To: | Epic Systems Corporation (tm-dept@quarles.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85951236 - WISDOM - 310265.00179 - Request for Reconsideration Denied - Return to TTAB |
Sent: | 10/29/2014 9:21:05 PM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85951236
MARK: WISDOM
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Epic Systems Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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REQUEST FOR RECONSIDERATION DENIED
ISSUE/MAILING DATE: 10/29/2014
The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.64(b); TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a). The refusal made final in the Office action dated April 11, 2014 is maintained and continues to be final. See TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).
In the present case, applicant’s request has not resolved the outstanding issue, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issue. Accordingly, the request is denied.
Applicant asserts in the October 7, 2014 request for reconsideration that there is no likelihood of confusion because applicant’s software is a component of a software suite that is custom tailored to each purchaser and which costs millions of dollars to purchase and implement. However, as noted in the final Office action, applicant’s goods, as currently identified, encompass software that could be purchased by solo or small healthcare practices, whose managers may not be knowledgeable about software. In addition, the registrants’ software is not limited to particular trade channels and therefore is presumed to include software of the types described in the registrations for use in the dentistry, medical and healthcare fields.
Therefore, applicant’s assertions concerning the process and cost involved in purchasing and implementing applicant’s software do not obviate the Section 2(d) refusal.
Application Will Be Returned to the Board
Applicant has filed a timely notice of appeal with the Board. Therefore, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has any questions about this Denial of Request for Reconsideration, please contact the undersigned examining attorney.
/Linda Lavache/
Trademark Examining Attorney
Law Office 106
p. 571.272.7187
f. 571.273.9106
linda.lavache@uspto.gov (informal inquiries only)
TEAS PLUS APPLICANTS – TO MAINTAIN REDUCED FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus application form must (1) continue to submit certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(b) for a complete list of these documents); (2) accept correspondence from the USPTO via e-mail throughout the examination process; and (3) maintain a valid e-mail address. See 37 C.F.R. §2.23(a)(1), (a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these three requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. However, in certain situations, authorizing an examiner’s amendment by telephone will not incur this additional fee.