Response to Office Action

PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

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PTO- 1957

Approved for use through 11/30/2023. OMB 0651-0050

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88887109 COVI-SHIELD(Standard Characters, see http://uspto.report/TM/88887109/mark.png) has been amended as follows:

MARK
Applicant proposes to amend the mark as follows:
Current: COVI-SHIELD(Standard Characters, see http://uspto.report/TM/88887109/mark.png)
Proposed (USPTO generated image): COVISHIELD (Standard Characters, see mark)
The mark consists of standard characters, without claim to any particular font style, size, or color.

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

In connection with this Response, Applicant requests that its mark be amended by dropping the hyphen so that the mark is amended from COVI-SHIELD to COVISHIELD. Applicant submits that this proposed amendment is acceptable because it does not materially alter the character of the mark. Applicant further submits that with this proposed amendment to the mark, the mark is no longer merely descriptive and requests that the Section 2(e)(1) refusal be withdrawn.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical preparations for the treatment of infectious, viral, inflammatory, immunological, autoimmune and cardiovascular diseases and disorders; Pharmaceutical preparations for the treatment of COVID-19/Coronavirus
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.


Proposed:

Tracked Text Description: Pharmaceutical preparations for the treatment of infectious, viral, inflammatory, immunological, autoimmune and cardiovascular diseases and disorders; Pharmaceutical preparations for the treatment of infectious, viral, inflammatory, immunological, autoimmune and cardiovascular diseases and disorders, namely, coronavirus; Pharmaceutical preparations for the treatment of COVID-19/Coronavirus; Pharmaceutical preparations for the treatment of coronavirusClass 005 for Pharmaceutical preparations for the treatment of infectious, viral, inflammatory, immunological, autoimmune and cardiovascular diseases and disorders, namely, coronavirus; Pharmaceutical preparations for the treatment of coronavirus
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.

Webpage URL: None Provided
Webpage Date of Access: None Provided


ADDITIONAL STATEMENTS
Miscellaneous Statement
In response to the request for information, attached are copies of a webpage from Applicant's website, URL http://sorrentotherapeutics.com/research/covid-19/covishield/, taken on April 19, 2021 (and screenshot from same URL due to formatting issues), which concern the mark at issue. Applicant submits the following responses to the questions asked by the Examining Attorney: a. Are the goods for the treatment and/or purpose of the prevention and/or protection against the coronavirus? Yes b. Are the goods for the purpose of shielding against the coronavirus? Yes

Original PDF file:
mis-16072199130-202104191 95450325136_._COVISHIELD_ -_Sorrento_Therapeutics.pdf
Converted PDF file(s) ( 2 pages) Miscellaneous File1Miscellaneous File2
Original PDF file:
mis-16072199130-202104191 95450325136_._COVISHIELD_ -_Sorrento_Therapeutics_s creenshot.pdf
Converted PDF file(s) ( 1 page) Miscellaneous File1
Correspondence Information (current):
      LINDSAY J. HULLEY
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@rutan.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 035359.0025T.
Correspondence Information (proposed):
      Lindsay J. Hulley
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@rutan.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is 035359.0025T.

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: /Lindsay J. Hulley/     Date: 04/19/2021
Signatory's Name: Lindsay J. Hulley
Signatory's Position: Attorney of record

Signatory's Phone Number: 714-641-5100 Signature method: Signed directly within the form

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:    LINDSAY J. HULLEY
   RUTAN & TUCKER, LLP
   14TH FLOOR
   611 ANTON BOULEVARD
   COSTA MESA, California 92626
Mailing Address:    Lindsay J. Hulley
   RUTAN & TUCKER, LLP
   14TH FLOOR
   611 ANTON BOULEVARD
   COSTA MESA, California 92626
        
Serial Number: 88887109
Internet Transmission Date: Mon Apr 19 20:22:22 ET 2021
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XXX-202104192022224
67791-88887109-77099e7441106c8b15239543f
a6cb5215716b343c7ec8585f5a9402aaed081-N/
A-N/A-20210419195450325136