To: | Proteostasis Therapeutics, Inc. (TMadmin@goodwinlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88361172 - PTI - PRS-603 |
Sent: | July 19, 2019 06:20:32 PM |
Sent As: | ecom109@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88361172
Mark: PTI
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Correspondence Address: |
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Applicant: Proteostasis Therapeutics, Inc.
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Reference/Docket No. PRS-603
Correspondence Email Address: |
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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: July 19, 2019
This application was approved for publication on June 26, 2019. See 37 C.F.R. §2.80. However, approval of the application has been withdrawn to address the issue(s) below. See TMEP §706.01. The trademark examining attorney apologizes for any inconvenience this may cause applicant.
SEARCH OF OFFICE’S DATABASE OF MARKS
The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).
IDENTIFICATION OF GOODS -INDEFINITE
The wording identified below in the identification of goods is indefinite and must be clarified because it does not describe the actual nature of the goods and/or services offered. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Applicant may substitute the following wording, if accurate:
International Class 5: “Pharmaceutical preparations for the treatment of cardiovascular, hematological, immunological, dermatological, central nervous system, motor neuron, cancerous, gastrointestinal, orthopedic, oncological, inflammatory, infectious, viral, asthmatic, allergic, metabolic, diabetic, transplant rejection, ophthalmic conditions, and diseases, syndromes and disorders in the nature of {identify the specific nature of the diseases, syndromes and disorders, e.g., immune system related diseases and disorders}; medical diagnostic assays for testing of body fluids; medical diagnostic assays for {identify the specific nature of the medical diagnostic assays e.g., for testing body fluids} for diagnosing cardiovascular, hematological, immunological, dermatological, central nervous system, motor neuron, cancerous, gastrointestinal, orthopedic, oncological, inflammatory, infectious, viral, respiratory, asthmatic, allergic, metabolic, diabetic, transplant rejection, ophthalmic conditions, and diseases, syndromes and disorders in the nature of {identify the specific nature of the diseases, syndromes and disorders, e.g., immune system related diseases and disorders}; medical diagnostic assays {identify the specific nature of the medical diagnostic assays, e.g., for testing body fluids} for testing body responses to therapy”.
While the suggested wording above provides examples of wording that meets the Office’s requirements for specificity, it does not provide every possible acceptable identification. Applicant must ensure that any identification submitted is accurate, concise, properly classified, and does not include goods or services not included in the identification submitted with the application as originally filed. Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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) 5 will be deleted from the application: “Pharmaceutical preparations for the treatment of cardiovascular, hematological, immunological, dermatological, central nervous system, motor neuron, cancerous, gastrointestinal, orthopedic, oncological, inflammatory, infectious, viral, asthmatic, allergic, metabolic, diabetic, transplant rejection, ophthalmic conditions, diseases, syndromes and disorders; medical diagnostic assays for diagnosing cardiovascular, hematological, immunological, dermatological, central nervous system, motor neuron, cancerous, gastrointestinal, orthopedic, oncological, inflammatory, infectious, viral, respiratory, asthmatic, allergic, metabolic, diabetic, transplant rejection, ophthalmic conditions, diseases, syndromes and disorders; medical diagnostic assays for testing body responses to therapy”. The application will then proceed with the following goods and/or services in International Class(es) 5 only: “medical diagnostic assays for testing of body fluids”. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
Carolyn Wlodarczyk
/Carolyn Wlodarczyk/
Trademark Examining Attorney
Law Office 109
571-272-9273
carolyn.wlodarczyk@uspto.gov
RESPONSE GUIDANCE