To: | Sorrento Therapeutics, Inc. (trademarks@rutan.com) |
Subject: | U.S. Trademark Application Serial No. 88846389 - COVIDTRAP - 035359.0013T |
Sent: | September 02, 2020 05:35:39 AM |
Sent As: | ecom130@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88846389
Mark: COVIDTRAP
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Correspondence Address: |
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Applicant: Sorrento Therapeutics, Inc.
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Reference/Docket No. 035359.0013T
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: September 02, 2020
SEARCH OF USPTO DATABASE OF MARKS
Applicant’s mark includes the wording “COVID”, which indicates that applicant’s goods are related to COVID-19. According to Dictionary.com, COVID-19, (Coronavirus Disease 2019), a disease that was declared a global pandemic, can also be referred to by the shorted form COVID. See http://www.dictionary.com/browse/covid-19. Further, the attached evidence shows that the phrase COVID is used as an abbreviation of COVID-19:
• The White House http://www.whitehouse.gov/openingamerica/ (released guidelines for re-opening businesses and stated “State and local officials may need to tailor the application of these criteria to local circumstances (e.g., metropolitan areas that have suffered severe COVID outbreaks, rural and suburban areas where outbreaks have not occurred or have been mild).”)
• The U.S. Department of Health & Human Services http://www.acf.hhs.gov/cb/events/cw-worker-safety-time-covid (offered a “Child Welfare Worker Safety in the Time of COVID” webinar.)
• The New York Times http://www.nytimes.com/2020/06/26/opinion/coronavirus-brain-damage-dementia.html (article titled “Can Covid Damage the Brain?”)
The relationship of applicant’s goods to the COVID-19 pandemic is likely to affect the purchasing decision of a significant portion of relevant consumers because the ability of the goods to treat COVID-19 is highly desirable for consumers. However, if some or all of the goods will not in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to the following, if accurate:
“Fusion protein pharmaceutical preparations for the treatment or prevention of infectious diseases, namely, COVID-19 and Coronavirus; Pharmaceutical preparations for the treatment of COVID-19/Coronavirus” in Class 005
Specimen of Use Advisory: As SARS-CoV-2 is a novel coronavirus and COVID-19 has never been seen in humans before late 2019, goods or services related to coronavirus transmission and the treatment of COVID-19 are in early stages of development. See http://www.fda.gov/consumers/consumer-updates/beware-fraudulent-coronavirus-tests-vaccines-andtreatments. Upon consideration of an allegation of use, if the specimen of use shows the applied-for mark used with goods that make unproven claims regarding coronaviruses and COVID-19, registration may be refused on the basis the applied-for mark includes deceptive matter.
INFORMATION ABOUT GOODS REQUIRED
The nature of the goods with which applicant intends to use or is using the mark is not clear from the present record and additional information is required. To permit proper examination of the application, applicant must provide the following:
(1) A written statement explaining whether all of the goods will treat COVID-19.
(2) A written statement describing in detail the nature, purpose, and channels of trade of the goods.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
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 website information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, if applicant’s response to the request for information indicates that the goods identified in the application do not or will not treat COVID-19 registration may be refused on the ground that the applied-for mark is deceptive. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); In re ALP of S. Beach Inc., 79 USPQ2d 1009, 1010 (TTAB 2006); TMEP §1203.02-.02(e). Registration may also be refused, in the alternative, on the ground that the applied-for mark is deceptively misdescriptive. 15 U.S.C. §1052(e)(1); see In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514, 1515-16 (TTAB 1993); TMEP §§1203.02(e), 1209.04.
Please email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the issues in this Office action. See TMEP §§705.02, 709.06.
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.
/Ms. Tasneem Hussain/
Trademark Examining Attorney
Law Office 130
tasneem.hussain@uspto.gov (preferred)
571.272.8273
RESPONSE GUIDANCE