To: | CSL Behring AG (swoldow@sgrlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88365312 - PRIVIGEN - 034845. |
Sent: | 6/18/2019 9:15:04 PM |
Sent As: | ECOM125@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88365312
MARK: PRIVIGEN
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CORRESPONDENT ADDRESS: SMITH, GAMBRELL & RUSSELL, LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: CSL Behring AG
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/18/2019
The referenced application 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(a), 2.65(a); TMEP §§711, 718.03.
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).
Summary of Issues:
New Drawing of the Mark Required
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
Color Drawing and No Color Claim – Clarification Required
Further, applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
Applicant may respond to this requirement by satisfying one of the following:
(1) If color is not a feature of the mark, applicant must submit a black-and-white drawing of the mark to replace the color drawing. See TMEP §807.07(a)(i). However, any other amendments to the drawing will not be accepted if they materially alter the mark. 37 C.F.R. §2.72; see TMEP §§807.14 et seq. Applicant must also submit a revised description of all literal and design elements in the mark, deleting any reference to color, if appropriate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following description is suggested, if accurate: “The mark consists of the stylized wording “PRIVIGEN” below a miscellaneous oblong design.”
(2) If color is a feature of the mark, applicant must submit a statement (a) listing all the colors that are claimed as a feature of the mark and (b) describing all the literal and design elements in the mark that specifies where each color appears in those elements. 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d). The following color claim and description are suggested, if accurate:
Color claim: “The colors green, white and black are claimed as a feature of the mark.”
Description: “The mark consists of the stylized wording “PRIVIGEN” in black below a miscellaneous oblong design in green and white. All other instances of the color white in the mark represent background and/or transparent areas only and are not features of the mark.”
See TMEP §807.07(b).
Classification and Identification of Services
The wording “Administration of a program to provide financial assistance, and/or free product to financially needy populations” in the identification of services for International Class 35 is indefinite and must be clarified because it does not make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The identification for educational services in International Class 41 is indefinite because it does not indicate the type of educational service provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, applicant could be providing seminars on a particular topic, analyzing educational test scores and data for others, or providing educational testing. Applicant must specify the nature of the educational service being provided. If applicant is providing classes or similar group learning activities, the identification must specify (1) the form of the activity (e.g., classes, seminars, workshops) and (2) the subject matter or field (e.g., retirement benefits, nutrition, business management).
The wording “nurse supports services” in the identification of services for International Class 41 is indefinite and must be clarified because it does not make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “providing information for patients about the stages of diseases, illnesses and conditions” in the identification of services for International Class 41 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass providing information in the field of education in Class 41, and providing educational information about healthcare or providing medical information in class 44.
The wording “medical consultation directed toward provision of letters of medical necessity or appeal of denied insurance claims” in the identification of services for International Class 44 is indefinite and must be clarified because it does not make clear what the services are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The identification of services for International Classes 36 and 45 is acceptable as currently worded.
Applicant may substitute the following wording, if accurate:
Class 035: Administration of a program for financially needy populations for enabling participants to obtain financial assistance in the nature of discounts on goods and/or free product samples; Providing information regarding medical billing support services, namely, medical records coding services for others in the nature of assignment of diagnostic and procedural codes for purposes of reimbursement from insurance; Business administration of patient reimbursement programs
Class 036: No changes suggested. Identification acceptable as currently worded.
Class 041: Educational services, namely, conducting programs and training courses for nurses in the field of {indicate subject matter, e.g. awareness and consequences of immunodeficiency and neurological disorders, the risk of hemolysis occurring in certain patients receiving immunoglobulin infusion therapy and the identification and treatment with intravenous immunoglobulin therapy of patients in whom hemolysis may develop}; providing information for patients in the field of education about the stages of diseases, illnesses and medical conditions
Class 044: Providing medical information regarding immunoglobulin, immunodeficiency and neurological disorders, and treatment of same using immunoglobulin; medical consultations provided to patients requiring letters of medical necessity and patients requiring medical letters for the purpose of appealing denied insurance claims; providing medical information regarding dosing and infusion information for immunoglobulin, immunodeficiency and neurological disorders; providing medical information to patients about the stages of diseases, illnesses and medical conditions
Class 045: No changes suggested. Identification acceptable as currently worded.
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.
Response Guidelines
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. §§2.62(c), 2.191; TMEP §§304.01-.02, 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.
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.
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.