Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 5/10/2010

 

 

SEARCH

 

The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.

 

MARK IS MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes applicant’s goods and/or services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services.  TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).  Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive.  TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

 

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract.  In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system).  “Whether consumers could guess what the product is from consideration of the mark alone is not the test.”  In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

 

The applicant’s mark is:

 

     HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Transponders, transceivers, and computer software, all for use in the capture, organization, analysis, management, display, and transmission of data and transactions among and between originating users, intermediary users, and end users; computer hardware, namely, point-of-service terminals, wall-mounted point-of-service terminals, personal digital assistants, tablet personal computers, and other handheld devices, scanning and input devices, readers, printers, encoders, and related electronic devices capable of reading radio frequency identification

        IC 036. US 100 101 102. G & S: Electronic payment processing and transmission of bill payment data

        IC 042. US 100 101. G & S: consultation in the field of information technology; integration of computer systems and networks; computer systems analysis; computer programming for others; computer software and web portal design for others; maintenance of computer software; technical computer support, namely, consultation in connection with the operation and maintenance of computer software; leasing and rental of computer programs; database development services; updating of computer software and Internet portals; consultation and computer software development for others;integration of computer systems; installation of computer software for others; maintenance of computer software services

        IC 045. US 100 101. G & S: Identification verification services to provide user authentication, user identification, user profile, and user information

The applicant’s goods and services are for authentification of identity and information. The applicant’s goods and services are presumably in the field of healthcare and are provided via network and kiosk. See attached information from the applicant’s own website describing these features of the goods/services. The terms simply refer to these features of the goods/services.

 

 

“Clearwave created Healthcare’s Authentication Network and Kiosk (HANK) to allow medical facilities of all sizes to authenticate insurance eligibility while improving front-end processing by identifying patients as active or inactive plan members or self-pay patients. By authenticating eligibility, HANK enables medical facilities to have the most accurate and up-to-date benefit information at the point of service, resulting in more precise billing. 

HANK is the only universal healthcare kiosk in the industry that allows a patient to check-in through a self-directed process while simultaneously verifying the patient’s insurance and displaying their financial information to the office staff, all before sitting down in the waiting room.” See attached website link.

 

 

Since the mark describes the goods/services provided, it is primarily merely descriptive and must be refused registration on the Principal Register under Section 2(e)(1) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

 

SUPPLEMENTAL ADVISORY

 

A mark in an application under Trademark Act Section 1(b) is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76 has been filed.  37 C.F.R. §§2.47(d), 2.75(b); TMEP §§815.02, 1102.03.  When a Section 1(b) application is successfully amended to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.

 

 

 

Applicant must respond to the requirement(s) set forth below.

 

 

 

IDENTIFICATION OF GOODS/SERVICES

 

The identification of services for Classes 36 and 45 are acceptable. However, the wording indicated below in Classes 9 and 42 requires clarification.

 

 

The identification of goods/services is indefinite and must be clarified because the items indicate below are too vague.  See TMEP §1402.01.  Applicant must specify the common commercial name of the goods/services.

 

CLASS 9

 

The wording “and other handheld devices, scanning and input devices, readers, printers, encoders, and related electronic devices capable of reading radio frequency identification” is too vague. The type of devices must be specifically listed by name.

 

The applicant may adopt the following if accurate:

 

“Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image, and audio files.” International Class 9.

 

“RFID readers.” International Class 9.

 

“Computer printers; scanners; encoders.” International Class 9.

 

The remainder of the identification of goods is acceptable as is:

 

“Transponders, transceivers, and computer software, all for use in the capture, organization, analysis, management, display, and transmission of data and transactions among and between originating users, intermediary users, and end users; computer hardware, namely, point-of-service terminals, wall-mounted point-of-service terminals, personal digital assistants, tablet personal computers.” International Class 9.

 

 

CLASS 42

 

The applicant must indicate that the updating of computer software and Internet portals is for others. The type of consultation must also be indicated.

 

Applicant may adopt the following identification, if accurate:   

 

“updating of computer software and Internet portals for others.” International Class 42.

 

“computer consultation and computer software development for others.” International Class 42.

 

The remainder of the identification is acceptable as is:

 

“consultation in the field of information technology; integration of computer systems and networks; computer systems analysis; computer programming for others; computer software and web portal design for others; maintenance of computer software; technical computer support, namely, consultation in connection with the operation and maintenance of computer software; leasing and rental of computer programs; database development services; integration of computer systems; installation of computer software for others; maintenance of computer software services.” International Class 42.

 

 

For assistance with identifying and classifying 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.  See TMEP §1402.04.

 

 

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

MULTIPLIE CLASS APPLICATIONS – ADDITIONAL FEES

 

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; 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).

 

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The filing fee for adding classes to an application is as follows:

 

         (1)     $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

 

         (2)     $375 per class, when the fees are submitted with a paper response. 

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

 

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

 

 

 

 

/rebecca smith/

Rebecca Smith

U.S. Patent & Trademark Office

Law Office 110

(571) 272-9223

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77930633) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 5/10/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77930633&doc_type=OOA&mail_date=20100510 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 5/10/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.