UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 76716988
MARK: HEALTH PARTNERS FOUNDATION
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Health Partners Plans
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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.
The referenced application has been reviewed by the assigned trademark examining attorney.
SEARCH OF OFFICE’S DATABASE OF MARKS
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).
However, applicant should note the following issues with this application:
1.) Registration refused – Specimen does not show use of mark with the listed services; and
2.) Disclaimer of “HEALTH” and “FOUNDATION” required.
Applicant must respond timely and completely to these two issues. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SPECIMEN REFUSED – DOES NOT SHOW USE OF MARK WITH LISTED SERVICES
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the services identified in the application.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
In this case, for example, an appropriate specimen of use might be a webpage screen capture that shows both the applied-for mark and a description of applicant’s charitable fund raising services. An example of such a specimen from applicant’s website (http://www.healthpartnersplans.com/in-the-community/health-partners-foundation/how-you-can-help) is attached to this Office action.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
The word “health” refers to “physical and mental well-being; freedom from disease, pain, or defect; normalcy of physical and mental functions; soundness.” Webster’s New World College Dictionary (2010), http://www.yourdictionary.com/health. When the word “HEALTH” is considered in relation to applicant’s services, it immediately and directly conveys to consumers the field of the fundraising. As such, the word “HEALTH” is merely descriptive of a feature of applicant’s services.
Applicant offers “charitable fund raising.” The word “foundation” refers to “an organization established to maintain, assist, or finance institutions or projects of a social, educational, charitable, religious, etc. nature, as by the making of grants.” Id. at http://www.yourdictionary.com/foundation. Thus, when the word “FOUNDATION” in the applied-for mark is considered in relation to applicant’s services, it immediately and directly conveys to consumers the purpose of applicant’s services.
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “HEALTH” and “FOUNDATION” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
RESPONSE REQUIRED
Informal communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by telephone or e-mail. Arguments and/or evidence submitted by telephone or email against a refusal and/or requirement will not be considered by the examining attorney. To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.
For questions about the Office action itself, please contact the assigned trademark examining attorney. All informal communications relevant to this application will be placed in the official application record.
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.