To: | Teva Pharmaceutical Industries Ltd. (laurence.rickles@tevapharm.com) |
Subject: | U.S. Trademark Application Serial No. 88831374 - TEVA - N/A |
Sent: | June 06, 2020 05:36:58 PM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88831374
Mark: TEVA
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Correspondence Address:
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Applicant: Teva Pharmaceutical Industries Ltd.
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Reference/Docket No. N/A
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: June 06, 2020
SEARCH OF OFFICE’S DATABASE OF MARKS
SECTIONS 1 AND 45 REFUSAL - FAILURE TO SHOW USE IN COMMERCE
When determining whether a mark is used in connection with the services in the application, a key consideration is the perception of the user. In re JobDiva, Inc., 843 F.3d 936, 942, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1381-82, 103 USPQ2d 1672, 1676 (Fed Cir. 2012)). A specimen must show the mark used in a way that would create in the minds of potential consumers a sufficient nexus or direct association between the mark and the services being offered. See 37 C.F.R. §2.56(b)(2); In re Universal Oil Prods. Co., 476 F.2d 653, 655, 177 USPQ2d 456, 457 (C.C.P.A. 1973); TMEP §1301.04(f)(ii).
To show a direct association, specimens consisting of advertising or promotional materials must (1) explicitly reference the services and (2) show the mark used to identify the services and their source. In re The Cardio Grp., LLC, 2019 USPQ2d 227232, at *2 (TTAB 2019) (quoting In re WAY Media, LLC, 118 USPQ2d 1697, 1698 (TTAB 2016)); TMEP §1301.04(f)(ii). Although the exact nature of the services does not need to be specified in the specimen, there must be something which creates in the mind of the purchaser an association between the mark and the services. In re Adair, 45 USPQ2d 1211, 1215 (TTAB 1997) (quoting In re Johnson Controls Inc., 33 USPQ2d 1318, 1320 (TTAB 1994)).
In the present case, the specimens do not show a direct association between the mark and services in that the specimens consist of photographs of advertising materials indicating that applicant provides medicines, which could be a reference to International Class 44 pharmaceutical compounding and dispensing services, International Class 42 pharmaceutical product development, or International Class 40 pharmaceutical manufacturing. However, applicant has identified its services as International Class 42 “research services in the field of pharmaceuticals.” The specimens fail to directly reference any research services performed by applicant; thus, the specimens fail to show the mark in use in commerce with any of the identified services.
Examples of specimens. Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
ISSUE REGARDING APPLICANT’S ENTITY TYPE
Applicant sets forth in the application the legal entity “limited company” and applicant’s country of organization as Israel. The designation “limited company” is typically an acceptable entity designation in a U.S. application for applicants from Commonwealth countries. See TMEP §803.03(i). However, applicant has identified an address and/or country of organization that is not a Commonwealth country (see http://www.thecommonwealth.org/Internal/142227/members/).
Therefore, applicant must clarify the legal entity in the application. See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i). Applicant may do so by (1) specifying the entity type that would be the equivalent of a “limited company” in the United States or (2) providing a description of the nature of the foreign entity that is applying. See TMEP §803.03(i).
The English translation of “TEVA” in the mark is “nature”.
TMEP §809.03. See attached translation evidence.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Monica L. Beggs/
Examining Attorney
Law Office 105
(571) 272-6614
monica.beggs@uspto.gov
RESPONSE GUIDANCE