To: | SUN PHARMA ADVANCED RESEARCH COMPANY LTD ETC. (general.ip.mailbox@sunpharma.com) |
Subject: | U.S. Trademark Application Serial No. 88444364 - SPARC - SPTM-043US |
Sent: | January 07, 2020 11:24:09 AM |
Sent As: | ecom108@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. 88444364
Mark: SPARC
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Correspondence Address: |
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Applicant: SUN PHARMA ADVANCED RESEARCH COMPANY LTD ETC.
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Reference/Docket No. SPTM-043US
Correspondence Email Address: |
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FINAL OFFICE ACTION
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: January 07, 2020
This Office action is in response to applicant’s communication filed on December 16, 2019. The identification requirement is now made FINAL. 37 C.F.R. §2.63(b).
FINAL Requirement – Identification
All identifications must be precise and identify the services with particularity using common or commercial names. TMEP §1402.01. This requirement is now made FINAL.
Current Identification
Applicant’s current identification reads (applicant should note that the wording requiring amendment, as discussed further below, has been highlighted in bold font):
International Class 042: scientific and technological services, namely, scientific and technological research and design for pharmaceuticals, medicines, and substances; medicinal and pharmaceutical research and development.
The identification is unacceptable as presently worded because certain services are worded indefinitely, need clarification and/or have been misclassified. In the identification, applicant must use the common commercial or generic names for the services, be all-inclusive, as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms, then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
Here, the wording “scientific and technological services, namely, scientific and technological research and design for … substances” is unclear because “substances” could refer to the design and research regarding anything. Attached definitional evidence shows that “substances” are things that take up space or are important. The term “substances” in the identification, therefore, must be modified to indicate what type of substances are intended.
Suggested Amendment
Applicant may adopt the following identification, if accurate (applicant should note that the suggested amended language appears in bold font, and that the applicant must supply the requisite information detailed within the brackets {} and then delete the brackets and the informational matter within):
International Class 042: scientific and technological services, namely, scientific and technological research and design for pharmaceuticals, medicines, and _______ {specify the type of substances, e.g., medicinal} substances; medicinal and pharmaceutical research and development.
Limitation on Amendments
While an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(a); TMEP §1402.06. Trademark Rule 2.71(a), 37 C.F.R. §2.71(a), restricts amendments to the identification of goods or services as follows, “The applicant may amend the application to clarify or limit, but not to broaden, the identification of goods and/or services.” This rule applies to all applications.
Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
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.
This requirement is now made FINAL.
Response Guidelines
If applicant does not respond to this Office action within the six-month period for response, the following services will be deleted from the application: “scientific and technological services, namely, scientific and technological research and design for pharmaceuticals, medicines, and substances.”
The application will then proceed with the following services only: “medicinal and pharmaceutical research and development.” See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Andrea R. Hack/
Andrea Hack
Examining Attorney
Law Office 108
571-272-5413
andrea.hack@uspto.gov
RESPONSE GUIDANCE