Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/347169

 

This letter responds to the applicant’s communication filed on April 14, 203.

 

Applicant states that is aware of the descriptive uses of the wording “health” “system” and “consortium”.  However, applicant submitted a disclaimer of the wording listing “Health System” and “consortium” separately.  It must be noted that if the wording in a mark is descriptive and is depicted in a unitary expression, the wording must be disclaimed as it appears in the mark.  Correspondingly, applicant must disclaim the entire unitary expression “Healthsystem Consortium.” TMEP §1213.08(b).  A disclaimer of the individual component words of a complete descriptive phrase is improper.  In re Wanstrath, 7 USPQ2d 1412 (Comm’r Pats. 1988).

 

Applicant indicates that it submitted substitute recitations of services incorporating some of the requests given to applicant in Office Action dated November 7, 2002.  Applicant did amend slightly the recitations of services but did not cure the defects listed in the prior Office Action.  Correspondingly, applicant is required to amend the recitations of services as follows:

 

Class 35 the medical products and services are entirely too broad (exactly what the goods and services are and their scopes cannot be determined) and must be renamed by using the common names of the goods and services;

 

Class 36  the financial clearinghouse services must be amended by stressing that the services involve pricing information rather than information about capital equipment, and suggested is the following: “financial clearinghouse services, namely, providing purchase pricing information for capital equipment for university hospitals and financial research”; and “analyzing medical technology, devices, and drugs for the purpose of reporting to member hospitals on their features and cost effectiveness” is a service separate from financial analysis and consultation, is in Class 42 rather than Class 36, and must be deleted from Class 36 and either inserted into the Class 42 recitation of services or deleted; and

 

Class 42 the medical research services recitation has been impermissibly expanded by deleting the limiting wording “namely, conducting clinical trials for new medical technology, devices and drugs at member hospitals”; this wording must be reinserted into the Class 42 recitation of services, for without the wording, the type of medical research services is not limited to conducting clinical trials and is, correspondingly, an expansion of the recitation of services.

     

 

 

 

/David C. Reihner/, Examining Attorney

Law Office 111, 703-308-9111 ext. 469

703-746-8107 fax.  ecom107@uspto.gov

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.