To: | Emisar Pharma Services LLC (tmatlanta@seyfarth.com) |
Subject: | U.S. Trademark Application Serial No. 90795780 - EMISAR - N/A |
Sent: | April 06, 2022 02:00:09 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90795780
Mark: EMISAR
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Correspondence Address: 1075 PEACHTREE ST. N.E., #2500
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Applicant: Emisar Pharma Services LLC
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Reference/Docket No. N/A
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: April 06, 2022
SEARCH OF USPTO DATABASE: The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
However, registration is provisionally refused for the following reason.
Summary of Issues That Applicant Must Address
CLARIFICATION OF IDENTIFICATION OF SERVICES REQUIRED
Some of the wording in the identification of services needs clarification because it does not identify the goods or services with enough specificity, or it is too broad because it identifies goods or services in multiple international classes. TMEP §§1402.01, 1402.03.
The wording “administering pharmacy reimbursement programs and services” in the identification of services for International Class 35 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass business administration services in Class 35 as well as financial administration services in Class 36. Applicant must clarify the particular nature of the services and classify accordingly.
The wording “providing a portal for pharmaceutical analytics” in Class 42 is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must clarify the word “portal” and must also clarify the particular nature of the services provided as it is unclear whether applicant is providing software or information services.
Applicant may adopt the following wording, if accurate:
International Class 35
Business consulting and management services in the fields of prescription drugs and cost management of health care; Negotiating contracts with manufacturers of pharmaceuticals to obtain discounts on the purchase of their goods; Business consulting related to clinical trials; Pharmaceutical cost management services and drug utilization review services; Business administration of pharmacy reimbursement programs and services; Business research and analytics services, including providing analytics to facilitate pharmaceutical innovation
International Class 36 (added to the application)
Financial administration of pharmacy reimbursement programs and services
International Class 42
Technical consulting and research in the field of pharmaceutical studies; Pharmaceutical product evaluation; Providing a portal for pharmaceutical analytics, namely, providing a
website featuring information on pharmaceutical analytics
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
If applicant adopts any of the suggested amendments to the identification of services, then applicant must amend the classification to the proper international classes noted above, i.e., International Classes 35, 36, and 42. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401. See below for discussion of multiple-class application requirements.
multiple-class application requirements: The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least three classes; however, applicant submitted fees sufficient for only two classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
RESPONSE ADVISORIES
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.
/Troy Knight/
Examining Attorney
Law Office 107
U.S. Patent and Trademark Office
(571) 270-3151
Troy.Knight@USPTO.GOV
RESPONSE GUIDANCE