| To: | NIPRO CORPORATION (Efiling@cojk.com) |
| Subject: | U.S. Trademark Application Serial No. 88780996 - NECTX NEW ENGLAND CELL THERAPEUTICS - FUPO-2-59837 |
| Sent: | March 17, 2020 04:17:30 PM |
| Sent As: | ecom116@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88780996
Mark: NECTX NEW ENGLAND CELL THERAPEUTICS
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Correspondence Address: JERALD E. NAGAE, REG. NO. 29,418 CHRISTENSEN O'CONNOR JOHNSON KINDNESS
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Applicant: NIPRO CORPORATION
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Reference/Docket No. FUPO-2-59837
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: March 17, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SEARCH OF USPTO DATABASE OF MARKS
I. FOREIGN REGISTRATION CERTIFICATE REQUIRED
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).
II. DISCLAIMER REQUIRED
The attached evidence from Lexico shows “cell” means, “the smallest structural and functional unit of an organism” and “therapeutics” is defined as, “a treatment, therapy, or drug.” The applicant’s goods or services are or feature the smallest structural and functional unit of an organism. Additionally, the applicant’s goods or services are used as or are for treatment of illnesses. Because the applicant’s goods or services are or feature the smallest structural and functional unit of an organism and are used as or are for treatment of illnesses, “CELL THERAPEUTICS” merely describes a feature of or is generic for the applicant’s goods or services. Thus, the wording must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CELL THERAPEUTICS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
III. REQUIREMENT TO PROVIDE INFORMATION ABOUT WHERE THE GOODS WILL ORIGINATE AND/OR WHETHER THE SERVICES WILL BE RENDERED IN THE GEOGRAPHIC AREA IDENTIFIED IN THE MARK
A. Goods
B. Services
IV. REQUIREMENT TO AMEND THE IDENTIFICATION OF GOODS & SERVICES
General Information
To be a service, an activity must be primarily for the benefit of someone other than the applicant. While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others. In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970); See TMEP §1301.01(b)(i).
Because services are provided for the benefit of third parties, any service, even if definite and acceptable, must be rendered for the benefit of a party other than the applicant. Thus, any services that are not rendered for the benefit of a third party should be struck from the identification of services.
Class 5
The wording “Cell preparations for the treatment of diseases and disorders” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear and the illness being treated is not given. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Pharmaceutical preparations” in the identification of goods is indefinite and must be clarified because the illness being treated is not given.
Applicant may substitute the following wording, if accurate (suggestions are bold):
Class 5: Medical cell preparations for the treatment of kidney diseases and disorders; Pharmaceutical preparations for treating kidney diseases
Class 10
The wording “Medical instruments and apparatus for the treatment with cell preparations” in the identification of goods is indefinite and must be clarified because the common commercial name of the goods or illness being treated is not given.
The wording “Medical instruments and apparatus for cell culturing” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear.
The wording “Medical instruments and apparatus” in the identification of goods is indefinite and must be clarified because the common commercial name of the goods or illness being treated is not given. However, any suggestion would be encompassed by the proposed wording “Medical instruments and apparatus for the treatment with cell preparations, namely, dialyzers, needles for injections, fistula needles, winged needles, hemodialysis apparatus, medical tubing for hemodialysis, and dialysis.” Therefore, the ambiguous language should be struck from the identification of goods.
Applicant may substitute the following wording, if accurate (suggestions are bold):
Class 10: Medical instruments and apparatus for the
treatment with cell preparations, namely, dialyzers, needles for injections, fistula needles, winged needles, hemodialysis apparatus, medical tubing for hemodialysis, and
dialysis; Medical instruments and apparatus for cell culturing, namely, cell culture chambers; Medical instruments and apparatus
Class 40
Class 40 is sufficient as written.
Class 42
The wording “Custom cultivation of cells” in the identification of services is indefinite and must be clarified because the nature of the services is not clear and includes services classified in multiple classes.
The wording “Cultivation of cells for transplant taken from patients” in the identification of services is indefinite and must be clarified because the nature of the services is not clear and appears misclassified in Class 42.
Applicant may substitute the following wording, if accurate (suggestions are bold):
Class 42: Custom cultivation of cells, namely, human cell
development; Cultivation of cells for transplant taken from patients
Class 44: Performing surgery that removes transplantable cells from patients that are stored in a tissue bank
Class 44
The wording “Medical treatment services with cell preparations” in the identification of services is indefinite and must be clarified because the illness is not identified.
The wording “Medical treatment services with cultivated cells” in the identification of services is indefinite and must be clarified because the illness is not identified.
Applicant may substitute the following wording, if accurate (suggestions are bold):
Class 44: Medical treatment services with cell preparations for treating kidney diseases; Medical treatment services with cultivated cells for treating kidney diseases; Providing medical information
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.
V. REQUIREMENT TO PROVIDE INFORMATION ABOUT THE GOODS & SERVICES
1) The applicant claims it intends to use the proposed mark in connection with many disparate goods. For example, the applicant has identified cell and pharmaceutical preparations and nearly every medical instrument and apparatus. The attached evidence from the applicant’s websites show the applicant is predominately manufacturing medical instruments for treating renal disorders, various forms of syringes and needles, and guidewires. Since the applicant is predominately manufacturing medical instruments for treating renal disorders and various forms of needles, how does it intend to manufacture the numerous disparate goods identified in the application? How does the applicant intend to provide these goods to US consumers?
2) The applicant claims it intends to use the proposed mark in connection with many disparate services. For example, the applicant has identified processing of cells, cultivation of cells, and medical treatment services. Since the applicant is predominately manufacturing medical instruments for treating renal disorders and various forms of needles, how does it intend to provide the numerous disparate services identified in the application?
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. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
VI. SIGNATURE/SUBMISSION CONSTITUTES CERTIFICATION UNDER 37 C.F.R. §11.18(b)—ADVISORY
Any party who presents a document to the USPTO is subject to 37 C.F.R. §11.18(b). Lewis Silkin LLP v. Firebrand LLC, 129 USPQ2d 1015, 1020 n.8 (TTAB 2018). Thus, an attorney, applicant, or other party who signs or submits a document in connection with a trademark application is certifying that:
(1) All statements made in the document of the party’s own knowledge are true, all statements made on information and belief are believed to be true, and all statements made are made with the knowledge that, in any matter within the jurisdiction of the USPTO, any party who knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, is subject to the penalties under 18 U.S.C. §1001, including fines and imprisonment;
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, the document is not being presented for any improper purpose;
(3) All allegations or other factual contentions in the document have evidentiary support or are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(4) All denials of factual contentions in the document are warranted on the evidence or are reasonably based on a lack of information or belief.
See 37 C.F.R. §11.18(b); TMEP §§302, 611.01(a).
Violating 37 C.F.R. §11.18(b) may jeopardize the validity of an application and any resulting registration, and may lead the USPTO to impose sanctions and/or take other appropriate actions under 37 C.F.R. §11.18(c), which may include the following: rejecting the relevant document or according it less probative value; referring the practitioner’s conduct to the USPTO’s Office of Enrollment and Discipline for possible disciplinary action; excluding the practitioner or other party from practicing before, or otherwise submitting documents to, the USPTO; and requiring a party to be represented by a qualified practitioner in any current or future trademark matters before the USPTO.
How to respond. Click to file a response to this nonfinal Office action.
/Ryan Cianci/
Trademark Attorney
Law Office 116
571-270-3721
ryan.cianci@uspto.gov
RESPONSE GUIDANCE
