Response to Office Action

EUROAPI

Sanofi

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

Response to Office Action


The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER 90302923
LAW OFFICE ASSIGNED LAW OFFICE 104
MARK SECTION
MARK mark
LITERAL ELEMENT EUROAPI
STANDARD CHARACTERS YES
USPTO-GENERATED IMAGE YES
MARK STATEMENT The mark consists of standard characters, without claim to any particular font style, size or color.
GOODS AND/OR SERVICES SECTION (001) (current)
INTERNATIONAL CLASS 001
DESCRIPTION Chemical products for use in industry and science
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
        FOREIGN FILING DATE 10/19/2020
GOODS AND/OR SERVICES SECTION (001) (proposed)
INTERNATIONAL CLASS 001
TRACKED TEXT DESCRIPTION
Chemical products for use in industry and science; Chemicals for use in industry and science
FINAL DESCRIPTION Chemicals for use in industry and science
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
       FOREIGN FILING DATE 10/19/2020
       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.
GOODS AND/OR SERVICES SECTION (005) (current)
INTERNATIONAL CLASS 005
DESCRIPTION
Pharmaceutical products for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; hormones; vitamins; dietetic and food substances adapted for medical use; bacterial preparations for medical and veterinary use; disinfectants for hygienic purposes; medicated supplements for foodstuffs for medical or veterinary use; dietetic foods and beverages adapted for veterinary and medical use; food supplements for human beings and animals; disinfectants
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
        FOREIGN FILING DATE 10/19/2020
GOODS AND/OR SERVICES SECTION (005) (proposed)
INTERNATIONAL CLASS 005
TRACKED TEXT DESCRIPTION
Pharmaceutical products for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; Pharmaceutical preparations for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; hormones; vitamins; dietetic and food substances adapted for medical use; dietetic foods adapted for medical use; bacterial preparations for medical and veterinary use; disinfectants for hygienic purposes; medicated supplements for foodstuffs for medical or veterinary use; dietetic foods and beverages adapted for veterinary and medical use; food supplements for human beings and animals; disinfectants; biochemicals, namely, monoclonal antibodies for pharmaceutical use
FINAL DESCRIPTION
Pharmaceutical preparations for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; hormones; vitamins; dietetic foods adapted for medical use; bacterial preparations for medical and veterinary use; disinfectants for hygienic purposes; medicated supplements for foodstuffs for medical or veterinary use; dietetic foods and beverages adapted for veterinary and medical use; food supplements for human beings and animals; disinfectants; biochemicals, namely, monoclonal antibodies for pharmaceutical use
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
       FOREIGN FILING DATE 10/19/2020
       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.
GOODS AND/OR SERVICES SECTION (040) (current)
INTERNATIONAL CLASS 040
DESCRIPTION
Treatment of chemicals; biochemicals, namely, monoclonal antibodies for pharmaceutical use; Technical and scientific services, namely, for the processing of chemicals in the field of pharmaceuticals
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
        FOREIGN FILING DATE 10/19/2020
GOODS AND/OR SERVICES SECTION (040) (proposed)
INTERNATIONAL CLASS 040
TRACKED TEXT DESCRIPTION
Treatment of chemicals; Treatment of chemicals, namely, custom manufacture and custom synthesis of pharmaceuticals and active pharmaceutical ingredients; biochemicals, namely, monoclonal antibodies for pharmaceutical use; Technical and scientific services, namely, providing technical information in the field of pharmaceutical manufacturing; Technical and scientific services, namely, for the processing of chemicals in the field of pharmaceuticals
FINAL DESCRIPTION
Treatment of chemicals, namely, custom manufacture and custom synthesis of pharmaceuticals and active pharmaceutical ingredients; Technical and scientific services, namely, providing technical information in the field of pharmaceutical manufacturing
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
       FOREIGN FILING DATE 10/19/2020
       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.
GOODS AND/OR SERVICES SECTION (042) (current)
INTERNATIONAL CLASS 042
DESCRIPTION
Research and development services in the field of health and biotechnologies, namely, research in the area of the development of new active elements; research in the area of a means of synthesis in the field of pharmaceutical products; scientific study and research in the area of industrial quality; development of methods of analysis for chemical and pharmaceutical products and bioorganics; development and studies of analytical methods checking chemical reactions; Scientific and technological services, namely, consulting and assistance in the field of chemical manufacturing and pharmaceuticals, including experimental and production processes and installations; scientific and technical services for auditing industrial installations; research and development services in the field of pharmaceuticals; research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific services, namely, scientific research and industrial analysis in the field of pharmaceuticals, chemicals, and agrochemical and industrial processes; scientific services, namely, scientific analysis allowing the identification and physical characterization of chemical molecules; scientific and technological services, namely, applied research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; formulation and pre-formulation process design for pharmaceutical, chemical or agrochemical products; engineering services, namely, formulation, process evaluation and project management in the scientific and industrial fields, mainly in the chemical and pharmaceutical fields; engineering services for chemical and organic products and the processing thereof in the field of basic and industrial technology; management and licensing services of industrial property rights and technology transfer matters; scientific and technological services, namely, consulting and assistance for the manufacture of chemicals and pharmaceuticals, including experimental and production processes and installations; scientific and technical services, namely, auditing for industrial installations
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
        FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
        FOREIGN FILING DATE 10/19/2020
GOODS AND/OR SERVICES SECTION (042) (proposed)
INTERNATIONAL CLASS 042
TRACKED TEXT DESCRIPTION
Research and development services in the field of health and biotechnologies, namely, research in the area of the development of new active elements; research in the area of a means of synthesis in the field of pharmaceutical products; scientific study and research in the area of industrial quality; development of methods of analysis for chemical and pharmaceutical products and bioorganics; development and studies of analytical methods checking chemical reactions; Scientific and technological services, namely, consulting and assistance in the field of chemical manufacturing and pharmaceuticals, including experimental and production processes and installations; Scientific and technological services, namely, consulting and assistance in the research and development of pharmaceuticals; scientific and technical services for auditing industrial installations; scientific and technical services, namely, scientific analysis of industrial installations; research and development services in the field of pharmaceuticals; scientific research and development services in the field of pharmaceuticals; research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; scientific research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific services, namely, scientific research and industrial analysis in the field of pharmaceuticals, chemicals, and agrochemical and industrial processes; scientific services, namely, scientific analysis allowing the identification and physical characterization of chemical molecules; scientific and technological services, namely, applied research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; scientific and technological services, namely, applied scientific research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; formulation and pre-formulation process design for pharmaceutical, chemical or agrochemical products; engineering services, namely, formulation, process evaluation and project management in the scientific and industrial fields, mainly in the chemical and pharmaceutical fields; engineering services for chemical and organic products and the processing thereof in the field of basic and industrial technology; management and licensing services of industrial property rights and technology transfer matters; scientific and technological services, namely, consulting and assistance in the research and development of chemicals and pharmaceuticals, including experimental and production processes and installations; scientific and technological services, namely, consulting and assistance for the manufacture of chemicals and pharmaceuticals, including experimental and production processes and installations; scientific and technical services, namely, auditing for industrial installations
FINAL DESCRIPTION
Research and development services in the field of health and biotechnologies, namely, research in the area of the development of new active elements; research in the area of a means of synthesis in the field of pharmaceutical products; scientific study and research in the area of industrial quality; development of methods of analysis for chemical and pharmaceutical products and bioorganics; development and studies of analytical methods checking chemical reactions; Scientific and technological services, namely, consulting and assistance in the research and development of pharmaceuticals; scientific and technical services, namely, scientific analysis of industrial installations; scientific research and development services in the field of pharmaceuticals; scientific research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; scientific research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific services, namely, scientific research and industrial analysis in the field of pharmaceuticals, chemicals, and agrochemical and industrial processes; scientific services, namely, scientific analysis allowing the identification and physical characterization of chemical molecules; scientific and technological services, namely, applied scientific research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; formulation and pre-formulation process design for pharmaceutical, chemical or agrochemical products; engineering services, namely, formulation, process evaluation and project management in the scientific and industrial fields, mainly in the chemical and pharmaceutical fields; engineering services for chemical and organic products and the processing thereof in the field of basic and industrial technology; scientific and technological services, namely, consulting and assistance in the research and development of chemicals and pharmaceuticals, including experimental and production processes and installations
        WEBPAGE URL None Provided
        WEBPAGE DATE OF ACCESS None Provided
FILING BASIS Section 1(b)
FILING BASIS Section 44(d)
       FOREIGN APPLICATION NUMBER 4692947
       FOREIGN APPLICATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY France
       FOREIGN FILING DATE 10/19/2020
       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.
CORRESPONDENCE INFORMATION (current)
NAME KAREN LIM
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE klim-docket@fzlz.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBER SYN 2010687
CORRESPONDENCE INFORMATION (proposed)
NAME Karen Lim
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE klim-docket@fzlz.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBER SYN 2010687
SIGNATURE SECTION
RESPONSE SIGNATURE /kl/
SIGNATORY'S NAME Lim, Karen
SIGNATORY'S POSITION Attorney of record, New York bar member
SIGNATORY'S PHONE NUMBER 2128135900
DATE SIGNED 02/11/2021
ROLE OF AUTHORIZED SIGNATORY Authorized U.S.-Licensed Attorney
SIGNATURE METHOD Sent to third party for signature
FILING INFORMATION SECTION
SUBMIT DATE Thu Feb 11 14:00:46 ET 2021
TEAS STAMP USPTO/ROA-XX.XXX.XXX.XX-2
0210211140046067464-90302
923-7607281bc1fb0a748f5ff
911d89f16941d13d9b3d9e2b4
27aba8c042b13f395266-N/A-
N/A-20210211104801081852



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. 90302923 EUROAPI(Standard Characters, see http://uspto.report/TM/90302923/mark.png) has been amended as follows:

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 001 for Chemical products for use in industry and science
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[ France application number 4692947 filed 10/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Chemical products for use in industry and science; Chemicals for use in industry and scienceClass 001 for Chemicals for use in industry and science
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


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 [ France application number 4692947 filed 10/19/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 005 for Pharmaceutical products for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; hormones; vitamins; dietetic and food substances adapted for medical use; bacterial preparations for medical and veterinary use; disinfectants for hygienic purposes; medicated supplements for foodstuffs for medical or veterinary use; dietetic foods and beverages adapted for veterinary and medical use; food supplements for human beings and animals; disinfectants
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[ France application number 4692947 filed 10/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Pharmaceutical products for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; Pharmaceutical preparations for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; hormones; vitamins; dietetic and food substances adapted for medical use; dietetic foods adapted for medical use; bacterial preparations for medical and veterinary use; disinfectants for hygienic purposes; medicated supplements for foodstuffs for medical or veterinary use; dietetic foods and beverages adapted for veterinary and medical use; food supplements for human beings and animals; disinfectants; biochemicals, namely, monoclonal antibodies for pharmaceutical useClass 005 for Pharmaceutical preparations for the treatment of cardiovascular diseases, central and peripheral nervous system diseases, respiratory diseases, cancer, allergies, gynecological diseases, rheumatic diseases, urological diseases, gastroenterological diseases, infectious diseases, eye disease, dermatological diseases, autoimmune diseases, blood diseases, genital diseases, endocrine diseases, intestinal diseases, internal medicine diseases; hormones; vitamins; dietetic foods adapted for medical use; bacterial preparations for medical and veterinary use; disinfectants for hygienic purposes; medicated supplements for foodstuffs for medical or veterinary use; dietetic foods and beverages adapted for veterinary and medical use; food supplements for human beings and animals; disinfectants; biochemicals, namely, monoclonal antibodies for pharmaceutical use
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


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 [ France application number 4692947 filed 10/19/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 040 for Treatment of chemicals; biochemicals, namely, monoclonal antibodies for pharmaceutical use; Technical and scientific services, namely, for the processing of chemicals in the field of pharmaceuticals
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[ France application number 4692947 filed 10/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Treatment of chemicals; Treatment of chemicals, namely, custom manufacture and custom synthesis of pharmaceuticals and active pharmaceutical ingredients; biochemicals, namely, monoclonal antibodies for pharmaceutical use; Technical and scientific services, namely, providing technical information in the field of pharmaceutical manufacturing; Technical and scientific services, namely, for the processing of chemicals in the field of pharmaceuticalsClass 040 for Treatment of chemicals, namely, custom manufacture and custom synthesis of pharmaceuticals and active pharmaceutical ingredients; Technical and scientific services, namely, providing technical information in the field of pharmaceutical manufacturing
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


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 [ France application number 4692947 filed 10/19/2020]. 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.

Applicant proposes to amend the following:

Current:
Class 042 for Research and development services in the field of health and biotechnologies, namely, research in the area of the development of new active elements; research in the area of a means of synthesis in the field of pharmaceutical products; scientific study and research in the area of industrial quality; development of methods of analysis for chemical and pharmaceutical products and bioorganics; development and studies of analytical methods checking chemical reactions; Scientific and technological services, namely, consulting and assistance in the field of chemical manufacturing and pharmaceuticals, including experimental and production processes and installations; scientific and technical services for auditing industrial installations; research and development services in the field of pharmaceuticals; research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific services, namely, scientific research and industrial analysis in the field of pharmaceuticals, chemicals, and agrochemical and industrial processes; scientific services, namely, scientific analysis allowing the identification and physical characterization of chemical molecules; scientific and technological services, namely, applied research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; formulation and pre-formulation process design for pharmaceutical, chemical or agrochemical products; engineering services, namely, formulation, process evaluation and project management in the scientific and industrial fields, mainly in the chemical and pharmaceutical fields; engineering services for chemical and organic products and the processing thereof in the field of basic and industrial technology; management and licensing services of industrial property rights and technology transfer matters; scientific and technological services, namely, consulting and assistance for the manufacture of chemicals and pharmaceuticals, including experimental and production processes and installations; scientific and technical services, namely, auditing for industrial installations
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[ France application number 4692947 filed 10/19/2020]. 15 U.S.C.Section 1126(d), as amended.


Proposed:

Tracked Text Description: Research and development services in the field of health and biotechnologies, namely, research in the area of the development of new active elements; research in the area of a means of synthesis in the field of pharmaceutical products; scientific study and research in the area of industrial quality; development of methods of analysis for chemical and pharmaceutical products and bioorganics; development and studies of analytical methods checking chemical reactions; Scientific and technological services, namely, consulting and assistance in the field of chemical manufacturing and pharmaceuticals, including experimental and production processes and installations; Scientific and technological services, namely, consulting and assistance in the research and development of pharmaceuticals; scientific and technical services for auditing industrial installations; scientific and technical services, namely, scientific analysis of industrial installations; research and development services in the field of pharmaceuticals; scientific research and development services in the field of pharmaceuticals; research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; scientific research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific services, namely, scientific research and industrial analysis in the field of pharmaceuticals, chemicals, and agrochemical and industrial processes; scientific services, namely, scientific analysis allowing the identification and physical characterization of chemical molecules; scientific and technological services, namely, applied research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; scientific and technological services, namely, applied scientific research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; formulation and pre-formulation process design for pharmaceutical, chemical or agrochemical products; engineering services, namely, formulation, process evaluation and project management in the scientific and industrial fields, mainly in the chemical and pharmaceutical fields; engineering services for chemical and organic products and the processing thereof in the field of basic and industrial technology; management and licensing services of industrial property rights and technology transfer matters; scientific and technological services, namely, consulting and assistance in the research and development of chemicals and pharmaceuticals, including experimental and production processes and installations; scientific and technological services, namely, consulting and assistance for the manufacture of chemicals and pharmaceuticals, including experimental and production processes and installations; scientific and technical services, namely, auditing for industrial installationsClass 042 for Research and development services in the field of health and biotechnologies, namely, research in the area of the development of new active elements; research in the area of a means of synthesis in the field of pharmaceutical products; scientific study and research in the area of industrial quality; development of methods of analysis for chemical and pharmaceutical products and bioorganics; development and studies of analytical methods checking chemical reactions; Scientific and technological services, namely, consulting and assistance in the research and development of pharmaceuticals; scientific and technical services, namely, scientific analysis of industrial installations; scientific research and development services in the field of pharmaceuticals; scientific research and development services for chemicals for the products of third parties, namely, the scientific and technical development of synthetic processes in the field of chemistry and biochemistry; scientific research and scientific and technical development in the field of pharmaceutical, chemical, agrochemical and industrial processes; scientific services, namely, scientific research and industrial analysis in the field of pharmaceuticals, chemicals, and agrochemical and industrial processes; scientific services, namely, scientific analysis allowing the identification and physical characterization of chemical molecules; scientific and technological services, namely, applied scientific research and development services, namely, conception of development or commercial batches for third parties in the fields of pharmaceuticals and chemicals; formulation and pre-formulation process design for pharmaceutical, chemical or agrochemical products; engineering services, namely, formulation, process evaluation and project management in the scientific and industrial fields, mainly in the chemical and pharmaceutical fields; engineering services for chemical and organic products and the processing thereof in the field of basic and industrial technology; scientific and technological services, namely, consulting and assistance in the research and development of chemicals and pharmaceuticals, including experimental and production processes and installations
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


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 [ France application number 4692947 filed 10/19/2020]. 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.
Correspondence Information (current):
      KAREN LIM
      PRIMARY EMAIL FOR CORRESPONDENCE: klim-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is SYN 2010687.
Correspondence Information (proposed):
      Karen Lim
      PRIMARY EMAIL FOR CORRESPONDENCE: klim-docket@fzlz.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is SYN 2010687.

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: /kl/     Date: 02/11/2021
Signatory's Name: Lim, Karen
Signatory's Position: Attorney of record, New York bar member

Signatory's Phone Number: 2128135900 Signature method: Sent to third party for signature

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:    KAREN LIM
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
Mailing Address:    Karen Lim
   FROSS ZELNICK LEHRMAN & ZISSU, P.C.
   151 WEST 42ND STREET, 17TH FLOOR
   NEW YORK, New York 10036
        
Serial Number: 90302923
Internet Transmission Date: Thu Feb 11 14:00:46 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021021114004606
7464-90302923-7607281bc1fb0a748f5ff911d8
9f16941d13d9b3d9e2b427aba8c042b13f395266
-N/A-N/A-20210211104801081852



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