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:  December 09, 2019

 

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.  

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on November 29, 2019.

 

In a previous Office action dated November 20, 2019, applicant was required to satisfy the following requirements:  IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS. 

 

Although applicant amended the identification of goods and services accordingly, certain language remains indefinite as noted below.  In addition, upon further review, in the suggested identification of services for International Class 42 as set forth in the Office action dated November 20, 2019, the examining attorney offered incorrect suggested substitute wording which the applicant adopted which is noted below, namely, pharmaceutical consultancy services.  The examining attorney apologizes for this error.  Thus, this represents a new issue with the identification for this application.

 

Thus, based on applicant’s response, the trademark examining attorney continues and maintains the requirements in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES:

• IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES/MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

INTERNATIONAL CLASS 5

The following wording in the identification of goods is indefinite and must be clarified because the wording does not make clear the exact nature of the goods with enough specificity by common commercial name for proper identification and classification of the goods in this class and/or the wording is too broad and could include goods in other classes, namely:

 

1. antibody-drug conjugates [Applicant must further clarify the nature of the goods by common commercial or generic name and classify the goods accordingly.  The wording is broad enough to include goods classified in multiple classes depending on the common commercial or generic name for the conjugates.];
2. immuno-oncology compounds and compounds for auto-immune diseases [Applicant must further clarify the nature of the compounds by common commercial or generic name and classify the compounds accordingly.  The wording is broad enough to include goods classified in multiple classes including preparations in International Class 5 or chemicals and/or reagents in International Class 1.];
3. Biopharmaceutical active substances, namely, antibody-drug conjugates, immuno-oncology compounds and compounds for auto-immune diseases [Applicant must further clarify the nature of the goods by common commercial or generic name and classify the goods accordingly.  The wording is broad enough to include goods classified in multiple classes including preparations in International Class 5 or chemicals in International Class 1.].

 

See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  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.

 

INTERNATIONAL CLASS 10

The identification of goods for International Class 10 is acceptable as written.

 

INTERNATIONAL CLASS 35

With respect to the identification “business mediation of commercial transaction for others, mediation of contracts for the purchase and sale of products, and medication of agreements all in the field of the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration files” in this class, applicant should indicate “transactions” to clearly and concisely set forth the nature of the services by common commercial name.  In addition, “medication of agreements” should correct the spelling of “medication” to “mediation”.  The examining attorney apologizes for these spelling error in the suggested identification set forth in the Office action of November 20, 2019 which applicant adopted.

 

INTERNATIONAL CLASS 42

The following wording in the identification of services is indefinite and must be clarified because the wording does not make clear the exact nature of the services with enough specificity by common commercial name for proper identification and classification of the services in this class and/or the wording is too broad and could include services in other classes, namely:

 

1. Scientific and technological services and research relating thereto, namely, antibody-drug conjugates, immuno-oncology compounds and compounds for auto-immune diseases and scientific research related thereto [Besides the scientific research related thereto, applicant has not set forth any specific scientific and technological services by common commercial or generic name after the word “namely” in the identification in relation to the listed areas.  Thus, applicant must further clarify the specific scientific and technological services provided and classify the services accordingly.];
2. scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files, namely, scientific research field of pharmaceuticals for pharmaceutical registration purposes [The wording “in the” should be inserted before the word “field” to make the identification grammatically clear and concise.];
3. pharmaceutical research services and pharmaceutical consultancy services [The wording “pharmaceutical consultancy services” was offered in error and is not acceptable wording.  The wording is overly broad because it may reference pharmaceutical consultation for medical purposes in International Class 44 as well as that related to research in International Class 42.  The examining attorney apologizes for this error and applicant must further clarify and classify the services accordingly.];
4. providing information on the results of clinical trials for pharmaceutical preparations [The nature of the type of information must be further clarified for purpose of identification and classification of the services.  In particular, the information must relate to medical and scientific research for proper classification of the services in this class.  The classification of information is related to the subject matter of the information.  In the present case, the information may also relate to financial information in International Class 36, or other types of information classified in other classes.  Thus, applicant must clearly set forth the type of information for proper identification and classification of the services.].

 

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 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.

 

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.

 

Applicant may substitute the following wording, if accurate:

 

Biopharmaceutical preparations, substances and compositions, namely, reagents for scientific and research purposes in the nature of antibody-drug conjugates and antibody-drug conjugates in the nature of biochemicals being monoclonal antibodies for in vitro scientific or research use, International Class 1; and/or

 

Biopharmaceutical preparations, substances and compositions, namely, antibacterial substances for medical purposes, medical diagnostic reagents in the nature of antibody-drug conjugates, immuno-oncology compounds in the nature of medicinal preparations for the treatment of infectious diseases and for use in oncology, and compounds for auto-immune diseases, namely, pharmaceutical preparations for the treatment of immune system related diseases and disorders; diopharmaceutical active substances, namely, diagnostic agents, preparations and substances for medical purposes in the nature of antibody-drug conjugates, immuno-oncology compounds, namely, pharmaceutical preparations and substances for the treatment of oncological related diseases and disorders, and compounds for auto-immune diseases, namely, pharmaceutical preparations for the treatment of immune system related diseases and disorders; biological and biochemical drug and cultures for medical use, namely, biological preparations for the treatment of cancer, cultures of microorganisms for medical use, and biological tissue cultures for medical purposes; biopharmaceutical active substances, namely, nutritive substances for microorganism cultures; biopharmaceutical components and ingredients, namely, plant and herb extracts sold as components of medicated cosmetics; orthopedic articles, namely, bone repair paste for use in orthopedic surgery; all of the above excluding for the treatment of neuromuscular diseases and disorders, International Class 5; and/or

 

Surgical and medical devices, apparatus and instruments, namely, surgical instruments and apparatus, surgical devices and instruments, surgical apparatus and instruments, medical instruments for cutting tissue, and medical instrument for performing biopsies, medical fluid injectors, injection device for pharmaceuticals, syringes for medical purposes, disposable syringes for medical purposes; orthopedic articles, namely, orthopedic walkers, orthopedic supports, orthopedic braces and orthopedic cushions; injection apparatus for medical purposes, namely, injection needles and injection instruments with needles, International Class 10; and/or

 

Providing office functions relating to the registration of pharmaceutical preparations and components and pharmaceutical drugs; providing office functions relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; business mediation of commercial transactions for others, mediation of contracts for the purchase and sale of products, and mediation of agreements all in the field of the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration files, International Class 35; and/or

 

Scientific and technological services and research relating thereto, namely, scientific research, analysis and testing in the fields of antibody-drug conjugates, immuno-oncology compounds and compounds for auto-immune diseases and scientific research related thereto; scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files, namely, scientific research in the field of pharmaceuticals for pharmaceutical registration purposes; pharmaceutical research services and pharmaceutical research consultancy services; biomedical research services and biomedical research consultancy; medical research and medical research consultancy; scientific laboratory services in the fields of chemistry and biology, antibody-drug conjugates, immuno-oncology compounds and compounds for auto-immune diseases; scientific laboratory services; product development of pharmaceutical products and ingredients for pharmaceuticals; providing information relating to medical and scientific research in the field of pharmaceutical preparations; providing medical and scientific research information regarding the results of clinical trials for pharmaceutical preparations; quality control of products for others to determine conformity with certification standards; laboratory research, namely, scientific and medical research; laboratory analysis in the field of chemistry and biology as related to pharmaceuticals; product research for the pharmaceutical industry; design of pharmaceuticals for the pharmaceutical industry; product research and development for others; drug discovery services; testing in the context of quality control, namely, material testing and product testing; conducting clinical trials for others in the field of pharmaceutical preparations; quality control for others in the field of pharmaceutical preparations; providing information and data relating product research and developments in the pharmaceutical, biopharmaceutical and medical fields, International Class 42; and/or

 

Pharmaceutical consultancy for medical purposes, Internationals Class 44.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found in or encompassed by those in the original U.S. application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(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 six or more classes; however, applicant submitted a fee(s) sufficient for only four class(es).  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).  The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONDING TO THIS OFFICE ACTION

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@USPTO.GOV

 

 

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 December 09, 2019 for

U.S. Trademark Application Serial No. 88585560

 

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. 

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@USPTO.GOV

 

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 December 09, 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.”