Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 10, 2019

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  The voluntary amendment filed on June 16, 2109, which includes a signed declaration is noted.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

U.S. Counsel Rule

 

Attorney bar information required.  Applicant’s attorney must provide the following bar information:  (1) his or her bar membership number, if the bar provides one; (2) the name of the U.S. state, commonwealth, or territory of his or her bar membership; and (3) the year of his or her admission to the bar.  37 C.F.R. §2.17(b)(3).  This information is required for all U.S.-licensed attorneys who are representing trademark applicants at the USPTO.  Id.  If the attorney’s bar does not issue bar membership numbers, applicant must state this for the record.  See id.

 

To provide bar information.  Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section.  See 37 C.F.R. §2.17(b)(1)(ii).  Bar information provided in any other area of the form will be viewable by the public in USPTO records.

 

Identification of Goods and Services

 

The examining attorney may require an amendment of the identification language to accurately describe the goods and services.  In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980), aff’g 204 USPQ 261 (TTAB 1979). 

 

Specific wording in the identification must be clarified as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

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.

 

 

“Active plant agents [term “agents” is indefinite as applied to the term “plant”] and plant extracts for [specify field of research, e.g., medical] research purposes” – Class 1;

 

“Nutritional additives for medical purposes in the nature of natural food extracts derived from herbs, fruits, spices, vegetables, algae, fungi or in the nature of minerals, trace-elements, vitamins, micronutrients [wording “or in the nature of minerals, trace-elements, vitamins, micronutrients” is indefinite and does not identify food items];

 

a full line of medicines, particularly phytopharmaceuticals for the treatment [specify disease or physical condition, e.g., asthma, chest congestion, or provide evidence that the mark is used in connection with a full line of medicines];

 

Note:  According to TMEP §1402.03(c), applicant must provide evidence that it uses the mark in connection with phytopharmaceuticals to treat diseases or health problems in all chapters in the World Health Organization (“WHO”) International Statistical Classification of Diseases and Related Health Problems.  See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products). See also TMEP §904.01(a).

 

active plant agents and plant extracts for medical use [wording “active plant agents and plant extracts for medical use” is indefinite];

 

a full line of pharmaceutical and veterinary preparations for the treatment of human and animal diseases;

 

Note:  According to TMEP §1402.03(c), applicant must provide evidence that it uses the mark in connection with pharmaceuticals pharmaceutical and veterinary preparations to treat diseases or health problems in all chapters in the World Health Organization (“WHO”) International Statistical Classification of Diseases and Related Health Problems.  See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products). See also TMEP §904.01(a).

 

sanitary preparations for medical use;

 

dietetic food, namely, herbs, fruits, spices, vegetables, algae, fungi or in the nature of minerals, trace-elements, vitamins, micro-nutrients [wording “or in the nature of minerals, trace-elements, vitamins, micro-nutrients” is indefinite and does not identify food] adapted for medical use, food for babies;

 

adjuvants for medical purposes; amino acids for medical purposes; anaesthetics; analgesics; vermifuges; antibiotics;

 

a full line of biological preparations for the treatment of human and animal diseases;

 

Note:  According to TMEP §1402.03(c), applicant must provide evidence that it uses the mark in connection with biological preparations to treat diseases or health problems in all chapters in the World Health Organization (“WHO”) International Statistical Classification of Diseases and Related Health Problems.  See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products). See also TMEP §904.01(a).

 

chemical active components for medical use, namely, chemical preparations for treating genetic conditions, rare diseases and conditions, namely, for {specify diseases and conditions to be treated};

 

chemical reagents for medical or veterinary purposes;

 

a full line of chemico-pharmaceutical preparations for the treatment of human and animal diseases;

 

Note:  According to TMEP §1402.03(c), applicant must provide evidence that it uses the mark in connection with chemico-pharmaceutical preparations to treat diseases or health problems in all chapters in the World Health Organization (“WHO”) International Statistical Classification of Diseases and Related Health Problems.  See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products). See also TMEP §904.01(a).

 

a full line of ferments for pharmaceutical purposes;

 

hormones for medical purposes;

 

a full line of medical infusions [wording “medical infusions” is too broad—specify type of infusions] for the treatment of human and animal diseases;

 

medicines for the treatment of gum disease, caries, toothache or [“or” renders this part indefinite—substitute with “and”] wound healing of the gums;

 

a full line of medicines for the treatment of human diseases;

 

Note:  According to TMEP §1402.03(c), applicant must provide evidence that it uses the mark in connection with medicines to treat diseases or health problems in all chapters in the World Health Organization (“WHO”) International Statistical Classification of Diseases and Related Health Problems.  See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999) (evidence of use on only three products does not justify registration of the mark for a full line of those products). See also TMEP §904.01(a).

 

radiological contrast substances for medical purposes; steroids” – Class 5;

 

“Surgical, medical, dental and veterinary apparatus and instruments [wording “medical, dental and veterinary apparatus and instruments” is indefinite—identify type of instruments using online ID Manual];

 

apparatus, devices and instruments for treating genetic conditions, rare diseases and conditions [wording “apparatus, devices and instruments for treating genetic conditions, rare diseases and conditions” is indefinite—must specify the goods using common commercial names];

 

artificial limbs, eyes and teeth;

 

orthopedic articles[,] namely, [specify each article by its common commercial name];

 

suture materials;

 

therapeutic and assistive devices adapted for the disabled[,] namely, [specify, e.g., motion sensing apparatus and assisted exercise machine for the rehabilitation of {indicate body part being rehabilitated, e.g., hands and wrists, feet and ankles, knees} affected by neuromuscular diseases, disorders, or injuries for home or clinical use];

 

massage apparatus;

 

apparatus, devices and articles for nursing infants[,] namely, [specify each goods]; sexual activity apparatus, devices and articles [wording “sexual activity apparatus, devices and articles” is indefinite—describe such goods using the online ID Manual]” – Class 10;

 

“Scientific research, technological development of new products for others;

 

medical research;

 

scientific and industrial research in the field [fields] of biotechnology, biology, rare diseases and conditions, genetic conditions and/or [substitute indefinite “and/or” with “and”] treatments of rare diseases and conditions;

 

industrial research in the field of biomedical and phytopharmaceutical engineering;

 

services of a pharmaceutical laboratory [substitute wordy “services of a pharmaceutical laboratory” with “pharmaceutical laboratory services”]; pharmaceutical research and development;

 

scientific services, namely, development of drugs, active agents and vaccines; scientific services, namely, development of food supplements; development and preparation [wording “and preparation” is indefinite] of pharmaceutical preparations and medicines and plant extracts for use in pharmaceutical preparations and medicines” – Class 42;

 

“Consulting on medicines [wording “Consulting on medicines” is indefinite—specify nature of consulting further]” – Class 44.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Foreign Registration

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

 

 

 

 

 

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  

 

 

/Christopher Buongiorno/

Christopher Buongiorno, Attorney

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 10, 2019 for

U.S. Trademark Application Serial No. 88468906

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Christopher Buongiorno/

Christopher Buongiorno, Attorney

United States Patent & Trademark Office

Law Office 102

(571) 272-9251

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 10, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”