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  76/528732

 

This letter responds to the applicant’s communication filed March 15, 2004.  Receipt of the applicant’s response is acknowledged and has been entered.

 

For the reasons below, the refusal to register is maintained and made FINAL.

 

Requirement for Definite Identification of Goods/Services – Final Action

 

The amended identification of goods in Class 9 remains unacceptable as indefinite because the nature of some of the goods is unclear.  The applicant may adopt the following identification, if accurate:    TMEP §1402.01.

 

Class 9:

 

Electronic apparatus and equipment, namely, computers, data processors, video monitors, computer software, database management software, electronic database recorded on computer media and computer interface devices, all for use in monitoring, measuring, recording, accessing and transmitting the physiological or medical conditions and data of patients.

 

The amended recitation of services for Class 38 is unacceptable as indefinite because the nature of the services remains unclear.  The identification is also overly broad because it may contain services classified elsewhere.  The applicant may adopt the following recitation, if accurate:    TMEP §1402.11.

 

Class 38:

 

Electronic, electric and digital transmission of voice, data, images, signals and messages relating to physiological and medical data and information of patients.

 

The wording “STORING” in the identification of services needs clarification because it appears to be covered by the “electronic storage of data and documents” in Class 39.  TMEP §1402.01.  Additionally, the wording “MONITORING” in the identification of services needs clarification because it is unclear what is being monitored or how the monitoring services take place.  Applicant must submit samples of advertisements or promotional materials for the identified services because the nature of the services set forth in the application is unclear.  If such materials are not available, then applicant must submit samples of advertisements or promotional materials for similar services.  In addition, applicant must describe in some detail the nature, purpose and channels of trade of the services listed in the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.0 1(d).

 

Please note: the identification of goods and services for Classes 10, 35, 39 and 42 are acceptable.

 

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 goods or services that are not within the scope of the goods and services recited in the present identification.

 

Color Description Required

Applicant must provide a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1).  The following description is suggested:  “The color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>.”  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

Options

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

Applicant may respond to this Office action using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces processing time and eliminates the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to Office actions.  Applicants using TEAS should not submit a duplicate paper copy of the response.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

David T. Taylor /dtt/

2900 Crystal Drive

Arlington, VA 22202

Law Office 112

703-308-9112, ext. 164

703-746-8112