Priority Action

OFFICE SEARCH: The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). TMEP section 704.02.

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. This case will be given priority as an amended case if you respond to the requirements stated below within two months.

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

Serial Number 76/584255

The following issues were discussed in communication with David Tarnoff on October 19, 2004.

Identification of Goods

The current wording used to describe the goods needs clarification because the function(s) of the computer software is/are not clearly identified.

Applicant must clearly indicate the purpose(s) or function(s) of the computer program(s). If the software is field-specific, then applicant must also specify the field of use. TMEP §1402.03(d). This additional information is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant's mark and other marks. See In re NA.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

In the identification of services applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite words and phrases such as "services in connection with," "such as," "including," "and like services," "systems," "products," "concepts," or "not limited to," then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).

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

Applicant may adopt the following identification of goods, if accurate:

Computer software used in medical offices and used for computer graphics, picture archiving, enhancing the audio-visual capabilities of multimedia applications, namely for integrating text, audio, graphics, still images and moving pictures, database management, database management with storage and downloadable features to and from global networks, accessing directories and searchable databases that may be downloaded from the global computer network and for communication with hand held devices in the field of diagnostic radiology imaging in International Class 9.

TMEP §1402.01.

If the applicant does not accept the suggestion above, the examining attorney strongly suggests that the identification be structured in the following manner:

Computer software used in medical offices and used for [list functions by common commercial name and with enough specificity to give adequate notice of the nature of those functions] in the field of [list the field of use, i.e., diagnostic radiology imaging] in International Class 9.

Note that terms like “groupware” and “sharing” without more specific descriptions of these functions are not adequately specific to give the public notice of the type of software with which the applicant will use the mark.

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.

Color Description

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) BLUE appear in all elements of the mark. The sphere design element and the term STAR appear in a lighter shade of blue than the term PACS.”

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.

NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 22313-1451

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

/Mark Rademacher/

Examining Attorney

Law Office 114

Ph: (703) 308-9114 x192 (before October 20, 2004)

Ph: (571) 272-9723 (after October 20,

How to respond to this Office Action:

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail). PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

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