United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

 

International Registration No. 1634445

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned (see https://www.uspto.gov/trademarks-application-process/abandoned-applications for information on abandonment).  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at https://tsdr.uspto.gov/, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

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.

 

SUMMARY OF ISSUES:

• Disclaimer Required
• Description Of Mark Required

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the lettering “IGE” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The lettering "IGE" is defined as "immunoglobulin E."  See https://www.ahdictionary.com/word/search.html?q=IgE.  Other entities use this abbreviation to describe similar goods and services.  See, e.g., https://www.cerascreen.com/products/extensive-food-sensitivity-test ("Our lab tests the concentration of IgE and IgG4 antibodies in your blood,"); https://www.gdx.net/product/ige-food-allergy-test-blood ("Conditions associated with IgE food allergy"); https://www.nationaljewish.org/conditions/medications/asthma-medications/longterm/faqs-anti-ige-treatment ("Xolair is made to be similar to natural antibodies and is designed specifically to capture most of the IgE and block the allergic response.").  This evidence supports that applicant's pharmaceuticals and health information is used in connection or for specific immunoglobulin E antibodies. 

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “IGE” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

DESCRIPTION OF MARK REQUIRED

 

Applicant must submit a description of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies all the literal and design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  In this case, the drawing of the mark is not in standard characters.

 

The following description is suggested, if accurate:  The mark consists of the lettering "IGE" in blue and white where a blue knife forms the "I", a white fork and spoon, and blue plate form part of the "G" and a blue fork forms the "E".  The lettering appears on a white background within a blue circle.  Eight solid blue circles appear around the blue circle and eight white and blue circles appear around this with designs within the circles.  These designs are of three nuts, a fish with bubbles above, a shrimp, a [indicate design, e.g., a soy bean], a crab, a milk carton with a brain on the side and a bottle of milk, hops, and an [indicate design, e.g., egg] respectively and all in blue and white.  These circles appear on a white background and within a blue outlined circle.  The background of the mark appears in white.

 

RESPONSE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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.    

 

 

/Megan M. Hartnett/

Megan M. Hartnett

Trademark Examining Attorney

Law Office 123

571-270-1977

megan.hartnett@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon. 

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.