To: | Paratek Pharmaceuticals, Inc. (ktoms@mccarter.com) |
Subject: | U.S. Trademark Application Serial No. 88438211 - NUZYRA - 124418-95401 |
Sent: | November 08, 2019 06:45:10 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 08, 2019
This Final Office Action is written in response to the applicant’s responses to office action letter dated August 13, 2019 and September 11, 2019. See TMEP §§713.02, 714.04.
The following requirement(s) have been withdrawn: “Specimen Refusal – Insufficient Relationship to Services.” See TMEP §§713.02, 714.04.
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 (“NUZYRA is a tetracycline class antibacterial”). The use of the mark only indicates its use as a source identifier for pharmaceutical and not Class 44 services.
Applicant argues “the specimen properly shows use of the mark in connection with providing information to physicians, healthcare professionals, and patients. Specifically, the website shown in the Class 44 specimen is used by doctors, patients, and consumers to gain access to safety information, usage and dosage instructions, and the indications is approved to treat.”
As established in the third criteria set forth above, “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.” As shown by the attached copy of the applicant’s U.S. Reg. No. 5741452, NUZYRA is a pharmaceutical preparation. The function of the advertising specimen provided by the applicant is to inform consumers and medical practitioners of the efficacy and issues regarding the pharmaceutical. The provision of this information is merely incidental or necessary to applicant’s pharmaceutical business and is not a separate registrable service.
Accordingly, this refusal is made Final.
Identification of Goods and Services – Requirement Made Final:
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 4 classes; however, applicant submitted a fee(s) sufficient for only 3 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.
Options for Response to Final Office Action:
How to respond. Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
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.
/Dominic R. Fathy/
Trademark Examining Attorney
Law Office 104
571-272-8801
dominic.fathy@uspto.gov
RESPONSE GUIDANCE