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 11, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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).

 

 

SUMMARY OF ISSUES:

 

• IDENTIFICATION OF THE GOODS
• EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

 

IDENTIFICATION OF THE GOODS

 

The wording “Pharmaceutical preparations” in the identification of goods is indefinite and must be clarified because applicant must state the purpose of the pharmaceutical preparations.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

The wording “pharmaceutical preparations for use in angiology, cardiology, endocrinology, gastroenterology, geriatrics, hematology, hepatology, nephrology, neurology, oncology, pulmonology, pneumology, respirology, rheumatology, anesthesiology, urology, dermatology, gynecology, ophthalmology, infectiology, and psychiatry; pharmaceutical preparations for use in in pediatric, geriatric, emergency, family, and psychiatry; Pharmaceutical preparations for the treatment of infectious, deficiency, hereditary, and physiological diseases” in the identification of goods is indefinite and must be clarified because applicant must provide additional information about the preparations or the specific issues they are meant to treat.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

The wording “Pharmaceutical preparations for the treatment of infectious, deficiency, hereditary, and physiological diseases” in the identification of goods is indefinite and must be clarified because applicant must provide additional information about the purpose of the pharmaceutical preparations, specifically with regard to the “deficiency” issues.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:

 

Class 5: Pharmaceutical preparations for the treatment and prevention of {indicate specific purpose, e.g., cancer, cardiovascular disease, epilepsy and mitochondrial disease}; vaccine preparations; pharmaceutical preparations, namely, {provide additional information, e.g., a drug formulation comprising nanoparticles of sirolimus and albumin for use in angiology, cardiology, endocrinology, gastroenterology, geriatrics, hematology, hepatology, nephrology, neurology, oncology, pulmonology, pneumology, respirology, rheumatology, anesthesiology, urology, dermatology, gynecology, ophthalmology, infectiology, and psychiatry; pharmaceutical preparations, namely, {provide additional information, e.g., a drug formulation comprising nanoparticles of sirolimus and albumin} for use in in pediatric, geriatric, emergency, family, and psychiatry; Pharmaceutical preparations for the treatment of infectious, {provide more information regarding deficiency} deficiency, hereditary, and physiological diseases

 

Class 42: Medical and pharmaceutical research services; pharmaceutical research and development; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; medical and scientific research, namely, conducting clinical trials for others; laboratory research services relating to pharmaceuticals; scientific and technological services, namely, research and design services in the field of process development, validation, qualification, and manufacturing of pharmaceuticals and biopharmaceuticals; scientific and technological services consultation services in the field of development, manufacturing and testing of pharmaceuticals and biopharmaceuticals; providing product research and development in the pharmaceutical field for purposes of process development, validation, qualification, and manufacturing of pharmaceuticals and biopharmaceuticals; scientific and technological consultation services in the field of pharmaceutical research and pharmacology; custom development of pharmaceutical, biopharmaceutical and chemical products; providing evaluation testing for pharmaceutical, biopharmaceutical and chemical products, and medical devices featuring testing for safety, toxicity, content, identity, purity, configuration and function, using chemical, in vitro or in vivo assays, analyses and models; pre-clinical and non-clinical evaluation testing of pharmaceutical, biopharmaceutical and chemical products performed primarily using animals and other biological models; pharmaceutical, biopharmaceutical, and chemical research and development for others; pharmaceutical research in the fields of angiology, cardiology, endocrinology, gastroenterology, geriatrics, hematology, hepatology, nephrology, neurology, oncology, pulmonology, pneumology, respirology, rheumatology, anesthesiology, urology, dermatology, gynecology, ophthalmology, infectiology, and psychiatry; pharmaceutical research for use in pediatric, geriatric, emergency, family, and preventative medicine; pharmaceutical research for the treatment of infectious, deficiency, hereditary, and physiological diseases

 

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 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 or encompassed by those in the original 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).

 

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.

 

 

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must provide the following information:

 

(1)  Explain whether the wording in the mark “FYARRO” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, any meaning or significance as applied to applicant’s goods and/or services, or if such wording is a term of art within applicant’s industry. 

 

(2)  Explain whether this wording identifies a geographic place or has any meaning in a foreign language. 

 

(3)  Submit an English translation of all foreign wording in a mark and a transliteration (the phonetic spelling of the pronunciation, in Latin characters) of all non-Latin characters in a mark.  If the wording does not have meaning in a foreign language, applicant should so specify.   

 

The format for an English translation and transliteration:  “The English translation of “FYARRO” is “{insert translation}”.    

 

The format for when there is no English translation or meaning of the transliteration:  “The wording “FYARRO” has no meaning in a foreign language. 

 

See 37 C.F.R. §§2.32(a)(9)-(a)(10), 2.61(b); TMEP §§809-809.03, 814. 

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

 

 

RESPONSE GUIDELINES 

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

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.    

 

 

Black, Mildred

/Mildred Black/

Trademark Examining Attorney

Law Office 130

571.270.1217

mildred.black@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 11, 2019 for

U.S. Trademark Application Serial No. 88599810

 

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. 

 

 

Black, Mildred

/Mildred Black/

Trademark Examining Attorney

Law Office 130

571.270.1217

mildred.black@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 11, 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.”