To: | Kintai Therapeutics, Inc. (cxltrademarks@wolfgreenfield.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88393507 - PEM - V03132000400 |
Sent: | 6/28/2019 9:43:57 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88393507
MARK: PEM
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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: Kintai Therapeutics, Inc.
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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: 6/28/2019
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.
NO CONFLICTING 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:
Class 5 -
In Class 5, applicant’s identification is: “Therapeutic products for the treatment of disease; pharmaceutical preparations for the treatment of disease; therapeutic products to modulate metabolism; pharmaceutical preparations and agents to modulate metabolism; agents that modulate metabolism for scientific and research use; Therapeutic pharmaceuticals for the treatment of disease, namely, autoimmune diseases and disorders, bone and joint diseases and disorders, cancer, cardiovascular diseases and disorders, gastro-intestinal diseases and disorders, hematologic diseases and disorders, infectious diseases, kidney diseases and disorders, lung diseases and disorders, metabolic diseases and disorders, muscle diseases and disorders, nephrology diseases and disorders, neurodegenerative diseases and disorders, neurologic diseases and disorders, ophthalmic disease and disorders, skin diseases and disorders; pharmaceutical preparations for the treatment of disease, namely, autoimmune diseases and disorders, bone and joint diseases and disorders, cancer, cardiovascular diseases and disorders, gastro-intestinal diseases and disorders, hematologic diseases and disorders, infectious diseases, kidney diseases and disorders, lung diseases and disorders, metabolic diseases and disorders, muscle diseases and disorders, nephrology diseases and disorders, neurodegenerative diseases and disorders, neurologic diseases and disorders, ophthalmic disease and disorders, skin diseases and disorders; therapeutic pharmaceuticals for modulating metabolism; pharmaceutical preparations and agents to modulate metabolism; pharmaceutical agents that modulate metabolism for scientific and research use.”
The following wording is unacceptable:
The wording “Therapeutic products for the treatment of disease” is unacceptable as indefinite and overly broad because applicant must specify the common commercial or generic name for the products, which may fall into more than one class, and must specify the disease treated. For example, eye goggles for the treatment of dry eyes is in Class 10, however, pharmaceuticals for the treatment of dry eyes is in Class 5. See below for suggestions.
The wording “pharmaceutical preparations for the treatment of disease” is unacceptable because it is indefinite. Applicant must specify the disease treated. See below for suggestion.
The wording “therapeutic products to modulate metabolism” is unacceptable as indefinite and overly broad because applicant must specify the common commercial or generic name for the products, which may fall into more than one class. For example, pharmaceuticals to modulate metabolism are in Class 5, however, non-pharmaceutical products to modulate metabolism are generally in Class 10. See below for suggestion.
If modifying one of the duplicate entries, applicant may amend it 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. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
The wording “agents that modulate metabolism, for scientific and research use” is indefinite. Applicant must specify the nature of the agents, which are likely pharmaceuticals in Class 5. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 5: Therapeutic products for the treatment of disease, namely, pharmaceutical preparations for the treatment of sexually transmitted diseases; Therapeutic pharmaceuticals for the treatment of disease, namely, autoimmune diseases and disorders, bone and joint diseases and disorders, cancer, cardiovascular diseases and disorders, gastro-intestinal diseases and disorders, hematologic diseases and disorders, infectious diseases, kidney diseases and disorders, lung diseases and disorders, metabolic diseases and disorders, muscle diseases and disorders, nephrology diseases and disorders, neurodegenerative diseases and disorders, neurologic diseases and disorders, ophthalmic disease and disorders, skin diseases and disorders; pharmaceutical preparations for the treatment of disease, namely, autoimmune diseases and disorders, bone and joint diseases and disorders, cancer, cardiovascular diseases and disorders, gastro-intestinal diseases and disorders, hematologic diseases and disorders, infectious diseases, kidney diseases and disorders, lung diseases and disorders, metabolic diseases and disorders, muscle diseases and disorders, nephrology diseases and disorders, neurodegenerative diseases and disorders, neurologic diseases and disorders, ophthalmic disease and disorders, skin diseases and disorders; therapeutic pharmaceuticals for modulating metabolism; pharmaceutical preparations and agents to modulate metabolism; pharmaceutical agents that modulate metabolism for scientific and research use
Class 10: Therapeutic products in the nature of {indicate type of product, i.e. eye goggles} for the treatment of disease, namely, {indicate condition, i.e. dry eyes}; therapeutic products in the nature of {indicate type of product} to modulate metabolism
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
MULTI-CLASS REQUIREMENTS:
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
FEES FOR ADDITIONAL CLASSES:
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@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.