Signatory's Phone Number: 973-912-5232


Response Signature
Signature: /Cory Poker/     Date: 07/13/2020
Signatory's Name: Cory Poker
Signatory's Position: Attorney of Record, New Jersey Bar Member

Signatory's Phone Number: 973-912-5232

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:    Cory Poker
   HOXIE & ASSOCIATES LLC
   SUITE 203
   75 MAIN STREET
   MILBURN, New Jersey 07041
Mailing Address:    Cory Poker
   HOXIE & ASSOCIATES LLC
   SUITE 203
   75 MAIN STREET
   MILBURN, New Jersey 07041
        
Serial Number: 88340176
Internet Transmission Date: Mon Jul 13 13:08:12 ET 2020
TEAS Stamp: USPTO/ROA-XXXX:XX:XXX:XXXX:XXXX:XXXX:XXX
X:XXXX-20200713130812299047-88340176-740
e8d88df9d623a5efb2fa763c0589b7b49775a661
a6b94a4ccda61d2c8c14f2f-N/A-N/A-20200713
121728409911