Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88768680 MYFEMBREE(Standard Characters, see http://uspto.report/TM/88768680/mark.png) has been amended as follows:

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

In the Office action dated April 14, 2020, the Trademark Examining Attorney indicated that Applicant submitted a printout from an intellectual property office's website to satisfy the Section 44(e) application basis and requested that Applicant perfect the Section 44(e) basis by submitting an acceptable true copy, photocopy, certification, or certified copy of a foreign registration issued to applicant by, or certified by, the intellectual property office in Applicant's country of origin. Applicant respectfully submits that the document submitted via a Voluntary Amendment on January 28, 2020 is a true copy of the registration certificate issued by the Swiss Federal Institute of Intellectual Property ("Swiss IPI"), with the seal of the Swiss IPI appearing on page 3 of the provided document, and that this registration certificate was provided to Applicant by its Swiss counsel handling that registration. Applicant also notes that this same form of registration certificate was accepted in Applicant's other applications which now are registered under Reg. Nos. 5,987,695 and 5,987,696. In view of the foregoing submissions and amendments to the Class 5 goods, Applicant respectfully submits that its application is in order for favorable action and requests that it be approved for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical preparations for human use; biologic preparations for medical and therapeutic purposes
Filing Basis: Section 44(d), Priority based on foreign filing: 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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. For a certification 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Switzerland application number 11029/2019 filed 08/21/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Pharmaceutical preparations for human use; Pharmaceutical preparations for human use for use in oncology, endocrinology, and in treatment of hormone related diseases and conditions and in treatment of women's health issues, namely, infertility, uterine fibroids and symptoms thereof, endometriosis and symptoms thereof, and symptoms of menopause; biologic preparations for medical and therapeutic purposes; biologic preparations for medical and therapeutic purposes for use in oncology, endocrinology, and in treatment of hormone related diseases and conditions and in treatment of women's health issues, namely, infertility, uterine fibroids and symptoms thereof, endometriosis and symptoms thereof, and symptoms of menopauseClass 005 for Pharmaceutical preparations for human use for use in oncology, endocrinology, and in treatment of hormone related diseases and conditions and in treatment of women's health issues, namely, infertility, uterine fibroids and symptoms thereof, endometriosis and symptoms thereof, and symptoms of menopause; biologic preparations for medical and therapeutic purposes for use in oncology, endocrinology, and in treatment of hormone related diseases and conditions and in treatment of women's health issues, namely, infertility, uterine fibroids and symptoms thereof, endometriosis and symptoms thereof, and symptoms of menopause
Filing Basis: Section 44(d), Priority based on foreign filing: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, and asserts a claim of priority based upon a foreign 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, and asserts a claim of priority based upon a foreign application. 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, 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 or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Switzerland application number 11029/2019 filed 08/21/2019]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Myovant Sciences GmbH a(n) gesellschaft mit beschränkter haftung (gmbh), legally organized under the laws of Switzerland, having an address of
      Viaduktstrasse 8
      Basel, 4051
      Switzerland

Proposed: Myovant Sciences GmbH, gesellschaft mit beschränkter haftung (gmbh) legally organized under the laws of Switzerland, having an address of
      Viaduktstrasse 8
      Basel, 4051
      Switzerland
      Email Address: XXXX
Correspondence Information (current):
      ALLISON STRICKLAND RICKETTS
      PRIMARY EMAIL FOR CORRESPONDENCE: ricketts-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ferraro-docket@fzlz.com

The docket/reference number is MYOV 1911029.
Correspondence Information (proposed):
      Allison Strickland Ricketts
      PRIMARY EMAIL FOR CORRESPONDENCE: ricketts-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): ferraro-docket@fzlz.com; jferraro@fzlz.com

The docket/reference number is MYOV 1911029.

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: /jmf/     Date: 09/26/2020
Signatory's Name: Joyce M. Ferraro
Signatory's Position: Attorney for Applicant, New York state bar member

Signatory's Phone Number: 2128135900

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:    ALLISON STRICKLAND RICKETTS
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Allison Strickland Ricketts
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
        
Serial Number: 88768680
Internet Transmission Date: Sat Sep 26 13:11:21 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2020092613112101
4215-88768680-75050ee319445ccf5a18ece1ab
95f587fc58fc4d91abfe3345fab46bb90ee4-N/A
-N/A-20200926130416096055