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: 7/29/2013

 

 

This Office action is issued in response to applicant’s correspondence of July 1, 2013.

 

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.

 

• SUMMARY OF ISSUES

 

Issue(s) Maintained and Continued: clarification and/or reclassification required for particular wording in the identification of services, as amended

 

New Issue(s): applicant’s response necessitates a new advisory of multi-class application requirements

 

Issues Satisfied: requirement for clarification of the mark’s significance

 

 

• IDENTIFICATION OF GOODS AND/OR SERVICES

 

As noted above, particular wording in the identification of goods and/or services, as amended, remains unacceptable and requires further clarification and/or reclassification.  See TMEP §1402.01.

 

Note the following specific issues:

 

-          Electronic publications recorded on physical media, or provided as a downloadable digital file, are Class 9 goods.  Provision of online non-downloadable publications is a service which is generally classified in Class 41.  Likewise, “blogs” are generally an online service classified in Class 41.

 

-          Laboratory apparatus, including such goods for use in a medical laboratory, are generally classified in Class 9.

 

-          The wording “mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcare…” appears to identify a Class 10 medical apparatus.

 

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 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, for in vitro and in vivo scientific use; biomedical compounds, namely, 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 and other body fluids

 

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, comprised of medical diagnostic reagents and assays for testing blood and other body fluids; diagnostic preparations for medical or veterinary purposes; testing kits 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 and other body fluids; ovulation test kits; biological tissue cultures for medical or veterinary purposes; culture media for cultivating blood cells for medical purposes

 

CLASS 9: Computer software for healthcare monitoring; computer software for medical monitoring and analysis of medical data; computer software for controlling the operation of medical test equipment and test results; computer software for analysis of body fluids; computer hardware; mobile electronic devices, namely, personal digital assistants, tablet computers, mobile phones, smartphones, and other cellular or wireless communication devices {specify function, e.g., for voice, data or image transmission}; electronic publications, namely, downloadable newsletters in the field of medical diagnostic testing; {specify class-appropriate medium or mode of transmission, e.g., downloadable} e-zines, magazines, books, manuals, pamphlets, and journals in the fields of healthcare, medicine, diagnostics and personal health and fitness; {specify nature of diaries, e.g., electronic diaries}; laboratory apparatus, for use in medical laboratories, for analysis of body fluids and tissue

 

CLASS 10: medical devices, namely, point of care and handheld devices for analysis of drugs, proteins and other substances, and wireless transfer of medical data; medical measuring apparatus, namely, equipment for medical monitoring and analysis of body fluids and tissue and cartridges for use with therapies or equipment for medical monitoring and analysis of substances; apparatus for blood analysis; apparatus for taking blood samples; blood testing apparatus; apparatus for urine analysis for medical diagnostics, monitoring and reporting; {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 {specify purpose, e.g., for medical purposes}; containers for medical waste; devices for monitoring blood sugar; electronic diagnostic apparatus, namely, {specify particular type, e.g., x-ray diagnostic apparatus} for the detection of a wide variety of diseases; health monitoring devices, namely, personal medical {specify type of monitors, e.g., blood pressure, pulse, and blood oxygen} monitors for monitoring a wide variety of physical conditions and diseases; medical diagnostic apparatus, namely, {specify particular type, e.g., blood pressure, pulse, and blood oxygen monitors} for diagnosing a wide variety of physical conditions and diseases; 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 individualized, electronic monitors {specify particular type, e.g., for measuring neurological and cardiac activity}; home or portable monitors for monitoring a wide variety of physical conditions and diseases, namely, individualized, electronic monitors {specify particular type, e.g., for measuring neurological and cardiac activity}; medical apparatus in the nature of mobile electronic devices, namely, testing, monitoring and reporting devices for medical and healthcare purposes for individualized medicine and healthcare

 

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 41: On-line journals, namely, blogs in the fields of healthcare, medicine, diagnostics and personal health and fitness

 

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 diagnostic monitoring services; medical monitoring services, namely, monitoring the efficacy of therapy and total patient or consumer health; 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, medical diagnostic services, {clarify type of health management services, e.g., health care management services}, and emergency and trauma services, all for animals

 

Classification of Goods/Services

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to add International Class 41.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Multiple-Class Application Requirements

 

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 an intent to use the mark in commerce under Trademark Act Section 1(b):

 

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

 

(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”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The filing fees for adding classes to an application are as follows:

 

(1)  $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); 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, 1403.02(c).

 

• 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 the Trademark Electronic Application System (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 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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/29/2013 FOR U.S. APPLICATION SERIAL NO. 85721486

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please 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 7/29/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.