To: | Ionis Pharmaceuticals, Inc. (trademarks@cooley.com) |
Subject: | U.S. Trademark Application Serial No. 88519487 - N LOREM - 097721-121 |
Sent: | October 03, 2019 03:25:38 PM |
Sent As: | ecom127@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88519487
Mark: N LOREM
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Correspondence Address: 1299 PENNSYLVANIA AVENUE NW, SUITE 700
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Applicant: Ionis Pharmaceuticals, Inc.
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Reference/Docket No. 097721-121
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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 03, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
IDENTIFICATION OF GOODS AND SERVICES
The wording in the identification of goods and services identified with corrections below is indefinite and must be clarified for the reasons indicated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods, and/or specify the specific application of the services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Specifically, the wording “pharmaceutical preparations” in Class 5 is indefinite because it does not specify the specific use of the preparations.
Additionally, the wording “charitable services, namely, providing access to drugs for patients of rare diseases” in Class 36 is indefinite and misclassified. Specifically, the wording “providing access to drugs” requires further context, such as “charitable services, namely, patient assistance programs to provide drugs free of charge to patients of rare diseases without prescription drug coverage”. Additionally, these services are properly classified in Class 44.
Further, the wording “research and development of pharmaceuticals” is indefinite because the purpose of the pharmaceuticals is not specified. Additionally, the wording “providing medical and scientific research information in the fields of pharmaceuticals, therapies and rare diseases” is overbroad because it identifies services in more than one International Class. Providing medical information is properly classified in Class 44, while providing scientific research information is properly classified in Class 42.
Applicant may adopt the following wording, if accurate:
Class 5
Pharmaceutical preparations for {indicate specific use, e.g. skin care, treating chemical imbalances, the treatment of heart rhythm disorders}; pharmaceutical preparations for the treatment of rare diseases
Class 36
Charitable fundraising; charitable foundation services, namely, providing fundraising activities to support medical research and development for treatment of rare diseases
Class 42
Research and development of pharmaceuticals for the treatment of {indicate treatment area, e.g. rare diseases, age related disease, cancer}; Providing scientific research information in the fields of pharmaceuticals, therapies, and rare diseases
Class 44 – Added Class
Charitable services, namely, patient assistance programs to provide drugs free of charge to patients of rare diseases without prescription drug coverage; Providing medical information in the field of pharmaceuticals, therapies, and rare diseases
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 four classes; however, applicant submitted a fees sufficient for only three classes. 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.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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
Samantha Moskowitz
/Samantha J. Moskowitz/
Trademark Examining Attorney
Law Office 127
samantha.moskowitz@uspto.gov
571-272-3183
RESPONSE GUIDANCE