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  76/483643

 

The examining attorney has searched the Office records and has found no similar registered mark which bars registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.  Please note that the examining attorney has found a potentially conflicting pending application.

 

One Pending Application with Earlier Effective Filing Date

The examining attorney encloses information regarding pending Application Serial No. 75/629,488.  The effective filing date of the referenced application precedes the applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208.01 and 1208.01(b).

 

The applicant must address the following issues.

 

 

 

Recitation of Services

 

The recitation of services is unacceptable because the wording “acute care services” is too broad.  Suggestions within brackets are provided for guidance.  A manual containing a listing of goods or services and proper wording for each classification is available on-line at the U.S. Patent and Trademark Office’s web site: www.uspto.gov.  The applicant may amend this wording to the following format, if accurate:

 

“acute care services, namely, [specify nature of care services, e.g., providing comprehensive physical therapy services on an inpatient and outpatient basis]” in International Class 44.  

 

TMEP section 804.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.

 

Disclaimer of Wording

The applicant must disclaim the descriptive wording “SOUTHWEST HEALTHCARE SYSTEM” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive of the geographic location of the services and the type of services (health care).  Additionally, the term “SYSTEM” has no service mark significance.  The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use SOUTHWEST HEALTHCARE SYSTEM apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

 

 

 

 

 

 

/Christopher L. Buongiorno/

Law Office 113

(703) 308-9113  ext. 460

 

 

 

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.