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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88510608 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 101 |
| MARK SECTION |
| MARK |
http://uspto.report/TM/88510608/mark.png |
| LITERAL ELEMENT |
CATNAP |
| STANDARD CHARACTERS |
YES |
| USPTO-GENERATED IMAGE |
YES |
| MARK STATEMENT |
The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) |
| NAME |
Jazz Pharmaceuticals, Inc. |
| STREET |
3170 Porter Drive |
| CITY |
Palo Alto |
| STATE |
California |
| ZIP/POSTAL CODE |
94304 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
| OWNER SECTION (proposed) |
| NAME |
Jazz Pharmaceuticals, Inc. |
| STREET |
3170 Porter Drive |
| CITY |
Palo Alto |
| STATE |
California |
| ZIP/POSTAL CODE |
94304 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
| EMAIL |
tsitzmann@winthrop.com |
| ARGUMENT(S) |
|
As requested, Applicant has amended the application to provide greater clarification regarding the services. Applicant believes the amendment resolves both the clarification and classification
issues raised in the Office Action.
With respect to the Request for Information, Applicant's answers are set forth below.
Question 1:
Explain whether the wording in the mark “CATNAP” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided,
any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
Answer:
The term CATNAP has no meaning or significant in the trade or industry in which Applicant’s services are provided, nor is the term CATNAP a term of art within Applicant’s
Industry.
Question 2
a) Is CATNAP an acronym? If yes, for what does it stand?
CATNAP is not an acronym that is used in Applicant’s industry. However, Applicant adopted the term as an arbitrary mark for Applicant’s services. Applicant did so, in part, to be
suggestive of Children, Adolescents, and Their Partners along with the phrase Narcolepsy Assessment Partnership.
b) Is CATNAP an abbreviation? If yes, for what does it stand?
No.
c) Does CATNAP have any particular meaning in relation to the services?
No, the term CATNAP does not have any meaning in relation to the services. Applicant adopted the arbitrary term with the intention to be able to evoke the suggestive nature
referenced in answer to the Question 2a. However, the term CATNAP itself has no meaning in relation to the services or Applicant’s industry.
d) Does Jazz provide information or medical services related to naps or short sleeps?
No.
|
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
044 |
| DESCRIPTION |
| Medical services, namely, providing a database, website, and registry for entering, collecting, managing, organizing, monitoring, and
sharing health data and information, administering surveys and questionnaires, comparing the effectiveness of different treatments and the impact on patient important outcomes, using the data to
conduct research and analysis; medical services related to sleep disorders, including narcolepsy |
| FILING BASIS |
Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
044 |
| TRACKED TEXT DESCRIPTION |
Medical services, namely, providing a database, website, and registry for entering, collecting,
managing, organizing, monitoring, and sharing health data and information, administering surveys and questionnaires, comparing the effectiveness of different treatments and the impact on patient
important outcomes, using the data to conduct research and analysis; Medical services, namely, providing health and medical data and information via a database or
website; medical services, namely, providing a database and registry featuring patient medical information accessible by doctors, medical service providers,
patients, and patient caregivers for collecting, organizing, managing, monitoring, and sharing medical and health data and information to compare the effectiveness of treatments and patient
outcomes; providing medical information via a database or website featuring patient and doctor surveys and questionnaires; medical
services related to sleep disorders, including narcolepsy |
| FINAL DESCRIPTION |
| Medical services, namely, providing health and medical data and information via a database or website; medical services, namely,
providing a database and registry featuring patient medical information accessible by doctors, medical service providers, patients, and patient caregivers for collecting, organizing, managing,
monitoring, and sharing medical and health data and information to compare the effectiveness of treatments and patient outcomes; providing medical information via a database or website featuring
patient and doctor surveys and questionnaires; medical services related to sleep disorders, including narcolepsy; |
| FILING BASIS |
Section 1(b) |
| ATTORNEY INFORMATION (current) |
| NAME |
Timothy D. Sitzmann |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
WINTHROP & WEINSTINE, P.A. |
| INTERNAL ADDRESS |
SUITE 3500 |
| STREET |
225 SOUTH 6TH STREET |
| CITY |
MINNEAPOLIS |
| STATE |
Minnesota |
| POSTAL CODE |
55402 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
| PHONE |
612-604-6689 |
| FAX |
612.604.6800 |
| EMAIL |
trademark@winthrop.com |
| DOCKET/REFERENCE NUMBER |
12507.CATNAP |
| ATTORNEY INFORMATION (proposed) |
| NAME |
Timothy D. Sitzmann |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
WINTHROP & WEINSTINE, P.A. |
| INTERNAL ADDRESS |
SUITE 3500 |
| STREET |
225 SOUTH 6TH STREET |
| CITY |
MINNEAPOLIS |
| STATE |
Minnesota |
| POSTAL CODE |
55402 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
United States |
| PHONE |
612-604-6689 |
| FAX |
612.604.6989 |
| EMAIL |
trademark@winthrop.com |
| DOCKET/REFERENCE NUMBER |
12507.1625 |
| OTHER APPOINTED ATTORNEY |
Michael T. Olsen, Nadeem W. Schwen, Brian R. Pollack, Alicia G. Mills |
| CORRESPONDENCE INFORMATION (current) |
| NAME |
TIMOTHY D. SITZMANN |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademark@winthrop.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
mmiller@winthrop.com; tsitzmann@winthrop.com; molsen@winthrop.com |
| DOCKET/REFERENCE NUMBER |
12507.CATNAP |
| CORRESPONDENCE INFORMATION (proposed) |
| NAME |
Timothy D. Sitzmann |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE |
trademark@winthrop.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) |
mmiller@winthrop.com; tsitzmann@winthrop.com; molsen@winthrop.com |
| DOCKET/REFERENCE NUMBER |
12507.1625 |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/TDS/ |
| SIGNATORY'S NAME |
Timothy D. Sitzmann |
| SIGNATORY'S POSITION |
Attorney of record, Minnesota bar member |
| SIGNATORY'S PHONE NUMBER |
612.604.6689 |
| DATE SIGNED |
02/26/2020 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Feb 26 10:22:45 ET 2020 |
| TEAS STAMP |
USPTO/ROA-XXX.XXX.XXX.XXX
-20200226102245760372-885
10608-710744023fd8bcba319
7cf8264bb48ff274bf124d04f
34c6528306bcaa196559-N/A-
N/A-20200226100932258173 |
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.
88510608 CATNAP(Standard Characters, see http://uspto.report/TM/88510608/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
As requested, Applicant has amended the application to provide greater clarification regarding the services. Applicant believes the amendment resolves both the clarification and classification
issues raised in the Office Action.
With respect to the Request for Information, Applicant's answers are set forth below.
Question 1:
Explain whether the wording in the mark “CATNAP” has any meaning or significance in the trade or industry in which applicant’s goods and/or services are manufactured or provided,
any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry.
Answer:
The term CATNAP has no meaning or significant in the trade or industry in which Applicant’s services are provided, nor is the term CATNAP a term of art within Applicant’s
Industry.
Question 2
a) Is CATNAP an acronym? If yes, for what does it stand?
CATNAP is not an acronym that is used in Applicant’s industry. However, Applicant adopted the term as an arbitrary mark for Applicant’s services. Applicant did so, in part, to be
suggestive of Children, Adolescents, and Their Partners along with the phrase Narcolepsy Assessment Partnership.
b) Is CATNAP an abbreviation? If yes, for what does it stand?
No.
c) Does CATNAP have any particular meaning in relation to the services?
No, the term CATNAP does not have any meaning in relation to the services. Applicant adopted the arbitrary term with the intention to be able to evoke the suggestive nature
referenced in answer to the Question 2a. However, the term CATNAP itself has no meaning in relation to the services or Applicant’s industry.
d) Does Jazz provide information or medical services related to naps or short sleeps?
No.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following:
Current: Class 044 for Medical services, namely, providing a database, website, and registry for entering, collecting, managing, organizing, monitoring, and sharing health data and
information, administering surveys and questionnaires, comparing the effectiveness of different treatments and the impact on patient important outcomes, using the data to conduct research and
analysis; medical services related to sleep disorders, including narcolepsy
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: Medical services, namely, providing a database, website, and registry for entering, collecting, managing, organizing, monitoring, and
sharing health data and information, administering surveys and questionnaires, comparing the effectiveness of different treatments and the impact on patient important outcomes, using the data to
conduct research and analysis;
Medical services, namely, providing health and medical data and information via a database or website;
medical services, namely, providing a database and registry featuring patient medical information accessible by doctors, medical service providers, patients, and patient caregivers for
collecting, organizing, managing, monitoring, and sharing medical and health data and information to compare the effectiveness of treatments and patient outcomes;
providing medical information via a database or website featuring patient and doctor surveys and questionnaires;
medical services related to sleep disorders,
including narcolepsyClass 044 for Medical services, namely, providing health and medical data and information via a database or website; medical services, namely, providing a database and
registry featuring patient medical information accessible by doctors, medical service providers, patients, and patient caregivers for collecting, organizing, managing, monitoring, and sharing medical
and health data and information to compare the effectiveness of treatments and patient outcomes; providing medical information via a database or website featuring patient and doctor surveys and
questionnaires; medical services related to sleep disorders, including narcolepsy;
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.
OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Jazz Pharmaceuticals, Inc., a corporation of California, having an address of
3170 Porter Drive
Palo Alto, California 94304
United States
Proposed: Jazz Pharmaceuticals, Inc., a corporation of California, having an address of
3170 Porter Drive
Palo Alto, California 94304
United States
Email Address: tsitzmann@winthrop.com
The owner's/holder's current attorney information: Timothy D. Sitzmann. Timothy D. Sitzmann of WINTHROP & WEINSTINE, P.A., is located at
SUITE 3500
225 SOUTH 6TH STREET
MINNEAPOLIS, Minnesota 55402
United States
The docket/reference number is 12507.CATNAP.
The phone number is 612-604-6689.
The fax number is 612.604.6800.
The email address is trademark@winthrop.com
The owner's/holder's proposed attorney information: Timothy D. Sitzmann. Other appointed attorneys are Michael T. Olsen, Nadeem W. Schwen, Brian R. Pollack, Alicia G. Mills. Timothy D. Sitzmann
of WINTHROP & WEINSTINE, P.A., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at
SUITE 3500
225 SOUTH 6TH STREET
MINNEAPOLIS, Minnesota 55402
United States
The docket/reference number is 12507.1625.
The phone number is 612-604-6689.
The fax number is 612.604.6989.
The email address is trademark@winthrop.com
Timothy D. Sitzmann 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.
Correspondence Information (current):
TIMOTHY D. SITZMANN
PRIMARY EMAIL FOR CORRESPONDENCE: trademark@winthrop.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mmiller@winthrop.com; tsitzmann@winthrop.com; molsen@winthrop.com
The docket/reference number is 12507.CATNAP.
Correspondence Information (proposed):
Timothy D. Sitzmann
PRIMARY EMAIL FOR CORRESPONDENCE: trademark@winthrop.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): mmiller@winthrop.com; tsitzmann@winthrop.com; molsen@winthrop.com
The docket/reference number is 12507.1625.
Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all
official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).
SIGNATURE(S)
Response Signature
Signature: /TDS/ Date: 02/26/2020
Signatory's Name: Timothy D. Sitzmann
Signatory's Position: Attorney of record, Minnesota bar member
Signatory's Phone Number: 612.604.6689
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: TIMOTHY D. SITZMANN
WINTHROP & WEINSTINE, P.A.
SUITE 3500
225 SOUTH 6TH STREET
MINNEAPOLIS, Minnesota 55402
Mailing Address: Timothy D. Sitzmann
WINTHROP & WEINSTINE, P.A.
SUITE 3500
225 SOUTH 6TH STREET
MINNEAPOLIS, Minnesota 55402
Serial Number: 88510608
Internet Transmission Date: Wed Feb 26 10:22:45 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20200226102245
760372-88510608-710744023fd8bcba3197cf82
64bb48ff274bf124d04f34c6528306bcaa196559
-N/A-N/A-20200226100932258173