To: | Synthon Biopharmaceuticals B.V. (PTO-TM-Email@rfem.com) |
Subject: | U.S. Trademark Application Serial No. 88605931 - GLOBYON - 3599-164 |
Sent: | December 07, 2019 09:06:22 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88605931
Mark: GLOBYON
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Correspondence Address: |
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Applicant: Synthon Biopharmaceuticals B.V.
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Reference/Docket No. 3599-164
Correspondence Email Address: |
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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
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).
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
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 “GLOBYON” 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 “GLOBYON” is “{insert translation}”.
The format for when there is no English translation or meaning of the transliteration: “The wording “GLOBYON” has no meaning in a foreign language.
(4) Respond to the following questions:
- What is the meaning of the term “GLOBYON” 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.
FOREIGN REGISTRATION CERTIFICATE REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
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