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: January 07, 2020

 

 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 Goods and Services
• Amended Description of Mark Required
• Foreign Registration Required
• Disclaimer Required

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods and services is indefinite and must be clarified to further specify the nature, use, or subject matter of certain items, as set out in bold below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In Class 1, certain entries are indefinite because they do not specify if the chemicals and/or preparations are used in industry, science, or other non-medical use. In Class 5, certain entries are indefinite because they do not identify the disorder/condition that is treated or prevented. Further, some entries in this class must identify whether the goods are used for medical purposes. Finally, throughout the three classes certain entries require clarification as to the fields of use or other types of services offered in the class.

 

The following substitute wording is suggested, if accurate:

 

Class 1

 

Chemicals for use in industry and science; chemical substances, chemical materials and chemical preparations, and natural elements, namely, {specify the nature and non-medical use of the goods, e.g., chemical preparations for scientific purposes, chemicals for industrial purposes, etc.}; chemical, biochemical, biological and biotechnological preparations for use in industry and science; protein, protein fragments, amino acids, antibodies and fragments thereof for industrial, scientific or research purposes, other than for medical or veterinary use; chemical preparations comprising small molecules for use in industry and science; molecular libraries, comprising libraries of chemical preparations for use in industry and science; small molecule library, comprising libraries of chemical preparations for use in industry and science; antibody library, comprising libraries of antibodies for scientific or research use; reagents for use in the development of antibodies, proteins for binding or detecting antibodies and antibody-producing hybridoma cells for scientific or research purposes or for industrial use; detectably labelled compound for industrial, scientific purposes; diagnostic reagents for industrial, scientific or research purposes; immunological reagents for industrial, scientific or research purposes; biological cell, biological tissue culture for use in non-medical research laboratories; diagnostic tools in the nature of preparations, companion diagnostic agents, biomarkers, imaging agents, PET-Imaging compounds for industrial, scientific purposes other than for medical or veterinary use; diagnostic reagents for industrial, scientific or research purposes other than for medical or veterinary use

 

Class 5

 

Pharmaceuticals, medical and veterinary preparations for the treatment of {specify condition to be treated}; diagnostic preparations and materials for medical or veterinary purposes; diagnostic tools in the nature of {specify Class 5 goods}, companion diagnostic agents, biomarkers, imaging agents, PET-Imaging compounds, all for medical purposes; chemical preparations for medical purposes, namely, for {specify disease or condition to be prevented or treated or health goal to be achieved}; chemico-pharmaceutical preparation for medical purposes, namely, for {specify disease or condition to be prevented or treated or health goal to be achieved}; antibodies, antibody fragments and antibody derivatives for use in disease testing for medical purposes; Diagnostic preparations in the nature of small molecule compounds for medical purposes; PET-Imaging compounds in the nature of diagnostic radiopharmaceutical agent for use in PET imaging; Diagnostic preparations in the nature of companion compound for medical use; Diagnostic preparations in the nature of biomarkers for medical use; vaccines; antigenic peptide for the treatment of {indicate specific disease or condition}; Diagnostic preparations in the nature of protein or protein fragments for medical use; diagnostic reagents for medical purposes; diagnostic antibodies for medical purposes

 

Class 42

 

Scientific and technological services, namely, {specify type of services, e.g., scientific research, analysis, testing, etc.} in the field of {indicate field or subject matter} and research activities relating thereto; providing access to a proprietary technology platform containing antibodies, vaccines and small molecules that gives users the ability to {indicate functions or tasks that the technology enables}; biological research services; chemical research services in the field of {specify medical field, treatment, or procedure, e.g., radiology, chemotherapy, coronary artery bypass surgery, etc.}; medical research services; conducting clinical trials for others; scientific and medical laboratory services in biotechnology, chemistry, pharmacy, molecular science and immunotherapy; providing medical and scientific research information in the field of biotechnology, chemistry, pharmacy, molecular science, immunotherapy, therapeutics, diagnostics and clinical trials; scientific research, development and consultancy in the field of biotechnology, chemistry, pharmacy, molecular science, immunotherapy, therapeutics, diagnostics and clinical trials; development of test procedures, assays, test reagents, PET-imaging, companion diagnostic biomarkers, antibodies, vaccines and test kits for the field of biotechnology, chemistry, pharmacy, molecular science, immunotherapy, therapeutics, diagnostics and clinical trials; biological research, namely, screening and selection of pharmaceutical active substances from biological and biotechnological preparations; custom design and development of biochemical assays; research and development, namely, vaccine and antibody engineering

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See TMEP §1402.07(e). Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and services identified in the foreign registration. 37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

AMENDED DESCRIPTION OF MARK REQUIRED

 

The drawing shows the applied-for mark in various colors, including white and black; however, the color claim and description of the mark do not reference the colors white or black. The color claim and description must be complete and reference all the colors in the mark. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. Therefore, applicant must reference the color black in relation to the literal element and clarify whether white is used as a color in the mark or to indicate background, outlining, shading, and/or transparent areas. TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:

 

(1)       If white is a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where white appears in the literal and/or design elements of the mark. The following color claim and description are suggested, if accurate:

 

Color claim: “The colors black, white, yellow, orange, and red are claimed as a feature of the mark.”

 

Description: “The mark consists of two interlocking circles to the left of the black text, “AC IMMUNE”. One circle is yellow and the other circle is red, each with white in the center. Where the circles interlock, they are orange. The outer edges of the circles are thinner than the inner portions of the circles.”

 

(2)       If white is not a feature of the mark, applicant must amend the description to state that black, white, and/or gray represent background, outlining, shading and/or transparent areas and are not part of the mark. The following description is suggested, if accurate:

 

Color claim: “The colors black, yellow, orange, and red are claimed as a feature of the mark.”

 

“The mark consists of two interlocking circles to the left of the black text, “AC IMMUNE”. One circle is yellow and the other circle is red. Where the circles interlock, they are orange. The outer edges of the circles are thinner than the inner portions of the circles. The color white represents background, outlining, shading, and/or transparent area and is not part of the mark.”

 

TMEP §807.07(d).

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4). However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 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).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis. See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b).

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis. See 37 C.F.R. §2.35(b)(1); TMEP §806.04. The foreign registration alone may serve as the basis for obtaining a U.S. registration. See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

DISCLAIMER REQUIRED

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the word “IMMUNE” because it is not inherently distinctive. This term is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).

 

The attached evidence from Merriam-Webster shows that the wording in applicant’s identification of goods and services (specifically, “antibody,” “antigen,” and “immunotherapy”) all relate to the “IMMUNE” system or immunity. Thus, this wording describes a feature of applicant’s goods and services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “IMMUNE” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

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 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.  

 

 

/Scott Kumis/

Scott Kumis

Trademark Examining Attorney

Law Office 125

Phone: 571-272-2693

Email: scott.kumis@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 January 07, 2020 for

U.S. Trademark Application Serial No. 88636116

 

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. 

 

 

/Scott Kumis/

Scott Kumis

Trademark Examining Attorney

Law Office 125

Phone: 571-272-2693

Email: scott.kumis@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 January 07, 2020, 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.”