To: | Vertex Pharmaceuticals Incorporated (trademarks@sunsteinlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88578476 - VERTEX GENETIC THERAPIES - 1618/2107 |
Sent: | November 20, 2019 08:26:11 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88578476
Mark: VERTEX GENETIC THERAPIES
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Correspondence Address: SUNSTEIN KANN MURPHY & TIMBERS LLP
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Applicant: Vertex Pharmaceuticals Incorporated
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Reference/Docket No. 1618/2107
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: November 20, 2019
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
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers
guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the
identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL
CAPS.
Applicant may adopt the following identification, if accurate:
International Class 009: House mark for pharmaceutical preparations; nucleic acid medicines ________ {please specify purpose, e.g., for the treatment of genetic diseases and disorders}; pharmaceutical preparations for the treatment of genetic diseases and disorders; pharmaceutical preparations for the treatment of muscular dystrophy
International Class 042: Medical and scientific research in the field of gene therapy; medical and scientific research in the field of nucleic acid; {please specify service, e.g., medical and scientific research in the field of} gene editing for developing cells and pharmaceuticals for medical and clinical use; research and development of pharmaceuticals using gene editing
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.
In this case, applicant must disclaim the wording “GENETIC THERAPIES” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
In the present case, these terms are encompassed in applicant’s identification of goods and services. Specifically, applicant provides pharmaceutical preparations for the treatment of genetic diseases and disorders, and applicant provides medical and scientific research in the field of gene therapy. Therefore, the wording describes the purpose or subject matter of applicant’s goods and services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GENETIC THERAPIES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ASSISTANCE
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
/Sahar Nasserghodsi/
Sahar Nasserghodsi
Examining Attorney
Law Office 115
(571)272-9192
Sahar.Nasserghodsi@uspto.gov
RESPONSE GUIDANCE