cvac to cvac trade mark usa appl. no. 77936296, page-29

Hi sheepdog2 - thanks for the links. It seems that the issue is not another party owning or claiming the trade mark.

I think you may have mistaken one of the 5 dead applications (abandoned) for 'CVAC' as a live holder of such a patent.

In May 2010, the Office wrote to the applicant (our mob) to state:

'No Conflicting Marks Found
The Office records have been searched, and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. ?1052(d). TMEP ?704.02.'

The issues are about a satisfactory description of the goods and proof that they can rely on priority provisions for trade mark registration where you already hold one in a treaty country.

Here is the relevant text from the letter of may 21 2010 from the publicly accessible site identified by Sheepdog2 which describes what the issues are. There is more if you want to access the same site - I've not bothered to reproduce the whole lot. There was also reference to registering CVAC as a trademark without defining font or size or colour, so I gather it would not be a matter of someone being able to register CVac if someone else registered CVAC - otherwise I'm going to rip out tomorrow and register "COke". I suppose a stylised trademark like a big 'M' for McDonald's is different:

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

No Conflicting Marks Found

The Office records have been searched, and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. ?1052(d). TMEP ?704.02.


Applicant Must Amend The Identification Of Goods


The identification of goods is indefinite and must be clarified to provide more information about the goods, as shown below. See TMEP ?1402.01.

Applicant may adopt the following identification, if accurate:

?Pharmaceutical preparations and substances for the treatment of {specify diseases or conditions being treated}; veterinary preparations and substances for the treatment of {specify type of animal and diseases or conditions being treated}; vaccines; medicated serums for the treatment of {indicate nature of serums, e.g., hair, skin, lips}; test kits comprising {list items in the kits},? in International Class 5.

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. ?2.71(a); see TMEP ??1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP ?1402.04.


Applicant Must Indicate Whether It Intends To Rely On Section 44(e)

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. ??1051(b), 1126(d); 37 C.F.R. ?2.34(a)(2), (a)(4). However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration. See 15 U.S.C. ?1126(e).

Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. ?2.34(a)(4)(iii); TMEP ??1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.

Therefore, applicant must clarify the basis in the application by satisfying one of the following:


(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (i) applicant?s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant?s country of origin. See 15 U.S.C. ?1126(b)-(c), (e); 37 C.F.R. ?2.34(a)(3)(ii); TMEP ??806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant?s country of origin. TMEP ?1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. ?2.34(a)(3)(ii). The translation should be signed by the translator. TMEP ?1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP ?1003.04(b).; or


(2) If applicant intends to rely on an intent to use basis under Section 1(b), while retaining its Section 44(d) priority filing date, applicant must specify that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP ??806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. ?1051(c)-(d); 37 C.F.R. ??2.76, 2.88; TMEP ?1103.


Applicant is invited to call the assigned examining attorney with any questions about the substance of this action.'

cheers,

misters