To: | Paratek Pharmaceuticals, Inc. (ktoms@mccarter.com) |
Subject: | U.S. Trademark Application Serial No. 88438211 - NUZYRA - 124418-95401 |
Sent: | September 11, 2019 06:52:25 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88438211
Mark: NUZYRA
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Correspondence Address:
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Applicant: Paratek Pharmaceuticals, Inc.
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Reference/Docket No. 124418-95401
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: September 11, 2019
The examining attorney has received and reviewed the applicant’s Response to Office Action dated August 22, 2019. The examining attorney is issuing this new Non-Final Office so that the applicant may address an additional issue with the International Class 44 specimen of use. As noted below, issues still exist regarding the Class 44 identification of goods. At this time, the specimen refusal for International Class 44 is continued and maintained.
All issues have been resolved but the following.
Activities are Not Registrable According to Specimen – International Class 44:
The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:
(1) A service is a real activity, not an idea, concept, process, or system.
(2) A service is performed primarily for the benefit of someone other than the applicant.
(3) A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.
TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).
In this case, the description set forth in the identification of services is as follows: “Providing information in the fields of health, medicine, and pharmaceuticals for the treatment of infectious disease; Medical information services, namely, providing information to physicians, healthcare professionals, and patients on the topics of health issues, pharmaceutical products, and health awareness in the field of infectious diseases; Health care services, namely, providing patient access programs to provide eligible patients with streamlined access to drugs; Dispensing of pharmaceuticals; Providing an interactive internet website for medical professionals and medical patients featuring cumulative medical information that enables users to enter, access, track, and monitor health and medical information” in International Class 44. The specimen indicates that these activities are not registrable services because it is clear from the specimens that NUZYRA is a pharmaceutical preparation. The use of the mark only indicates its use as a source identifier for pharmaceutical and not Class 44 services. Specifically, the service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal goods of pharmaceuticals.
Identification of Goods and Services – Clarification Required:
Specifically, a website that enables action by the consumer is a technology/computer service in International Class 42. In order for the services to be a health service in Class 44, the website can merely provide the service of providing medical information.
Therefore, applicant may respond by (1) adding International Class 42 to the application and reclassifying these services in the proper international class, (2) deleting “that enables users to enter, access, track, monitor and generate health and medical information” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Please note: In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font. Applicant may adopt the following identification of goods and services, if accurate:
Class 36: “Insurance consultancy services in the field of health; Insurance services, namely, insurance eligibility review and verification and consultation in the pharmaceutical industry; Pharmaceutical benefit management services; Insurance administration services, namely, assisting others with applying for insurance benefits”
Class 39: “Transportation of goods, namely, antibiotics; delivery and storage of goods; delivery of pharmaceuticals”
Class 42: “Providing an interactive internet website for medical professionals and medical patients featuring cumulative medical information that enables users to enter, access, track, and monitor health and medical information”
Class 44: “Providing information in the fields of health, medicine, and pharmaceuticals for the treatment of infectious disease; Medical information services, namely, providing information to physicians, healthcare professionals, and patients on the topics of health issues, pharmaceutical products, and health awareness in the field of infectious diseases; Health care services, namely, providing patient access programs to provide eligible patients with streamlined access to drugs; Dispensing of pharmaceuticals; Providing an internet website for medical professionals and medical patients featuring medical information”
Applicant’s goods and/or services 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).
If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 41, 42, 43 and 44. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
Multiple Class Application – Advisory:
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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 2 class(es). 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).
See 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.
Specimen Refusal – Insufficient Relationship to Services – Class 44 – Continued and Maintained:
Registration is refused because the specimen does not show use in commerce of the applied-for mark with the identified services in International Class 44. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(f)(ii), (g)(i).
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
Dominic R. Fathy
Trademark Examining Attorney
Law Office 104
571-272-8801
dominic.fathy@uspto.gov
RESPONSE GUIDANCE