UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  78/230181

 

This letter responds to the applicant's Request for Reconsideration filed on September 13, 2004.  The Request is granted and the reference under Section 2(d) has been withdrawn.  However, upon further consideration of the services identified in Class 42, the examining attorney has determined that clarification is required.  The Office regrets the delay in making this requirement and apologizes for any inconvenience this may cause. 

 

Recitation of Services

The recitation of services for the Class 42 services is unacceptable as indefinite because it may include services in other classes.  TMEP §1402.01.  

 

The current recitation for the Class 42 services is identified as follows:

 

“Computer services, namely, providing technical consultation in the health insurance and healthcare fields; providing temporary use of online non-downloadable software used in the health insurance and healthcare fields; providing analysis of health and health insurance information and generation of reports for others; providing multiple-user and single-user access to a global computer information network for the transfer and dissemination of information in the healthcare and health insurance fields.

 

The stated refusal refers to the services listed below and does not bar registration for the other goods and/or services. 

 

“Providing analysis of health and health insurance information and generation of reports for others” and “Providing multiple-user and single-user access to global computer information network for the transfer and dissemination of information in the healthcare and health insurance fields.”

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)   amending or deleting the goods and/or services to which the refusal pertains, or merely reclassifying to a class of services which are already a part of the application;

 

(2)   arguing against the refusal of the application as a whole;

 

(3)   filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition for those goods or services to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)   changing the basis for the goods and/or services identified in the refusal, if appropriate

 

It is unclear if the “generation of reports” is a business service which would properly be classified in Class 35 as a business function or if it is financial-related insurance reports which would fall into Class 36.  Additionally, the “providing multiple-user access” is no longer classified in Class 42, but is now properly classified in Class 38. 

 

For the purposes of classifying services rendered in connection with global computer networks or involving the provision of on-line information via global computer networks, the Office now makes the following distinctions.  A single entity may, in theory, provide any, or all, or a combination of the following services.

 

A.) Telecommunications Services and Providing Access (communication link        providers and access providers)

 

Services which involve purely the provision of the physical communications connections or electronic links to a global computer network - such as traditionally provided by AT&T, MCI and the like - are considered to be “telecommunications services” in Class 38.  An acceptable recitation of these services should read as follows:

 

"Provision of telecommunications connections to a global computer network" in Class  38.

 

Services which involve providing access (i.e., providing or operating the actual computer gateways or computer frameworks) to global computer networks are also classified in Class 38.  The Office refers to entities offering these services as “access providers.”  Well-known examples include America OnLine, Netscape or Microsoft.  An acceptable recitation of these services should read as follows:

 

“Providing multiple-user access to a global computer information network”  in Class 38.

 

B.) Providing Information - (content providers)

 

Services which involve providing information of a particular nature or subject matter which is made available on-line or through global computer networks are classified according to the subject matter of the information provided.  The Office refers to entities which provide such subject-specific information as “content providers.” 

 

The term “access” in the recitation is reserved for those services provided by Internet Service Providers (ISPs), such as MCI, VERIZON or AT&T, etc. that provide the computer connection that enables a computer user to access the databases and home pages of others via the global computer network.  These entities are considered “link providers” and the service is “providing multiple-user access to a global computer network” in Class 38.  Entities that provide the informational or substantive content of a website and/or home page are considered “content providers.”  The service of providing information by means of a global computer network is classified in the class of the information subject.  If an entity provides information in a wide variety of fields, the applicant must select the subject matter to be protected and classify them accordingly (e.g., business information is in 35; insurance information is in Class 36; Health information is in Class 44.)  

 

Although this requirement applies to those services identified in Class 42, the entire identification is provided below to assist the applicant in the event he may be able to re-classify some of the services.  The applicant may amend the recitation to be as follows:

 

“Computer programs for use in the healthcare field designed to detect and prevent insurance and healthcare fraud and abuse, and manuals distributed therewith; computer software for use by healthcare payers and providers to access a data repository for the purposes of analyzing, processing, manipulating and displaying healthcare data to comply with accreditation-related reporting requirements, and manuals distributed therewith; computer software, namely, a healthcare data repository and decision support software designed for the managed care industry to provide vital information for the evaluation of the quality of healthcare delivery, and manuals distributed therewith; computer software used by healthcare payers and providers for creating and generating medical and insurance claims reports through the Internet or a dedicated communication channel, and manuals distributed therewith; automated decision-making and error resolution software for use in claims processing and manuals distributed therewith” in Class 9; and/or

                  “Business consulting for others in the healthcare field relating to disease and care management, predictive modeling, claims processing, quality of care improvement, fraud detection and prevention, data organization and control, and clinical trial efficiencies, but excluding ordering, purchasing, and inventory management services for physicians and other health care providers” in Class 35; and/or

 

“Providing financial statement preparation and analysis for businesses in the field of health care and health care insurance” in Class 35; and/or

 

“Providing market analysis of health care and health care insurance fields and providing these market reports to others” in Class 35; and/or

 

“Providing financial research and analysis to others in the fields of health care and health care insurance” in Class 36; and/or

 

“Providing information in the field of health care insurance” in Class 36; and/or

 

“Providing multiple-user and single-user access to a global computer information network for the transfer and dissemination of information in the healthcare and health insurance fields” in Class 38; and/or

 

“Electronic storage of data for the healthcare field accessed via the Internet or a dedicated communication channel” in Class 39; and/or

 

“Computer services, namely, providing technical consultation in the health insurance and healthcare fields; providing temporary use of online non-downloadable software used in the health insurance and healthcare fields” in Class 42; and/or

 

“Providing information in the field of health care” in Class 44.

 

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 goods or services that are not within the scope of goods set forth in the present identification.

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   Verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimens of record appear to be acceptable for all of the classes except for Class 38.

 

If applicant should fail to respond to this Office action within the six-month time limit, then the following goods and/or services will be deleted from the application: 

 

“Providing analysis of health and health insurance information and generation of reports for others” and “Providing multiple-user and single-user access to global computer information network for the transfer and dissemination of information in the healthcare and health insurance fields.”

 

The application will then proceed forward for the following goods and/or services only:

 

“Computer programs for use in the healthcare field designed to detect and prevent insurance and healthcare fraud and abuse, and manuals distributed therewith; computer software for use by healthcare payers and providers to access a data repository for the purposes of analyzing, processing, manipulating and displaying healthcare data to comply with accreditation-related reporting requirements, and manuals distributed therewith; computer software, namely, a healthcare data repository and decision support software designed for the managed care industry to provide vital information for the evaluation of the quality of healthcare delivery, and manuals distributed therewith; computer software used by healthcare payers and providers for creating and generating medical and insurance claims reports through the Internet or a dedicated communication channel, and manuals distributed therewith; automated decision-making and error resolution software for use in claims processing and manuals distributed therewith” in Class 9; and/or

“Business consulting for others in the healthcare field relating to disease and care management, predictive modeling, claims processing, quality of care improvement, fraud detection and prevention, data organization and control, and clinical trial efficiencies, but excluding ordering, purchasing, and inventory management services for physicians and other health care providers” in Class 35; and/or

       

“Electronic storage of data for the healthcare field accessed via the Internet or a dedicated communication channel” in Class 39; and/or

 

“Computer services, namely, providing technical consultation in the health insurance and healthcare fields; providing temporary use of online non-downloadable software used in the health insurance and healthcare fields” in Class 42.

 

37 C.F.R. §2.65(a).

 

NOTICE:  FEE CHANGE   

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

If the applicant has any questions regarding this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

USPTO

/Paula M. Mahoney/

paula.mahoney@uspto.gov

Law Office 113

571-272-9191

 

 

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

 

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