United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
PRIORITY ACTION
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: October 31,
2019
USPTO database searched; no conflicting marks found. The
trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section
2(d). 15 U.S.C. §1052(d); TMEP §704.02.
Applicant must address issues shown below. On October 30, 2019, the examining attorney and Jill Chalmers discussed the issues
below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP
§708.05.
IDENTIFICATION OF SERVICES
The wording “consulting services for scale-up of pharmaceutical manufacturing processes, pharmaceutical
technology transfer, and manufacture of pharmaceuticals for others” in the identification of services is indefinite and must be clarified because it commingles services in multiple classes;
consulting services are properly classified according to the underlying subject matter and in this case, the two design services are in Class 042, while the scale-up and manufacture of
pharmaceuticals wording is properly in Class 040. As discussed, the wording “technology transfer” (listed several times in the application) is indefinite and
requires clarification for proper classification, e.g., providing advice and information in the field of pharmaceutical research and development in Class 042. The
wording “technical services for pharmaceutical formulation design, design of processes to transform inorganic and organic substances, scale-up of pharmaceutical manufacturing processes,
pharmaceutical technology transfer, and manufacture of pharmaceuticals for others” is similarly indefinite as applicant must specify the type of technical services, e.g., technical writing, technical
surveying, or parse out the subject areas and classify accordingly if the technical services are in the nature of providing advice and information. The wording
“pharmaceutical product chemical and physical evaluation services, namely, technology transfer of test methods” is indefinite as the exact nature of the services is unknown. Similarly, the wording “technology transfer of drug product process, product and test methods” is indefinite and requires clarification. The
wording “scale-up of manufacturing process services for others” is misclassified as this is a Class 040 manufacturing service. The wording “technical consulting in
the fields of pharmaceutical, medical and healthcare” is indefinite and overly broad as technical consulting in the field of pharmaceutical studies, research and development is in Class 042, while
medical consultation is in Class 044 and consulting in the field of healthcare operations management is in Class 035. Similarly, the wording “technology consultation
in the fields of pharmaceuticals, medicines and healthcare products” is indefinite as the actual technology field, required to remain in Class 044, is unknown, e.g., technological consultation in the
technology field of engineering relating to pharmaceuticals, medicines and healthcare products.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial
or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic
name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may adopt the following amended identification, if accurate:
- Consulting services in the fields of pharmaceutical, medical and healthcare research and development; technical services, namely, research and development in the
pharmaceutical and biotechnology fields; consulting services for pharmaceutical formulation design, design of processes to transform inorganic and organic substances, and pharmaceutical technology
transfer being advice and information about pharmaceutical research and design; technical services, namely, providing advice, information and instructions for pharmaceutical formulation design and
design of processes to transform inorganic and organic substances, pharmaceutical technology transfer being advice and information about pharmaceutical research and design; pharmaceutical product
chemical and physical evaluation services, namely, test method development, test method validation, use of test methods for in-process control, quality control, and product release, and technology
transfer being advice and information about pharmaceutical test methods; analytical chemistry services, namely, developing and validating test methods for drug product release; technology transfer
being advice and information about the drug product testing process and test methods; providing services to others in the fields of analytical, chemistry and manufacturing controls for the production
and regulatory approval of pharmaceuticals, namely, providing scientific information relating to the analysis and management of the pharmaceutical manufacturing process for the production, packaging,
and regulatory approval of pharmaceuticals; consulting services in the fields of chemistry, biotechnology, pharmaceutical research and development, laboratory testing, and diagnostics; consulting and
research and development services in the fields of analytical chemistry, biochemistry, medicinal chemistry, drug development, biotechnology, microbiology and molecular biology; technical consulting
in the fields of pharmaceutical studies, research and development; technical consulting in the field of pharmaceutical development and engineering; technical consulting in the field of analytical
chemistry services; consultancy pertaining to pharmacology; technology consultation in the fields of research and development of pharmaceuticals, medicines and healthcare products; scientific
research consulting in the fields of pharmaceuticals, medicines and healthcare products; product development consulting in the fields of pharmaceuticals, medicines and healthcare products; scientific
research services relating to pharmaceuticals, medicines and healthcare products; product development consultation; product development services; formulation and process design services for drug
products for others; outsource service provider for manufacturing and packaging of pharmaceuticals; formulation and process design services for drug products for others; design of packaging for
pharmaceuticals of others; pharmaceutical product packaging design services for others; formulation and process design services for drug products of others; provision of information, advice and
consultancy in relation to pharmaceutical packaging design [INT. CLASS 042]
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).
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
The application identifies services in more than one international class; therefore, applicant must
satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(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 services that are classified in at least two
classes; however, applicant submitted a fee sufficient for only one class. 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.
Note: as discussed with applicant, to the extent its original identification included wording properly classified in International Classes 035 and 040, it will be
permitted to move such wording to its companion applications with those classes of services and the examiner’s suggested amended identification reflects this re-classification.
TEAS REDUCED FEE CORRESPONDENCE REQUIREMENTS
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.
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.
Note: An applicant may check the status of or view documents filed in an application
or registration using the Trademark Status and Document Retrieval (TSDR) system. Enter the application serial number or registration number and click on “Status” or “Documents.”
How to respond. Click to file a response to
this nonfinal Office action.
Toby Bulloff
/Toby E. Bulloff/
Examining Attorney
Law Office 119
(571) 270-1531
toby.bulloff@uspto.gov
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause the
application to abandon. The response
must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or
unforeseen circumstances could affect an applicant’s ability to timely
respond.