To: | Synthon Biopharmaceuticals B.V (PTO-TM-Email@rfem.com) |
Subject: | U.S. Trademark Application Serial No. 88585565 - BIONDIS - 3599-157 |
Sent: | November 20, 2019 06:17:48 PM |
Sent As: | ecom114@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88585565
Mark: BIONDIS
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Correspondence Address: |
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Applicant: Synthon Biopharmaceuticals B.V
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Reference/Docket No. 3599-157
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
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.
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
INTERNATIONAL CLASS 5
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:
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:
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:
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:
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.
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 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