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. 88823358 SUNLENCA(Standard Characters, see http://uspto.report/TM/88823358/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Antiviral pharmaceutical preparations; anti-infective pharmaceutical preparations; anti-fibrotic pharmaceutical preparations; pharmaceutical preparations for treatment and prevention of HIV infection; pharmaceutical preparations for the treatment of liver diseases and disorders; pharmaceutical preparations for the treatment of hematological diseases and disorders; pharmaceutical preparations for the treatment of oncological diseases and disorders; pharmaceutical preparations for the treatment of inflammatory diseases and disorders; pharmaceutical preparations for the treatment of autoimmune diseases and disorders; pharmaceutical preparations for the treatment of respiratory and pulmonary diseases and disorders; pharmaceutical preparations for the treatment of kidney and nephropathic diseases and disorders; pharmaceutical preparations for the treatment of arthritis; pharmaceutical preparations for treatment of gastrointestinal diseases and disorders
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.

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[ Ireland application number 201901875 filed 10/16/2019]. 15 U.S.C.Section 1126(d), as amended.


Proposed:
Class 005 for Antiviral pharmaceutical preparations; anti-infective pharmaceutical preparations; anti-fibrotic pharmaceutical preparations; pharmaceutical preparations for treatment and prevention of HIV infection; pharmaceutical preparations for the treatment of liver diseases and disorders; pharmaceutical preparations for the treatment of hematological diseases and disorders; pharmaceutical preparations for the treatment of oncological diseases and disorders; pharmaceutical preparations for the treatment of inflammatory diseases and disorders; pharmaceutical preparations for the treatment of autoimmune diseases and disorders; pharmaceutical preparations for the treatment of respiratory and pulmonary diseases and disorders; pharmaceutical preparations for the treatment of kidney and nephropathic diseases and disorders; pharmaceutical preparations for the treatment of arthritis; pharmaceutical preparations for treatment of gastrointestinal diseases and disorders
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.

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 [ Ireland application number 201901875 filed 10/16/2019]. 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.

Filing Basis: Section 44(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ Ireland registration number 262122 registered 07/08/2020 with a renewal date of __________ and an expiration date of 10/15/2029 ], and translation thereof, if appropriate. 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. 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 on or 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 or services that meet the certification standards of the applicant.
Original PDF file:
FRU0-19215623610-11113284 6_._10092_SUNLENCA_IE_Cer tificate_of_Registration_ -_SUNLENCA.pdf
Converted PDF file(s) ( 2 pages) Foreign Registration-1Foreign Registration-2

The foreign registration that is the basis of the U.S. application under §44(e) of the Trademark Act (15 U.S.C. §1126(e)) includes a claim of standard characters or the country of origin's standard character equivalent.

ADDITIONAL STATEMENTS
Translation
The wording SUNLENCA has no meaning in a foreign language.


Significance of wording, letter(s), or numeral(s)
The word(s) SUNLENCA has no meaning in a foreign language.


Miscellaneous Statement
SUNLENCA is a coined word and has no meaning in English or any other language.

Correspondence Information (current):
      GRETCHEN R. STROUD
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@gilead.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMTeam@gilead.com
Correspondence Information (proposed):
      Gretchen R. Stroud
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@gilead.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): TMTeam@gilead.com

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)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /jack wessel/     Date: 07/22/2020
Signatory's Name: Jack Wessel
Signatory's Position: Attorney of Record, New York Bar Member

Signatory's Phone Number: 650.425.8540

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:    GRETCHEN R. STROUD
   GILEAD SCIENCES, INC.
   
   333 LAKESIDE DRIVE
   FOSTER CITY, Delaware 94404
Mailing Address:    Gretchen R. Stroud
   GILEAD SCIENCES, INC.
   333 LAKESIDE DRIVE
   FOSTER CITY, Delaware 94404
        
Serial Number: 88823358
Internet Transmission Date: Wed Jul 22 11:42:54 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202007221142546
91014-88823358-740b3c7f26039448919d8d566
64759862a73e7c1c71381bc44f668f5408d75a61
b-N/A-N/A-20200722111132846872