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 07, 2019

 

INTRODUCTION

 

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
• Information Requirement

 

AMENDMENT REQUIRED TO IDENTIFICATION OF GOODS AND SERVICES

 

The wording specified in bold and strikethrough formatting in the suggested amended identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  As for the goods, 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. As for the services, 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.

 

The recitation in International Class 40 is acceptable as written.

 

Applicant may substitute the following wording, if accurate, with the examining attorney’s suggested additions in bold and suggested deletions in strikethrough formatting:

 

International Class 5: Pharmaceutical preparations, substances and compositions for treating diabetes; Biological and biochemical drug and cultures for medical use, namely, biological tissue cultures; Pharmaceutical active substances, namely, drug delivery agents in the form of capsules that provide controlled release of the active ingredients for a wide variety of pharmaceuticals; Pharmaceutical components and ingredients, namely, drug delivery agents in the form of powders that provide controlled release of the active ingredients for a wide variety of pharmaceuticals 

 

International Class 10: Surgical and medical devices, apparatus and instruments, namely, scalpels; Orthopedic articles, namely, orthopedic walkers; Injection apparatus for medical purposes, namely, hypodermic syringes 

 

International Class 35: Office functions relating to the registration of pharmaceutical preparations and components and pharmaceutical drugs, namely, providing secretarial services for others in the pharmaceutical industry; Office functions relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files, namely, providing secretarial services for others in the pharmaceutical industry; Mediation of trade business for third parties, namely, business mediation in the purchase, sale and licensing of pharmaceutical registrations and pharmaceutical registration files 

 

International Class 40:   Treatment of materials, 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 42: Scientific and technological services and research relating thereto, namely, research on the subject of pharmaceuticals; Scientific and technological services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files, namely, Consulting services in the fields of biotechnology, pharmaceutical research and development, laboratory testing, diagnostics, and pharmacogenetics; Pharmaceutical research services and consultancy in this field; Biomedical research services and consultancy in this field; Medical research and consultancy in this field; Chemistry and biology laboratories, namely, laboratory research services relating to pharmaceuticals; Laboratory (Scientific) services, namely, laboratory research services relating to pharmaceuticals; Development of pharmaceutical products and Ingredients; 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 for the purpose of certification; Laboratory research services relating to pharmaceuticals and laboratory analysis services relating to pharmaceuticals; Research and design for the pharmaceutical industry, namely, pharmaceutical research and development; Research and development for others in the pharmaceutical and biotechnology fields; Drug discovery services; Quality control for others, namely, testing in the context of quality control; Conducting clinical trials for others for pharmaceutical preparations; Quality control for others, namely, conducting quality control of pharmaceutical preparations; providing information and data relating to pharmaceutical, biopharmaceutical and Medical research and developments 

 

International Class 45: Legal services relating to obtaining pharmaceutical registrations and compiling pharmaceutical registration files; legal services, namely, management of industrial property and copyright by means of license agreements (legal services); Licensing of intellectual property; legal services, namely, management of industrial property and copyright by issuing licenses to others (legal services); legal services, namely, Legal extensions relating to the retention of intellectual property, for others; Legal advice in the field of intellectual property 

 

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.

 

INFORMATION REQUIREMENT

 

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

 

(1)  Explain whether the wording in the mark “ABYLIAN” 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 “ABYLIAN” is “{insert translation}”. 

 

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

 

(4)  Respond to the following questions:

- What is the meaning of the term “ABYLIAN” in the context of applicant’s goods and services?

 

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.

 

ASSISTANCE

 

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.    

 

 

/Laura Fionda/

Laura E. Fionda

Trademark Examining Attorney

Law Office 108

Phone: 571-272-7897

Email: laura.fionda@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 07, 2019 for

U.S. Trademark Application Serial No. 88604262

 

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. 

 

 

/Laura Fionda/

Laura E. Fionda

Trademark Examining Attorney

Law Office 108

Phone: 571-272-7897

Email: laura.fionda@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 07, 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.”