UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/617522
APPLICANT: MCMC LLC
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MCMC
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/617522
The assigned examining attorney has reviewed the referenced application and determined the following.
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 1105.01.
The recitation of services is unacceptable as indefinite because the precise nature of the services is unclear from the present wording. The applicant must amend the recitation to specify the common commercial name of the services. If there is no common commercial name for the services, the applicant must describe the services and indicate their nature. TMEP §1402.11.
The identification of services needs clarification because applicant uses the wording “including,” “and/or,” “and/or any services similar and/or related to any of the foregoing.” The identification of services must be specific and all-inclusive. Applicant should amend the identification to replace this wording with "namely." Please note that applicant may amend the identification to list only those services that are within the scope of the services set forth in the application. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
The use of parentheses should be avoided. Parentheses, other than for use for acronyms, indicates that a particular good or portion of the identification has been deleted.
The applicant may adopt the following recitation, if accurate:
Class 35
Healthcare utilization management and review services, namely, __________ [applicant must specify the type of services intended by the wording “case management”]; __________ [applicant must specify the services intended by the wording “independent medical review,” e.g., independent health care cost review]; medical bill review; ___________ [applicant must specify the services intended by the wording “preferred provider organization and/or provider/physician network application services; independent medical testing services; and/or any services similar and/or related to any of the foregoing, including, without limitation, telephonic case management services” using common commercial terms]; [applicant must delete duplicate entries of the same services. In this case, the applicant must specify the type of utilization services intended by the wording “utilization review/utilization management services,” e.g., healthcare utilization management and review services. Since these services have been listed above, the applicant must delete this second entry]; __________ [applicant must specify the services intended by the wording “medical bill review technology services; integrated managed care technology services” using common commercial terms]; ___________ [applicant must specify the services intended by the wording “precertification and concurrent review of inpatient and outpatient services,” e.g., managed care services, namely, utilization review and pre-certification services]; _________ [applicant must specify the services intended by the wording “retrospective record reviews” using common commercial terms. It is unclear what the type of records are and what type of reviews are being conducted and for what purpose]; __________ [applicant must specify the services intended by the wording “benefits determinations” using common commercial terms. Please note that if these services are insurance related services, the proper classification may be Class 36, not Class 35]; review of quality of care at ____________ [applicant must specify where the care is being provided, e.g., hospitals], pharmaceutical, forensic and experimental and investigational treatment reviews; ___________ [applicant must specify the services intended by the wording “criteria and standards development and enhancement for healthcare systems, plans and programs” using common commercial terms], in International Class 35.
Publication of industry newspapers, practice guidelines, treatment protocols __________ [applicant must specify the type of publication used to for the protocols, e.g., books, magazines, newsletters] in the fields of healthcare, in International Class 41.
Legal services, namely, multi-level appellate reviews of ERISA administration appellate decisions; alternative dispute resolution, namely, resolution of disputes regarding healthcare decisions or plan administration, in International Class 42.
Medical services, namely, independent medical examination, in International Class 44.
TMEP section 1402.11.
Applicant may wish to refer to the on-line identification manual on the PTO homepage for acceptable names of goods and services. The web page address is:
http://www.gov.uspto.report/web/office/tac/doc/gsmanual/
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.
If the applicant adopts the suggested amendment to the identification of services, the applicant must amend the classification to International Classes 35, 41, 42, and 44. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at least 4 international classes, however applicant paid the fee for only 1 class(es).
Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
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.
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations. The TARR database is available 24 hours a day, 7 days a week. Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday.
The USPTO Trademark Operations will be moving to the new Alexandria, Virginia campus in October and November 2004. During that time, you are strongly encouraged to communicate with the USPTO through the Trademark Electronic Application System (TEAS) which can be found at www.uspto.gov.
Effective October 4, 2004, all Trademark-related paper mail must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
My Law Office will move on October 18, 2004. To reach me by phone after that date call (571) 272-9195.
To submit a fax response to this Office action after that date, send your response to the Law Office fax number, namely (571) 273-9116.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Sharon A. Meier/
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Sharon A. Meier
Trademark Attorney, Law Office 112
571-272-9195 phone
571-273-9112 fax
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.