Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88620374 TULVEGIO RIVOCERANIB (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8862037 4/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

In response to the communication dated January 8, 2021, please consider these remarks and enter the accompanying amendment and reconsider this application in view of the amendments, remarks, and evidence provided herein.

Applicant expresses appreciation for the guidance in the Office Action regarding the potential misdescription of applicant’s goods. Applicant has provided the required statements and documents to satisfy the requirements made in the Office Action. Furthermore Applicant has provided a disclaimer of the pertinent rivoceranib term. Thus, no further action by Applicant is believed necessary regarding the potential misdescription of goods issue.

Applicant also expresses appreciation for the guidance in the Office Action regarding Applicant’s identification of goods and services. Applicant has amended the identification of the goods patterned after the suggestions made in the Office Action, to reflect terminology used in the marketplace, to be acceptably definite, and to satisfy the requirements raised in the Office Action. Thus, no further action by Applicant is believed necessary regarding the identification of the goods for this application.

Applicant’s Mark Is Not Misdecriptive

Applicant provides the following statements and evidence (see Exhibits 1 & 2) from Applicant’s website. The Office Action raised the following requirements.

(1) A written statement explaining whether the goods do or will contain rivoceranib.

(2) A sample of advertisements or promotional materials featuring the goods and/or a photograph of the identified goods, or if such materials are not available, applicant must submit samples of advertisements or promotional materials and a photograph of similar goods.

(3) A written statement describing in detail the nature, purpose, and channels of trade of the goods.

Office Action Requirements are Satisfied

Applicant provides the following statements and the accompanying Exhibits 1 & 2 to fulfill the requirements raised in the Office Action.

(1) Applicant’s goods associated with the mark TULVEGIO RIVOCERANIB do indeed contain rivoceranib.

(2) See Exhibits 1-2.

(3) Applicant’s goods are a small-molecule tyrosine kinase inhibitor used to treat gastric cancer. It is currently investigational in the United States and other jurisdictions and has been granted Orphan Drug designation in the US, Europe and South Korea. Distribution and sales for Applicant’s goods will follow all other FDA approved cancer therapy drugs for human treatment.

Preemptive Disclaimer

Applicant has entered a disclaimer wherein Applicant makes no claim to the exclusive right to use RIVOCERANIB apart from the mark as shown.

Conclusion

Applicant respectfully submits that registration on the Principal Register is appropriate. If any impediment to passing this mark onto publication remains after entry of this amendment and consideration of these remarks, the Trademark Examining Attorney is invited to initiate a telephone interview with the attorney of record.

EVIDENCE
Evidence has been attached: Exhibits 1-2
Original PDF file:
evi_65158113164-202102091 25957404893_._Exhibit1.pdf
Converted PDF file(s) ( 5 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5
Original PDF file:
evi_65158113164-202102091 25957404893_._Exhibit2.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical preparations and substances for the treatment of cancer
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Pharmaceutical preparations and substances for the treatment of cancer; Pharmaceutical preparations and substances containing rivoceranib for the treatment of cancerClass 005 for Pharmaceutical preparations and substances containing rivoceranib for the treatment of cancer
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 035 for Marketing in the field of cancer treatments
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Marketing in the field of cancer treatments; Marketing in the field of cancer treatments containing rivoceranibClass 035 for Marketing in the field of cancer treatments containing rivoceranib
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Webpage URL: None Provided
Webpage Date of Access: None Provided


Applicant proposes to amend the following:

Current:
Class 044 for Development of therapeutics for the treatment of cancer
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Development of therapeutics for the treatment of cancer; Development of therapeutics for the treatment of cancer containing rivoceranibClass 044 for Development of therapeutics for the treatment of cancer containing rivoceranib
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Webpage URL: None Provided
Webpage Date of Access: None Provided


OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: LSK BioPartners, Inc., DBA LSK BioPharma, a corporation of Utah, having an address of
      2825 East Cottonwood Parkway, Suite 180
      Salt Lake City, Utah 84121
      United States
      Email Address: XXXX
      801-635-7733
Proposed: Elevar Therapeutics, Inc., Formerly formerly LSK BioPartners, Inc., a corporation of Utah, having an address of
      2825 East Cottonwood Parkway, Suite 180
      Cottonwood Heights, Utah 84121
      United States
      Email Address: XXXX
      8012555335

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use RIVOCERANIB apart from the mark as shown.

Correspondence Information (current):
      Grant R. Clayton
      PRIMARY EMAIL FOR CORRESPONDENCE: docketclerk@clayhow.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gclayton@clayhow.com

The docket/reference number is T13458.
Correspondence Information (proposed):
      Grant R. Clayton
      PRIMARY EMAIL FOR CORRESPONDENCE: docketclerk@clayhow.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): gclayton@clayhow.com

The docket/reference number is T13458.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Grant R. Clayton/     Date: 02/09/2021
Signatory's Name: Grant R. Clayton
Signatory's Position: Attorney of Record, Utah Bar Member

Signatory's Phone Number: 801-255-5335 Signature method: Signed directly within the form

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Grant R. Clayton
   CLAYTON HOWARTH, P.C.
   
   P.O. BOX 1909
   SANDY, Utah 84091
Mailing Address:    Grant R. Clayton
   CLAYTON HOWARTH, P.C.
   P.O. BOX 1909
   SANDY, Utah 84091
        
Serial Number: 88620374
Internet Transmission Date: Tue Feb 09 16:48:27 ET 2021
TEAS Stamp: USPTO/ROA-XX.XX.XX.XX-202102091648273085
54-88620374-7601fc7d193de9faaa8311542c5a
c988f3fc785826dc2d79921d731137ecd1e95ea-
N/A-N/A-20210209163734046034