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: 1/1/2013

 

 

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 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).

 

• IDENTIFICATION OF GOODS AND/OR SERVICES

 

The identification of goods and/or services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  Similarly, applicant must specify the common commercial or generic name for the services.  If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  Id

 

Note the following issues regarding classification:

 

- Reagents, and other testing or diagnostic preparations, for research or laboratory use are classified in Class 1.  Reagents for diagnostic medical use are classified in Class 5.  Applicant must clearly specify that any Class 1 reagents are for research or laboratory use.

 

- Insurance administration services are generally classified in Class 36.

 

The following is an amended version of applicant’s identification of goods and/or services that complies with the above-mentioned clarification requirements, with material additions and alterations in bold type.  Applicant may adopt the following identification of goods and/or services, if accurate:

 

CLASS 1: Diagnostic reagents for laboratory use, namely, for clinical, medical, or forensic laboratory use; chemical preparations for scientific purposes; reagents for chemical analysis; diagnostic kits {specify components, e.g., consisting primarily of monoclonal antibodies, buffers, and reagents to monitor toxicity of drugs}; testing kits containing reagents used in analyzing and detecting certain toxins for clinical or medical laboratory use; genetic identity tests comprised of reagents; biochemicals, namely, {specify type and purpose, e.g., for in vitro and in vivo scientific use}; biomedical compounds, namely, {specify type and purpose, e.g., peptide substrates used in analyzing and detecting certain toxins for laboratory or research use}; chemical preparations to be used in biochemical and clinical research; diagnostic preparations for laboratory use, namely, for clinical, medical, or forensic laboratory use; test strips for laboratory analysis of blood

 

CLASS 5: Biological and chemical preparations for medical or veterinary use; reagents and media for veterinary purposes; clinical medical reagents; biological and chemical preparations, namely, antibodies for veterinary use to detect and analyze substances; diagnostic kits for medical or veterinary use, {specify components, e.g., comprised of medical diagnostic reagents and assays for testing body fluids}; diagnostic preparations for medical or veterinary purposes; testing kits {specify components, e.g., comprised of medical diagnostic reagents and assays} for testing bodily fluids; medical diagnostic test kits comprised of reagents and assays for testing of body fluids; medical diagnostic and monitoring test strips for use in the detection of a wide variety of diseases and health conditions; test strips for medical analysis of blood; ovulation test kits; biological tissue cultures for medical or veterinary purposes; culture media for cultivating blood cells {specify general purpose, e.g., for medical purposes}

 

CLASS 9: Computer software for {specify function and purpose, e.g., for controlling the operation of medical test equipment}; computer software for analysis of body fluids; computer hardware; mobile electronic devices, namely, {specify type, e.g., personal digital assistants}; electronic publications, namely, {specify type, subject matter and mode of distribution, e.g., downloadable newsletters in the field of medical diagnostic testing};

 

CLASS 10: Medical devices, namely, {specify goods, e.g., apparatus for obtaining body fluid samples}; medical measuring apparatus, namely, {specify goods, e.g., apparatus for measuring wounds}; apparatus for blood analysis; apparatus for taking blood samples; blood testing apparatus; apparatus for urine analysis; {specify general purpose, e.g., medical diagnostic} apparatus for biological tissue or fluid analysis; apparatus for clinical diagnosis; capillary reagent tubes; capillary tubes for blood; capillary tubes for samples; containers especially made for processing blood samples; containers for medical waste; devices for monitoring blood sugar; {specify particular type, e.g., x-ray diagnostic apparatus} for the detection of a wide variety of diseases; health monitoring devices, namely, {specify particular goods, e.g., , namely, blood pressure monitors, thermometers and pedometers}; medical diagnostic apparatus, namely, {specify particular goods, e.g., ultrasound apparatus}; medical apparatus and instruments for monitoring blood properties; medical devices for obtaining body fluid samples; medical monitors for monitoring a wide variety of physical conditions and diseases, namely, {specify particular goods, e.g., respiratory monitors}; home or portable monitors for monitoring a wide variety of physical conditions and diseases, namely, {specify particular goods, e.g., portable EKG machines}

 

CLASS 35: Administering pharmacy reimbursement programs and services; Administration of patient reimbursement programs; billing; compiling of information into computer databases; management and compilation of computerized databases; medical referrals; physician referrals; medical billing support services; providing an internet-based database of patient medical information designed to facilitate sharing and maintenance of patient medical information between and amongst the patient, insurers and healthcare professionals providing services to the patient

 

CLASS 36: Insurance claims processing; pharmaceutical benefit management services; pharmacy benefit management services; medical laboratory benefit management services; insurance services, namely, eligibility review and verification provided via an internet-based system for confirming patient identity, eligibility and authorization for health insurance or medicare/medicaid services

 

CLASS 39: Biomedical services, namely, the storage of human cells for medical use; consulting services in the field of air medical operations in the nature of air medical transport; medical transport services; transportation of medical waste and special waste

 

CLASS 42: Medical and scientific research services in the fields of blood analysis health care; blood analysis services; chemical laboratories; consulting services in the fields of biotechnology, pharmaceutical research and development, laboratory testing, diagnostics, and pharmacogenetics; genetic testing of laboratory animals for research purposes; biological research; biomedical research; laboratory research in the field of chemistry, biochemistry, biology, health and medicine; laboratory services, namely, pigment and color analysis; laboratory services, namely, imaging core lab services; medical laboratories; medical laboratory services; providing laboratory research services in the field of gene expression, namely, cancer biology; rental of laboratory apparatus and instruments; scientific laboratory services; providing a web site featuring technology that enables patients, physicians, insurers and other healthcare providers to generate, manage and exchange medical information; Software as a Service (SaaS) for medical and disease analysis

 

CLASS 44: Medical evaluation services; medical {specify type of monitoring, e.g., diagnostic} monitoring services; medical diagnostic testing, monitoring and reporting services; collection and preservation of human and animal blood; consulting services in the field of health; consulting services in the field of diagnostic medical testing; consulting services in the fields of health and healthcare; drug use testing services; drug, alcohol and DNA screening for medical purposes; health assessment services; health care; maintaining patient medical records and files; medical counseling; medical information; medical screening; medical services; medical testing for diagnostic or treatment purposes; providing information in the field of pet health; pet hospital services; providing a web site featuring medical information; providing a website featuring health and healthcare information; internet-based health care information services; providing health information; providing healthcare information; rental of medical equipment; veterinary special services, namely, {specify particular services, e.g., veterinary emergency and trauma services}

 

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.

 

An applicant may amend an identification of goods and services only to clarify or limit the goods and 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 et seq.

 

• EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

Applicant must explain whether “THERANOS” has any meaning or significance in the industry in which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

• CONTACT INFORMATION

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Lief Martin/

Law Office 112

Examining Attorney

Office: 571-272-3434

Email: lief.martin@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 1/1/2013 FOR

SERIAL NO. 85721486

 

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 1/1/2013 (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.