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:  November 20, 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

 

The referenced application and voluntary amendment filed on October 25, 2019 have been reviewed by the assigned trademark examining attorney.  Applicant’s amendments and copy of the foreign registration as provided in the voluntary amendment are accepted and have been entered into the record.  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).

 

However, applicant must address the following refusal(s) and/or requirement(s):

 

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. Biopharmaceutical preparations, substances and compositions [Applicant must clearly set forth the preparations, substances, and compositions by common commercial or generic name and classify the goods accordingly as the wording may be broad enough to include chemicals in International Class 1, pharmaceuticals in International Class 5 or goods properly classified in other classes.];
2. Biological and biochemical drug and Cultures for medical use [Applicant must set forth the specific drugs by common commercial or generic name or the specific disease or condition to be prevented or treated, or the health goal to be achieved.  In addition, the nature of the cultures for medical use must be further specified by common commercial or generic name for proper classification in this class.  Moreover, the letter "C" in "Cultures" should be a lower case letter "c".];
3. Biopharmaceutical active substances [Applicant must further clarify the substances by common commercial name and classify the goods accordingly.];
4. Biopharmaceutical components and Ingredients [Applicant must further clarify the specific components and ingredients by common commercial or generic name for the goods and classify the goods accordingly as the components and ingredients may identify goods classified in additional classes depending on the nature of the goods by common commercial or generic name.].

 

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 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. Surgical and medical devices, apparatus and instruments [Applicant must further specify the devices, apparatus and instruments by common commercial or generic name for goods properly classified in this class.];
2. Orthopedic articles [Applicant must clearly set forth the specific articles by common commercial or generic name as the wording is broad enough to encompass orthopedic goods classified in multiple classes.];
3. Injection apparatus for medical purposes [Applicant must further clarify the specific apparatus by common commercial or generic name and classify the goods accordingly.].

 

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 35

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. Office functions relating to the registration of pharmaceutical preparations and components and Pharmaceutical drugs [In order to clearly set forth services, applicant must indicate “providing office functions…” which is clear service language for services properly classified in this class.];
2. Office functions relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files [In order to clearly set forth services, applicant must indicate "providing office functions…" which is clear service language for services properly classified in this class.];
3. Business mediation in the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration files [Although identified as business mediation services, the specific type mediation provided must be further clarified by common commercial or generic name and classified accordingly.  Despite the lead in as business mediation, the services may possibly involve legal services in International Class 45 depending on the specific type of mediation involved.].

 

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.

 

INTERNATIONAL CLASS 40

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, namely:

 

1. Treatment of materials, including on request, for others, for the purpose of manufacturing pharmaceutical and biopharmaceutical preparations [Applicant must indicate how the materials are treated and/or identify the materials treated for proper identification and classification of the services in this class.].

 

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.

 

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 [Applicant must further clarify the specific type of services by common commercial name properly classified in this class.];
2. Scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files [Applicant must further clarify the specific type of services by common commercial name properly classified in this class.];
3. Pharmaceutical research services and Consultancy in this field [Applicant should place the “c” in “Consultancy” in lower case for a grammatically precise identification as well as clearly set forth the consultancy services by avoiding using the vague phrase in this field.];
4. Biomedical research services and Consultancy in this field [Applicant should place the "c" in "Consultancy" in lower case for a grammatically precise identification as well as clearly set forth the consultancy services by avoiding using the vague phrase in this field.];
5. Medical research and Consultancy in this field [Applicant should place the "c" in "Consultancy" in lower case for a grammatically precise identification, and clearly set forth the consultancy services by avoiding using the vague phrase in this field.];
6. Chemistry and biology laboratories [Applicant must further clarify the nature of these laboratory services by common commercial or generic name.];
7. Laboratory (Scientific -) services [Applicant must incorporate the parenthetic wording into the identification indicating the common commercial or generic name for the services.  The substitute wording “scientific laboratory services” is recommended.];
8. Development of pharmaceutical products and Ingredients [Applicant must further clarify the type of development by common commercial or generic name for services properly classified in this class.];
9. Information relating to medical and scientific research in the field of pharmaceutical preparations [Applicant must indicate “providing information” to clearly set forth the information services by common commercial name.];
10. Quality control of products for the purpose of certification [In order to clearly constitute a service, the wording “for others” must be indicated and the wording “to determine conformity with certification standards” must be used to avoid indefinite terminology related to certification which is not a service per se.];
11. Laboratory research and laboratory analysis [Applicant must further clarify the nature of these services by common commercial or generic name and classify the services accordingly.];
12. Research and design for the pharmaceutical industry [Applicant must identify the specific research provided as all research services are not properly classified in this class despite the limitation for the pharmaceutical industry.  For example, the services could include financial research in International Class 36 or new product research in International Class 42.  In addition, while most design services are in International Class 42, applicant must clearly set forth what is designed and classify the services accordingly.];
13. Research and development for others  [Applicant must clearly set forth the type of research and development provided by common commercial or generic name as the type of research and development is not specified and may include services in multiple classes.  If accurate, the substitute wording “product research and development” is recommended.];
14. Drug discovery [In order to clearly set forth a service, the wording “drug discovery services” is recommended.];
15. Testing in the context of quality control [Applicant must further clarify the services by common commercial or generic name and classify the services accordingly.];
16. Conducting clinical trials for pharmaceutical preparations [In order to clearly set forth a services, the wording “for others” should be incorporated into the identification.];
17. Conducting quality control of pharmaceutical preparations [Applicant must further clarify the services by common commercial or generic name and classify the services accordingly.];
18. providing information and Data relating to pharmaceutical, biopharmaceutical and Medical research and developments [Providing information and data which is a type of information is classified on the subject matter of the information.  As set forth, the wording in the identification does not clearly set forth specific subject matter which is exclusive to this class.  In particular, the wording may include “product research and development” information in International Class 42, medical information in International Class 44 or even consumer product information in International Class 35.  Thus, applicant must clarify the nature of the information and data and classify the services according to a clear subject matter for purposes of classification.].

 

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, (indicate the common commercial or generic name for the goods), International Class (classification dependent upon the common commercial name for the goods); and/or

 

Biopharmaceutical active substances, namely, (indicate the common commercial or generic name for the goods), International Class (classification dependent upon the common commercial name for the goods); and/or

 

Biopharmaceutical components and ingredients, namely, (indicate the common commercial or generic name for the goods), International Class (classification dependent upon the common commercial name for the goods); and/or

 

Biopharmaceutical preparations, substances and compositions, namely, antioxidants for use in the manufacture of pharmaceuticals, International Class 1; and/or

 

Biopharmaceutical preparations, substances and compositions, namely, antibacterial substances for medical purposes (or indicate common commercial name for preparations, substances and compositions properly classified in this class); biological and biochemical drug and cultures for medical use, namely, biological preparations for the treatment of cancer (or indicate the common commercial or generic name for the drug properly classified in this class), cultures of microorganisms for medical use, and biological tissue cultures for medical purposes; biopharmaceutical active substances, namely, nutritive substances for microorganism cultures (or indicate common commercial name for substances properly classified in this class); biopharmaceutical components and ingredients, namely, plant and herb extracts sold as components of medicated cosmetics (or indicate the common commercial name for the goods properly classified in this class); 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 (or indicate specific nature of the devices, apparatus and instruments by acceptable common commercial or generic name for goods properly classified in this class); orthopedic articles, namely, orthopedic walkers, orthopedic supports, orthopedic braces and orthopedic cushions (or indicate the common commercial name for the orthopedic devices properly classified in this class); injection apparatus for medical purposes, namely, injection needles and injection instruments with needles (or indicate the common commercial or generic name for goods properly classified in this class), 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 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, International Class 35; and/or

 

Treatment of materials in the nature of (indicate, e.g., metal, stone, etc.) by means of (indicate, e.g., laser beams, cryogenic processing, etc.), including on request, for others, for the purpose of manufacturing pharmaceutical and biopharmaceutical preparations; manufacture, for others, of pharmaceutical and biopharmaceutical preparations and raw materials for the pharmaceutical industry, International Class 40; and/or

 

Scientific and technological services and research relating thereto, namely, (specify type of services, e.g., scientific research, analysis, testing, etc.) in the field of (indicate field or subject matter) and scientific research related thereto; scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files, namely, scientific research field of pharmaceuticals for pharmaceutical registration purposes; pharmaceutical research services and pharmaceutical 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; 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 information on 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 (or indicate specific laboratory research by common commercial name for services properly classified in this class); 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.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  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 or encompassed by those in the original application or as acceptably narrowed.  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 applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

 

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 Sections 1(b) and 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 five 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 Sections 1(b) and 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 November 20, 2019 for

U.S. Trademark Application Serial No. 88585565

 

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 November 20, 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.”