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 09/30/2020)

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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 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88916468 ZEPZELCA (Stylized and/or with Design, see http://tmng-al.uspto.gov /resting2/api/img/8891646 8/large) has been amended as follows:

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

Applicant hereby submits a copy of the corresponding foreign registration. Accordingly, if acceptable, Applicant hereby requests that the Examining Attorney delete the Section 1(b) basis and approve the application to proceed based solely on the foreign registration under Section 44(e).

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical preparations for the treatment of cancer for human and veterinary use in all animals
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:
Class 005 for Pharmaceutical preparations for the treatment of cancer for human and veterinary use in all animals
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(e), Based on Foreign Registration:For all applications: The applicant attaches a copy of [ European Union Trademark - EUTM registration number 018256143 registered 09/30/2020 with a renewal date of 06/17/2030 and an expiration date of 06/17/2030 ], 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:
FRU0-14115618818-16221428 6_._EUIPO_Certificate_of_ Registration__04511808_.pdf
Converted PDF file(s) ( 3 pages) Foreign Registration-1Foreign Registration-2Foreign Registration-3

ADDITIONAL STATEMENTS
Color Claim
The color(s) green, red, and grey is/are claimed as a feature of the mark.

Description of mark
The mark consists of the green stylized wording "ZEPZELCA", to the right of a double-helix design comprising three curving red lines each with a green and grey border along its right-hand side, to the right of a red shaded oval with a green and grey border along its right-hand side.

Significance of wording, letter(s), or numeral(s)
"ZEPZELCA" appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. The word(s) "ZEPZELCA" has no meaning in a foreign language.


The owner's/holder's current attorney information: Jeffrey H. Handelsman. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      United States
The docket/reference number is T60364.
      The phone number is 703-716-1191.
      The fax number is 703-716-1180.
      The email address is eteas@gbpatent.com

The owner's/holder's proposed attorney information: Jeffrey H. Handelsman. Other appointed attorneys are Neil F. Greenblum; Bruce H. Bernstein; William S. Boshnick; Jill M. Browning. Jeffrey H. Handelsman of GREENBLUM & BERNSTEIN, P.L.C., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1950 ROLAND CLARKE PLACE
      RESTON, Virginia 20191-1411
      United States
The docket/reference number is T60384.
      The phone number is 703-716-1191.
      The fax number is 703-716-1180.
      The email address is eteas@gbpatent.com

Jeffrey H. Handelsman submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.Correspondence Information (current):
      JEFFREY H. HANDELSMAN
      PRIMARY EMAIL FOR CORRESPONDENCE: eteas@gbpatent.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is T60364.
Correspondence Information (proposed):
      Jeffrey H. Handelsman
      PRIMARY EMAIL FOR CORRESPONDENCE: eteas@gbpatent.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is T60384.

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

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /Jeffrey H. Handelsman/      Date: 10/08/2020
Signatory's Name: Jeffrey H. Handelsman
Signatory's Position: Attorney for Applicant, MD Bar
Signatory's Phone Number: 703-716-1191


Response Signature
Signature: /Jeffrey H. Handelsman/     Date: 10/08/2020
Signatory's Name: Jeffrey H. Handelsman
Signatory's Position: Attorney for Applicant, MD Bar (Ref.: T60384)

Signatory's Phone Number: 703-716-1191

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:    JEFFREY H. HANDELSMAN
   GREENBLUM & BERNSTEIN, P.L.C.
   
   1950 ROLAND CLARKE PLACE
   RESTON, Virginia 20191-1411
Mailing Address:    Jeffrey H. Handelsman
   GREENBLUM & BERNSTEIN, P.L.C.
   1950 ROLAND CLARKE PLACE
   RESTON, Virginia 20191-1411
        
Serial Number: 88916468
Internet Transmission Date: Thu Oct 08 19:25:44 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-202010081925440
38050-88916468-750651e41ebe2d679593c8ba4
caac9a0c6474ba2612bcf37c8580e7af597767-N
/A-N/A-20201008192124979195