UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 5/31/2011

 

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, 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).

 

Disclaimer

Applicant must disclaim the descriptive wording “AMERICAN COLLEGE OF CARDIOLOGY” and “NETWORK” apart from the mark as shown because it merely describes the source or the nature of applicant’s services.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  TMEP §1213.03(a). 

 

A word or term that identifies the source or provider of a product or service, using only descriptive wording, is merely descriptive under Trademark Act Section 2(e)(1).  See In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors and skin guards); In re The Phone Co., 218 USPQ 1027 (TTAB 1983) (holding THE PHONE COMPANY merely descriptive for telephones); TMEP §1209.03(q).

 

Applicant provides online information featuring resources on running a cardiology practice.  The examining attorney relies on applicant’s specimen indicating that the term AMERICAN COLLEGE OF CARDIOLOGY appears to be the source or the provider of the services and therefore is merely descriptive.  The term NETWORK is defined as “system of people or things.” Please see attached definition.  Applicant’s services feature a system of people or things in the field of cardiology and therefore the term is merely descriptive and must be disclaimed as well.

 

A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.  Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

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 “AMERICAN COLLEGE OF CARDIOLOGY” and “NETWORK” apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Ownership of Prior Registration

If applicant is the owner of U.S. Registration No. 3899856, then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No. 3899856.

 

Identification of Services

The identification of services must be clarified because it is too broad and could include services in other international classes.  See TMEP §§1402.01, 1402.03. 

 

The wording “and other aspects of running a cardiology practice” is indefinite and must be (1) clarified to specify the common commercial or generic name for the services, or (2) deleted.  See TMEP §§1402.01, 1402.03(a).  This wording constitutes an open-ended “catch-all” word or phrase and is not acceptable because it fails to identify specific services.

 

In the identification of services, applicant must use the common commercial or generic name for the services, be specific and all-inclusive, and avoid using indefinite words or phrases.  TMEP §§1402.01, 1402.03(a). 

 

Please note that information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Following are examples of proper classification:  “providing information pertaining to purchasing an automobile” in International Class 35; “providing information regarding financing and insuring an automobile” in International Class 36; and “providing information regarding the repair and maintenance of automobiles” in International Class 37.

 

If the information is provided online or via a website, this information should also be included in the identification of services, e.g., “providing online information in the field of health care information” in International Class 44.

 

Applicant may adopt the following identification, if accurate: 

 

• Providing an online information resource for cardiology practices, namely, providing information on medical coding in the nature of assigning predetermined codes for the purpose of identifying medical diagnoses and medical procedures, billing, business risk management; providing advocacy support to promote awareness in the field of cardiology, cardiovascular medicine and health; providing and maintaining an online registry featuring quality assurance measurement for acute coronary syndromes for doctors in an office based setting in the field of cardiology, cardiovascular medicine and health (INT. CLASS 35)

 

• Providing online information resource for cardiology practice featuring information on medical malpractice insurance, financial risk management, and bill payment collection (INT. CLASS 36)

 

• Providing electronic bulletin boards for transmission of messages among users in the field of  cardiology, cardiovascular medicine and health (INT. CLASS 38)

 

• Providing non-downloadable electronic newsletters delivered via email in the field of cardiology, cardiovascular medicine and health; providing online information on continuing medical education (INT. CLASS 41)

 

• Providing health records management in the nature of maintaining patient medical records and files (INT. CLASS 44)

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes listed above.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  

 

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.

 

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.

 

Multiclass Applications

The application identifies services that are classified in at least 5 classes; however, the fees submitted are sufficient for only 1 class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on use in commerce:

 

(1)       LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class;

 

(2)       PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”); and

 

(3)       SUBMIT REQUIRED STATEMENTS AND EVIDENCE:  For each international class of goods and/or services, applicant must also submit the following:

 

(a)       DATES OF USE:  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)       SPECIMEN:  One specimen showing the mark in use in commerce for each international class of goods and/or services.  Applicant must have used the specimen in commerce at least as early as the filing date of the application.  If a single specimen supports multiple international classes, applicant should indicate which classes the specimen supports.  Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the goods at their point of sale.  See TMEP §§904.03 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.  See TMEP §§1301.04 et seq.;

 

(c)       STATEMENT:  The following statement:  “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:  Applicant must verify the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20.  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, and (2) the original specimens are acceptable for the added class(es).

 

See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).

 

With respect to the specimen requirement in 3(b) above in which a specimen is required for each international class of goods and/or services, the specimen(s) of record is acceptable for International Classes 35 and 41 only.  Applicant must submit additional specimens if different international classes are added to the application.

 

Closing

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

 

 

 

/Emily Chuo/

Trademark Examining Attorney

Law Office 101

U.S. Patent & Trademark Office

Phone:  571.272.1728

Emily.Chuo@uspto.gov

 

 

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  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.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

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.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 5/31/2011 FOR

SERIAL NO. 85249863

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

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

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 5/31/2011 (or sooner if specified in the office action).

 

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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

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