Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88444357 SPARC (Stylized and/or with Design, see http://uspto.report/TM/88444357/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Thank you for your letter in connection with the above application. We write in response to the request for Applicant to address an identification and classification requirement. Specifically, the Examining Attorney has suggested an amendment to Applicant's identification and an additional classification. The current identification/classification is: International Class 035: marketing, sales and distribution services for the benefit of the distributors, stockists, wholesalers, retailers of the drugs, pharmaceutical, cosmetics and dietary products, surgical apparatus and instruments, scientific apparatus and instruments, medical apparatus and instruments and for the benefit of business relating to scientific and technological research and development. The Examining Attorney has recommended the following Suggested Amendment: International Class 035: Advertising and marketing of pharmaceuticals, cosmetics, dietary products, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments; retail store services featuring pharmaceuticals, cosmetics, dietary products, surgical apparatus and instruments, scientific apparatus and instruments and medical apparatus and instruments; distributorship services featuring pharmaceuticals, cosmetics, dietary products, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments. International Class 039: Distribution services, namely, delivery of pharmaceuticals, cosmetics, dietary products, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments. Applicant appreciates the Examining Attorneys suggestions and accepts and agrees to the Examining Attorney's suggested amendment to the identification for International Class 035, except Applicant seeks to further narrow that identification by deleting "cosmetics, dietary products" and "retail store services." Thus, Applicant's suggests the following amendment to the identification in International Class 035: International Class 035: Advertising and marketing of pharmaceuticals, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments; distributorship services featuring pharmaceuticals, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments. Applicant appreciates the Examining Attorney's suggestions as to additional classes, but agrees not to proceed with additional classes. However, in light of the fact that Applicant has agreed to delete the related references that previously were included in its International Class 035 identification as shown by the agreed upon amendment, above, its decision not to accept the suggested additional classes further narrows, and does not broaden, its application. We understand that this satisfies the Examining Attorney's requirements and look forward to the application proceeding to registration. Please do not hesitate to contact me if you require any additional information or documentation to assist in your review.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for marketing, sales and distribution services for the benefit of the distributors, stockists, wholesalers, retailers of the drugs, pharmaceutical, cosmetics and dietary products, surgical apparatus and instruments, scientific apparatus and instruments, medical apparatus and instruments and for the benefit of business relating to scientific and technological research and development
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: marketing, sales and distribution services for the benefit of the distributors, stockists, wholesalers, retailers of the drugs, pharmaceutical, cosmetics and dietary products, surgical apparatus and instruments, scientific apparatus and instruments, medical apparatus and instruments and for the benefit of business relating to scientific and technological research and development; Advertising and marketing of pharmaceuticals, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments; distributorship services featuring pharmaceuticals, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments.Class 035 for Advertising and marketing of pharmaceuticals, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments; distributorship services featuring pharmaceuticals, surgical apparatus and instruments, scientific apparatus and instruments, and medical apparatus and instruments.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Craig Kuchii, Esq.. Craig Kuchii, Esq. of SUN PHARMACEUTICAL INDUSTRIES, INC., is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      US
The docket/reference number is SPTM-042US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com

The applicants proposed attorney information: Craig Kuchii, Esq.. Craig Kuchii, Esq. of SUN PHARMACEUTICAL INDUSTRIES, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      United States
The docket/reference number is SPTM-042US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com

Craig Kuchii, Esq. submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: CRAIG KUCHII, ESQ.. CRAIG KUCHII, ESQ. of SUN PHARMACEUTICAL INDUSTRIES, INC., is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      US
The docket/reference number is SPTM-042US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com; brandprotection@sunpharma.com

The applicants proposed correspondence information: Craig Kuchii, Esq.. Craig Kuchii, Esq. of SUN PHARMACEUTICAL INDUSTRIES, INC., is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      United States
The docket/reference number is SPTM-042US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com; brandprotection@sunpharma.com

SIGNATURE(S)
Response Signature
Signature: /craig kuchii/     Date: 12/16/2019
Signatory's Name: Craig Kuchii
Signatory's Position: Associate VP, Intellectual Property

Signatory's Phone Number: 609-720-5394

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    CRAIG KUCHII, ESQ.
   SUN PHARMACEUTICAL INDUSTRIES, INC.
   INTELLECTUAL PROPERTY DEPT.
   2 INDEPENDENCE WAY
   PRINCETON, New Jersey 08540
Mailing Address:    Craig Kuchii, Esq.
   SUN PHARMACEUTICAL INDUSTRIES, INC.
   INTELLECTUAL PROPERTY DEPT.
   2 INDEPENDENCE WAY
   PRINCETON, New Jersey 08540
        
Serial Number: 88444357
Internet Transmission Date: Mon Dec 16 22:09:06 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191216220906648
988-88444357-7008f8f3b39487f49ab46e2b43d
c8d48592f2f151ff9fd3b2aa81d88d57d24e85d6
-N/A-N/A-20191216215706805656