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. 90603915 KRAZATI(Standard Characters, see http://uspto.report/TM/90603915/mark.png) has been amended as follows:

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

The Examining Attorney has objected to the following terms as being allegedly indefinite: "pharmaceuticals; pharmaceutical preparations; pharmaceutical products; pharmaceuticals comprising small molecules; pharmaceuticals comprising compounds; pharmaceuticals comprising inhibitors." The Applicant has deleted the first three terms, "pharmaceuticals; pharmaceutical preparations; pharmaceutical products," in this response. With respect to the last three terms, "pharmaceuticals comprising small molecules; pharmaceuticals comprising compounds; pharmaceuticals comprising inhibitors," the Applicant respectfully submits that the U.S. Trademark Office recently allowed these terms in another application owned by the Applicant, U.S. Trademark Application Serial Number 90238399 (for the KRASLOQ mark). Accordingly, the Applicant respectfully requests that the Examining Attorney also allow these terms in this application as well.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 005 for pharmaceuticals; pharmaceutical preparations; pharmaceutical products; pharmaceutical preparations for the treatment of cancer; pharmaceutical preparations for use in oncology; pharmaceutical preparations for the treatment of infectious diseases; pharmaceutical preparations for the treatment of lung cancer; pharmaceutical preparations for the treatment of non-small cell lung carcinoma; pharmaceutical preparations for the treatment of colorectal carcinoma; pharmaceutical preparations for the treatment of pancreatic cancer; pharmaceuticals comprising small molecules; pharmaceuticals comprising small molecules for the treatment of cancer; pharmaceuticals comprising small molecules for the treatment of infectious diseases; pharmaceuticals comprising small molecules for the treatment of lung cancer; pharmaceuticals comprising small molecules for the treatment of non-small cell lung carcinoma; pharmaceuticals comprising small molecules for the treatment of colorectal carcinoma; pharmaceuticals comprising small molecules for the treatment of pancreatic cancer; pharmaceuticals comprising compounds; pharmaceuticals comprising compounds for the treatment of cancer; pharmaceuticals comprising inhibitors; pharmaceuticals comprising inhibitors for the treatment of cancer; pharmaceuticals for the treatment of solid tumors; pharmaceuticals for the treatment of advanced solid tumors
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.


Proposed:

Tracked Text Description: pharmaceuticals; pharmaceutical preparations for the treatment of cancer; pharmaceutical preparations; pharmaceutical preparations for use in oncology; pharmaceutical products; pharmaceutical preparations for the treatment of infectious diseases; pharmaceutical preparations for the treatment of lung cancer; pharmaceutical preparations for the treatment of non-small cell lung carcinoma; pharmaceutical preparations for the treatment of colorectal carcinoma; pharmaceutical preparations for the treatment of pancreatic cancer; pharmaceuticals comprising small molecules; pharmaceuticals comprising small molecules for the treatment of cancer; pharmaceuticals comprising small molecules for the treatment of infectious diseases; pharmaceuticals comprising small molecules for the treatment of lung cancer; pharmaceuticals comprising small molecules for the treatment of non-small cell lung carcinoma; pharmaceuticals comprising small molecules for the treatment of colorectal carcinoma; pharmaceuticals comprising small molecules for the treatment of pancreatic cancer; pharmaceuticals comprising compounds; pharmaceuticals comprising compounds for the treatment of cancer; pharmaceuticals comprising inhibitors; pharmaceuticals comprising inhibitors for the treatment of cancer; pharmaceuticals for the treatment of solid tumors; pharmaceuticals for the treatment of advanced solid tumorsClass 005 for pharmaceutical preparations for the treatment of cancer; pharmaceutical preparations for use in oncology; pharmaceutical preparations for the treatment of infectious diseases; pharmaceutical preparations for the treatment of lung cancer; pharmaceutical preparations for the treatment of non-small cell lung carcinoma; pharmaceutical preparations for the treatment of colorectal carcinoma; pharmaceutical preparations for the treatment of pancreatic cancer; pharmaceuticals comprising small molecules; pharmaceuticals comprising small molecules for the treatment of cancer; pharmaceuticals comprising small molecules for the treatment of infectious diseases; pharmaceuticals comprising small molecules for the treatment of lung cancer; pharmaceuticals comprising small molecules for the treatment of non-small cell lung carcinoma; pharmaceuticals comprising small molecules for the treatment of colorectal carcinoma; pharmaceuticals comprising small molecules for the treatment of pancreatic cancer; pharmaceuticals comprising compounds; pharmaceuticals comprising compounds for the treatment of cancer; pharmaceuticals comprising inhibitors; pharmaceuticals comprising inhibitors for the treatment of cancer; pharmaceuticals for the treatment of solid tumors; pharmaceuticals for the treatment of advanced solid tumors
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: The applicant believes the applicant is entitled to use the mark in commerce on or in connection with the goods or 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. 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.

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


The owner's/holder's current attorney information: Eric R. Moran. Eric R. Moran of MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      31ST FLOOR
      300 SOUTH WACKER DRIVE
      CHICAGO, Illinois 60606
      United States
The docket/reference number is 21-0416-US.
      The phone number is 312-913-0001 x3302.
      The fax number is 312-913-0002.
      The email address is docketing@mbhb.com
Correspondence Information (current):
      ERIC R. MORAN
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@mbhb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): moran@mbhb.com; potempam@mbhb.com

The docket/reference number is 21-0416-US.
Correspondence Information (proposed):
      Eric R. Moran
      PRIMARY EMAIL FOR CORRESPONDENCE: docketing@mbhb.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): moran@mbhb.com; potempam@mbhb.com

The docket/reference number is 21-0416-US.

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: /Eric R. Moran/     Date: 12/20/2021
Signatory's Name: Eric R. Moran
Signatory's Position: Attorney of record, Illinois bar member

Signatory's Phone Number: 312-913-3302 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:    ERIC R. MORAN
   MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
   31ST FLOOR
   300 SOUTH WACKER DRIVE
   CHICAGO, Illinois 60606
Mailing Address:    Eric R. Moran
   MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
   31ST FLOOR
   300 SOUTH WACKER DRIVE
   CHICAGO, Illinois 60606
        
Serial Number: 90603915
Internet Transmission Date: Mon Dec 20 14:00:52 ET 2021
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2021122014005211
1896-90603915-800eb5fb9307c6875381bbcd82
5911195c92ff716fbfff2e7adfb10dcca2a5e83-
N/A-N/A-20211220135209628615