To: | SEBELA INTERNATIONAL BERMUDA LIMITED (eteas@gbpatent.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88371925 - SEBELA PHARMACEUTICALS - T57551 |
Sent: | 6/14/2019 3:48:57 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88371925
MARK: SEBELA PHARMACEUTICALS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: SEBELA INTERNATIONAL BERMUDA LIMITED
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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: 6/14/2019
The referenced application has been reviewed by the assigned trademark examining attorney. 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).
INFORMALITIES
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.
IDENTIFICATION OF GOODS
The wording “Pharmaceutical and medicated preparations, namely, for use in nephrology, neurology, oncology, urology, andrology and cardiology, and for use in the treatment of nasal allergies, respiratory allergies, and for use as anti-infectives; contraceptive preparations; dietary and nutritional supplements; prenatal vitamins; pharmaceutical products for the treatment of bone diseases; preparations for the suppression of hormones; pharmaceutical preparations and substances directed to women's health for use in the treatment, alleviation and prevention of overactive bladder, female sexual dysfunction, infertility, endometriosis, vaginitis, osteoporosis/osteopenia, pelvic pain, dyspareunia, and candidiasis; all of the aforesaid goods not for use as a product name of a pharmaceutical product” in the identification of goods is indefinite and must be clarified because it does not put consumers on notice as to the precise nature of applicant’s goods. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Applicant may substitute the following wording, if accurate:
Class 5 - Pharmaceutical and medicated preparations, namely, (please delete , namely,) for use in nephrology, neurology, oncology, urology, andrology and cardiology, and for use in the treatment of nasal allergies, respiratory
allergies, and for use as anti-infectives; contraceptive preparations; dietary and nutritional supplements; prenatal vitamins; pharmaceutical products for the treatment of bone diseases; preparations
for the suppression of hormones; pharmaceutical preparations and substances directed to women's health for use in the treatment, alleviation and prevention of overactive bladder, female sexual
dysfunction, infertility, endometriosis, vaginitis, osteoporosis/osteopenia, pelvic pain, dyspareunia, and candidiasis; all of the aforesaid goods not for use as a product name of a pharmaceutical
product
Please note: The text in italics, bold and/or underscored found in the proposed amended identification indicates either directions on how to make the identification sufficiently definite or are examples of appropriate amended language which replaced language currently in the identification.
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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.
DISCLAIMER
In this case, applicant must disclaim the wording “PHARMACEUTICALS” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The identification of goods indicates that the term “PHARMACEUTICALS” is generic of the goods. Therefore, applicant must disclaim the generic term “PHARMACEUTICALS”.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “PHARMACEUTICALS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
GENERAL INQUIRY
Applicant must explain whether “SEBELA” has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within applicant’s industry. See 37 C.F.R. §2.61(b); TMEP §814. Applicant must also explain whether this wording identifies a geographic place. See 37 C.F.R. §2.61(b); TMEP §814.
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions: With reference to the identified goods, what is the significance of the term SEBELA? Is SEBELA a surname? Is SEBELA a given name?
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
TRANSLATION
The following English translation is suggested:
The English translation of “SEBELA” in the mark is “_______” [specify the English translation of the wording, if any]. TMEP §809.03. _______
On the other hand, if the wording “SEBELA” does not have meaning in a foreign language, applicant must state the following:
The wording “SEBELA” has no meaning in a foreign language.
INSTRUCTION FOR PRO SE APPLICANT
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
CLOSING
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.
/William H. Dawe, III/
Examining Attorney
Law Office 108
(571) 272-9337 voice
(571) 273-9337 fax
Bill.Dawe@USPTO.GOV (not for fomal responses)
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.