Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA828945
`
`Filing date:
`
`06/23/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`Applicant
`
`86801521
`
`Zaluvida Holdings Pte. Ltd.
`
`Applied for Mark
`
`GESUNDHEIT
`
`Correspondence
`Address
`
`Submission
`
`Attachments
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`MARK D SWANSON
`PAULEY ERICKSON & KOTTIS
`2800 WEST HIGGINS RD SUITE 365
`HOFFMAN ESTATES, IL 60169
`UNITED STATES
`Email: PTO@pauleyip.com
`
`Applicants Request for Remand and Amendment
`
`Remand Request.pdf(348085 bytes )
`
`Mark D. Swanson
`
`mswanson@pauleyip.com
`
`/mark swanson/
`
`06/23/2017
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Zaluvida Holdings Pte. Ltd.
`
`Serial No.:
`
`86/801,521
`
`Law Office: 101
`
`Filing Date:
`
`28 October 2015
`
`Trademark:
`
`GESUNDHEIT
`
`(block letter form)
`
`Examining Attorney:
`Saima Makhdoom
`
`REQUEST FOR REMAND/AMENDMENT
`
`AND ALTERNATIVE APPEAL BRIEF
`
`Commissioner for Trademarks
`
`PO Box 1451
`
`Alexandria, Virginia 22313—1451
`
`Dear Commissioner:
`
`Appellant files this Request for Remand at the suggestion of the
`
`Examining Attorney in View of the appealed Section 2(d) rejection being moot as of
`
`05 May 2017.
`
`Appellant is appealing the Section 2(d) rejection over US. Registration
`
`3855216.
`
`US. Registration 3855216 was cancelled by the US. Patent and
`
`Trademark Office (USPTO) on 05 May 2017, after the filing oprpellant’s Notice of
`
`Appeal. As the Section 2(d) rejection is moot, Appellant requests remand to the
`
`
`
`l hereby certify that this correspondence (along with any paper referred to as being attached
`or enclosed) is being electronically deposited with the United States Patent and Trademark
`Office on 23 June 2017.
`
`"Z 3 Tam. L5! ‘7
`
`Date
`
`TIPS-8017
`
`f1 '
`
`Signature
`
`

`

`Serial No: 86/801,521
`
`Examining Attorney to allow Appellant to respond to the remaining issues and place
`
`the Application in condition for publication.
`
`Appellant filed a first Request for Reconsideration with the Notice of
`
`Appeal, based on an anticipated 28 March 2017 cancellation date for US.
`
`Registration 3855216. As the USPTO had not formally acted on the cancellation at
`
`the time of the Request, the Examining Attorney denied the Request and reinstated
`
`this appeal.
`
`Appellant discussed the moot appeal with the Examining Attorney by
`
`telephone on 01 June 2017, and the Examining Attorney suggested filing this Request
`
`for Remand in view of the moot Section 2(d) rejection.
`
`Appellant thus requests remand to the Examining Attorney for entry of
`
`the following Amendment, previously filed with the Request for Reconsideration.
`
`Amendment
`
`Upon remand, please delete the Section 1(b) tiling basis, as Applicant
`
`intends to rely on the Section 44 basis.
`
`Applicant seeks registration of the mark on the Supplemental Register.
`
`Please change of the words “Principal Register” to “Supplemental Register’.
`
`Please enter the following amended Identification of Goods and
`
`Services, as also provided in the Request for Reconsideration.
`
`
`Chms
`
`and pharmaceutical purposes, namely,
`for medical
`Chemical preparations
`pharmaceutical preparations for the treatment of obesity, prevention of obesity, anti-
`infection, anti-inflammatory, treatment and prevention of cardiovascular diseases,
`immunotherapy, cognitive health, nasal health, oral health, dental health, treatment of
`gastrointestinal health, joint health and wound care, blood glucose management;
`dental articles and dental preparations, namely, anti—cavity dental coating preparations
`
`TIPS-801 7
`
`2
`
`MDS/I
`
`

`

`Serial No.: 86/801,521,
`
`containing fluoride, dental abrasives, dental amalgams, dental cements, dental
`impression materials, dental lacquer, dental mastics, porcelain for dental prostheses,
`rubber for dental purposes; dietary supplements for humans; dietary beverages
`adapted for medical use, namely, dietary supplement beverages for the treatment of
`obesity, prevention of obesity, anti~infection, anti—inflammatory,
`treatment and
`prevention ofcardiovascular diseases, immunotherapy, cognitive health, nasal health,
`oral health, dental health, treatment of gastrointestinal health, joint health and wound
`care, blood glucose management; dietetic beverages for healthcare purposes, namely,
`dietary supplement beverages for the treatment of obesity, prevention ofobesity, anti—
`infection, anti—inflammatory, treatment and prevention of cardiovascular diseases,
`immunotherapy, cognitive health, nasal health, oral health, dental health, treatment of
`gastrointestinal health, joint health and wound care, blood glucose management;
`disinfectants; food for babies; health food supplements adapted for human use; herbal
`medicines, herbal medicines in the nature of herbal supplements; herbal teas for
`medicinal purposes; medical infusions, namely, herbal tea preparations for medicinal
`purposes and detox; medicated dental rinses; medicated brush—on gel for oral use;
`medicated mouth care and treatment preparations for the mouth and as breath, tooth
`and gum sprays and rinses; medicated mouth washes; medicinal herbs; nutraceutical
`preparations for use as a dietary supplements; nutritional supplements; pharmaceutical
`preparations, pharmaceuticals for treatment of obesity, prevention of obesity, anti—
`infection, anti—inflammatory, treatment and prevention of cardiovascular diseases,
`immunotherapy, cognitive health, nasal health, oral health, dental health, treatment of
`gastrointestinal health, joint health and wound care, blood glucose management; plant
`extracts adapted for dietetic use for pharmaceutical purposes; plant extracts adapted
`for medical use; plant extracts adapted for nutraceutical use for pharmaceutical
`purposes, namely, plant extracts for the treatment of obesity, prevention of obesity,
`anti—infection, anti—inflammatory, treatment and prevention ofcardiovascular diseases,
`immunotherapy, cognitive health, nasal health, oral health, dental health, treatment of
`gastrointestinal health, joint health and wound care, blood glucose management; plant
`extracts adapted for nutritional use for pharmaceutical purposes, namely, plant
`extracts for the treatment of obesity, prevention of obesity, anti-infection, anti—
`inflammatory, treatment and prevention of cardiovascular diseases, immunotherapy,
`cognitive health, nasal health, oral health, dental health, treatment of gastrointestinal
`health, joint health and wound care, blood glucose management; plant extracts
`adapted for pharmaceutical use.
`
`TIPS—8017
`
`3
`
`MDS/I
`
`

`

`Serial No.: 86/801,521
`
`Class 44
`
`Advisory and consulting services relating to beauty treatment, namely, beauty
`consultation services in the selection and use of cosmetics, fragrances, beauty aids,
`personal care products, and hair, skin and body care products; advisory and consulting
`services relating to health care; advisory and consulting services relating to medical
`problems, namely, providing medical advice in the field of treatment of obesity,
`prevention of obesity, anti—infection, anti-inflammatory, treatment and prevention of
`cardiovascular diseases, immunotherapy, cognitive health, nasal health, oral health,
`dental health, treatment of gastrointestinal health, joint health and wound care, blood
`glucose management; convalescent homes; dentistry; dietetic advisory services; health
`care, namely, providing health care services; health counseling; health spa services
`namely providing advisory services for health and/or wellness of the body and/or
`spirit; hospitals; hygienic and beauty care for human beings; information services
`relation to health care; medical advisory services; medical assistance; medical
`equipment rental; medical services; medical services in the nature of nursing;
`nutritional advisory and consultation services; pharmaceutical advisory services;
`pharmacists'
`services; pharmacy advisory services; providing health related
`information in the form of reports in the field of treatment of obesity, prevention of
`obesity, anti-infection, anti-inflammatory, treatment and prevention of cardiovascular
`diseases, immunotherapy, cognitive health, nasal health, oral health, dental health,
`treatment of gastrointestinal health, joint health and wound care, blood glucose
`management; providing information relating to dietary and nutritional guidance; rental
`of medical and health care equipment; technical consultancy services relating to health
`and safety, namely, consulting in the field of treatment of obesity, prevention of
`obesity, anti-infection, anti—inflammatory, treatment and prevention of cardiovascular
`diseases, immunotherapy, cognitive health, nasal health, oral health, dental health,
`treatment of gastrointestinal health, joint health and wound care, blood glucose
`management; telemedicine services; nutritional, massage, relaxation, stress reduction,
`insomnia, bodywork, physical, vitamin, cognitive, non—invasive cosmetic and body
`fitness therapy services for the treatment of obesity, prevention of obesity, anti—
`infection, anti-inflammatory, treatment and prevention of cardiovascular diseases,
`immunotherapy, cognitive health, nasal health, oral health, dental health, treatment of
`gastrointestinal health, joint health and wound care, blood glucose management.
`
`TIPS—80 1 7
`
`4
`
`MDS/I
`
`

`

`Serial No.: 86/801,521
`
`Alternative Appeal Brief
`
`As an alternative, in case the requested remand is denied, and to avoid
`
`abandonment, Appellant provides the following short Appeal Brief.
`
`Section 2(d)
`
`Appellant’s mark has been rejected under Section 2(d) as having a
`
`likelihood of confusion with US. Registration 3855216. US. Registration 3855216
`
`was cancelled by the US. Patent and Trademark Office (USPTO) on 05 May 2017,
`
`and thus the rejection is moot and should be withdrawn/reversed.
`
`Section 2(e)(1)
`
`Appellant’s mark has been rejected under Section 2(e)(1) for being
`
`descriptive. Appellant is willing to amend to the Supplemental Register, thereby
`
`obviating this rejection. As to the Examining Attorney’s comment on the mark
`
`possibly being generic, raised for the first time in the Request for Reconsideration
`
`Denied, Appellant respectfully asserts that this suggested change in position is
`
`improper and should be withdrawn/reversed, as the Examining Attorney has not
`
`formally alleged and/or established in the record that the mark is generic.
`
`Appellant again requests the Application be remanded to the Examiner
`
`for the entry of the above Amendment and so that Appellant can meet any further
`
`requirements to place the Application in condition for publication.
`
`Respectfully submitted,
`
`Mark D. Swanson
`
`Attorney for Appellant
`
`Pauley Erickson & Kottis
`2800 West Higgins Road
`Suite 365
`
`Hoffman Estates, Illinois 60169
`
`(847) 490—1400
`
`FAX (847) 490-1403
`
`TIPS—8017
`
`5
`
`MDS/l
`
`