NOTE TO THE FILE
SERIAL NUMBER: 88398828
DATE: 07/30/2019
NAME: egermick
NOTE:
Discussed file with
Attorney/Applicant via:
X phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPS
On 19/07/2019, at 8:19 AM, Chalmers, Jill <jill.chalmers@bryancave.com> wrote:
In response to your voice message of today, you can charge USPTO Deposit Account No. [REDACTED] for the new application fees for the addition of Class 5 to each of the referenced applications. The addition of the word “custom” to the description of the Class 40 services for each application is fine, so that the wording would read: “Production of custom pharmaceuticals for others.”
I understand that you will issue Examiner’s Amendments for these applications. Thank you.
Best regards,
Jill
JILL CHALMERS
Partner
BRYAN CAVE LEIGHTON PAISNER LLP - Colorado Springs, CO USA
jill.chalmers@bclplaw.com
T: +1 719 381 8427
From: Chalmers, Jill
Sent: Tuesday, July 16, 2019 2:40 PM
To: 'Germick, Edward'
Cc: Cope, Judi; Kerkow, Dee
Subject: RE: U.S. TRADEMARK APPLICATION NO. 88398828 (PARSOLEX)
Edward,
Following on from my message below about the pending applications 88398828 (PARSOLEX) and 88398819 (PARSOLEX GMP CENTER),
For the “production of pharmaceuticals” wording, our client would like to amend to:
Production of pharmaceuticals for others (class 40), and
Pharmaceuticals for the treatment of infectious diseases (class 5)
Can be effected by means of Examiner’s Amendments along with the other issues?
Best regards,
JIll
JILL CHALMERS
Partner
BRYAN CAVE LEIGHTON PAISNER LLP - Colorado Springs, CO USA
jill.chalmers@bclplaw.com
T: +1 719 381 8427
From: Chalmers, Jill
Sent: Tuesday, July 16, 2019 12:53 PM
To: 'Germick, Edward'
Cc: Cope, Judi; Kerkow, Dee
Subject: RE: U.S. TRADEMARK APPLICATION NO. 88398828 (PARSOLEX)
Edward,
Are these two applications still on your desk 88398828 (PARSOLEX) 88398819 (PARSOLEX GMP CENTER)?
If so, I have substitute language for the first clause that the client would like to amend to in Class 40 and also add Class 5. Do we need to wait for the Office Actions or can you still effect Examiner’s Amendments?
Best,
Jill
JILL CHALMERS
Partner
BRYAN CAVE LEIGHTON PAISNER LLP - Colorado Springs, CO USA
jill.chalmers@bclplaw.com
T: +1 719 381 8427
From: Chalmers, Jill
Sent: Tuesday, July 09, 2019 2:57 PM
To: 'Germick, Edward'
Cc: Cope, Judi; Kerkow, Dee
Subject: RE: U.S. TRADEMARK APPLICATION NO. 88398828 (PARSOLEX)
Edward,
I received your voice message and have not called you back since I need additional information from our client contact.
I think (but am confirming) that the PARSOLEX mark will be used both in the production of pharmaceuticals for others, but also for the separately branded pharmaceuticals that the Applicant will provide. I’m not 100% sure here, so am checking.
I am not sure if the PARSOLEX GMP mark will be used only in the production of pharmaceuticals for others, or if it is also going to be used on pharmaceuticals that the Applicant produces itself.
Jill
JILL CHALMERS
Partner
BRYAN CAVE LEIGHTON PAISNER LLP - Colorado Springs, CO USA
jill.chalmers@bclplaw.com
T: +1 719 381 8427
From: Chalmers, Jill
Sent: Monday, July 08, 2019 4:26 PM
To: 'Germick, Edward'
Cc: Cope, Judi; Kerkow, Dee
Subject: RE: U.S. TRADEMARK APPLICATION NO. 88398828 (PARSOLEX)
Edward,
Thank you for your message. I have had an opportunity to talk with my client contact about the issues with respect to the “production of pharmaceuticals” wording. The client will use the PARSOLEX mark both in connection with the production of pharmaceuticals to treat a wide variety of diseases and/or conditions and also for the custom production of pharmaceuticals for others.
We have not had a great deal of time to fully think through the possible amendment to this clause given your deadline of tomorrow, but I wondered if you would accept language something along the lines of:
Production of pharmaceuticals for the treatment of infectious diseases, deficiency diseases, genetic and hereditary diseases and physiological diseases
If so, can you let me know and I will run it by the client contact and then have you issue an Examiner’s Amendment? If not, we will need more time to fully think this through so will need for you to issue an Office Action on this one.
I’ll look forward to hearing from you!
Best,
Jill
JILL CHALMERS
Partner
BRYAN CAVE LEIGHTON PAISNER LLP - Colorado Springs, CO USA
jill.chalmers@bclplaw.com
T: +1 719 381 8427
From: Germick, Edward [mailto:Edward.Germick@USPTO.GOV]
Sent: Monday, July 08, 2019 9:16 AM
To: Chalmers, Jill
Subject: U.S. TRADEMARK APPLICATION NO. 88398828 (PARSOLEX)
Dear Ms. Chalmers,
I am the Trademark Examining Attorney at the U.S. Patent and Trademark Office examining your application for 88398828 (PARSOLEX). I have identified the following issue with your application:
Amendment to Identification of Services Required: The Identification of Services in the application lists “Production of pharmaceuticals; custom manufacture of pharmaceuticals for others; custom manufacture of pharmaceuticals, namely, formulation of pharmaceuticals for others.”
The wording “Production of pharmaceuticals” in the identification of services is indefinite and must be amended or deleted depending upon whether applicant is producing its own drugs. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Suggestions for acceptable wording are:
Production of pharmaceuticals for {specify disease or condition to be prevented or treated or the health goal to be achieved}
OR
Custom production of pharmaceuticals for others (which can be deleted because it is basically the same thing as the second entry in the ID)
If the suggested wording is not accurate, or if you have other wording you wish to use, please contact me. My contact information is below.
If that wording is accurate and you want me to us it, please let me know and I can make the change via an Examiner’s Amendment so that the application may proceed toward registration.
If possible, please provide me with a response by July 9, 2019.
Very truly yours,
/EJG/
Edward J. Germick
Examing Attorney
Law Office 102
(571) 272-5862
ONLINE FILINGS:
http://www.gov.uspto.report/teas/index.html
Please note that all relevant e-mail communications will be placed in the official application record. Although the trademark examining attorney may provide additional explanation pertaining to the application, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.