Offc Action Outgoing

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

ISSUE/MAILING DATE:

This Office action supersedes the previous Office action issued in connection with this application.

In the Office Action of July 23, 2010, the examining attorney inadvertently failed to require applicant to submit a description of the mark. This Office Action is issued to correct this error. The examining attorney apologizes to applicant for the inconvenience caused by the delay in raising this issue.

For applicant’s convenience, all of the issues raised in the previous Office Action are included in this Action. Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a). If applicant does not respond within this time limit, the application will be abandoned.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search Results

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d).

Mark Description Required

The applied-for mark is not in standard characters and applicant did not provide a description of the mark with the initial application. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808.01, 808.02, 808.03(b).

Therefore, applicant must provide a description of the applied-for mark. The following is suggested:

The mark consists of the wording SMART RX with the RX symbol being formed from the letter R in the word SMART. Inside the letter R in the word SMART appears the design of [applicant must describe generally this design]. This wording appears inside of a rectangular carrier.

Statement of Bona Fide Intent to Use the Mark Required

The application was filed under Trademark Act Section 1(b); however, it does not include the required verified statement of applicant’s “bona fide intention to use the mark in commerce.” 15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §§804.02, 806.01(b). Therefore, applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.

15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §§804.02, 806.01(b); see 37 C.F.R. §2.193(e)(1).

Applicant may submit a declaration online using the Trademark Electronic Application System (TEAS) response to Office action form at http://www.gov.uspto.report/teas/eTEASpageD.htm. When in the initial screen of the TEAS response form wizard, answer “yes” to the wizard question relating to submitting a “signed declaration,” and follow the instructions within the form for signing. See 37 C.F.R. §§2.20, 2.33(a)-(b)(1), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).

In the alternative, applicant may use the following sample declaration with the required statement of bona fide intention to use the mark:

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

(Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

(Date)

Disclaimer Required

Applicant must disclaim the descriptive wording “SMART” and “RX” apart from the mark as shown because it merely describes features of applicant’s goods. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). Applicant’s goods are “computer hardware including a pharmacy reader, an automated dispensing cabinet and a patient bedside reader, using radio frequency identification to prevent medication errors, drug diversion and drug counterfeiting; computer software for running the computer hardware and for integrating with existing hospital software.” The attached definitions show that the term “smart” is defined as “operating by automation” and that the RX symbol means “prescription.” Applicant’s goods are computer systems that for automated dispensing, tracking, and verifying of prescription medications. Thus, the terms SMART and RX immediately describe key features of applicant’s goods and must be disclaimed.

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:

No claim is made to the exclusive right to use “SMART” and “RX” apart from the mark as shown.

TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

Miscellaneous Information Regarding Responding to this Office Action

Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.

Applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved. The Office cannot aid in the selection of a trademark attorney. 37 C.F.R. §2.11. Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Debra Lee/

Trademark Attorney

Law Office 116

Voice: 571-272-5897

Fax: 571-273-9116

TO RESPOND TO THIS LETTER: Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.