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: 9/26/2013

 

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 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).

 

 

Identification of Goods/Recitation of Services

 

 

 

Identification of Goods

 

 

 

The identification of goods is indefinite and must be clarified because the goods are not clearly and concisely described.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

 

Class 1:  Reagents for scientific or research use; diagnostic reagents for clinical or medical laboratory use; chemical preparations for scientific purposes; reagents for chemical analysis; diagnostic kits consisting primarily of {specify contents of kits in Class 1, e.g., 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; antibodies for in vitro scientific or research use; biochemicals, namely, {specify type in Class 1, e.g., polynucleotides for in vitro and in vivo scientific and research purposes}; biomedical compounds, namely, {specify type in Class 1, 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 clinical or medical laboratory use;

 

 

 

Class 5:  {This wording is no longer acceptable because it has been deemed too broad.  Applicant must delete or be more specific in regard to the type of preparations intended} Biological and chemical preparations for medical or veterinary use; reagents and media for medical or veterinary purposes; clinical medical reagents; biological and chemical preparations, namely, antibodies for clinical, medical or veterinary use to detect and analyze substances; diagnostic kits comprised of {specify components of kits in Class 5, e.g., medical diagnostic reagents and assays} for medical or veterinary use; diagnostic preparations for medical or veterinary purposes; drug testing kits comprised of {specify components of kits in Class 5, e.g., 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 treatment of a wide variety of diseases and health disorders; test strips for medical and laboratory analysis of blood; ovulation test kits; biological tissue cultures for medical or veterinary purposes; culture media for cultivating blood cells;

 

 

 

Class 9:  Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; computer software for medical monitoring and analysis of medical data; computer software for analysis of body fluids; computer software for communication and data transfer between health care professionals and patients; computer hardware; mobile electronic devices, namely, {specify type of device in Class 9, e.g., mobile phones, tablet computers, etc.}; downloadable electronic publications in the nature of {indicate specific nature of publication} in the field of {indicate subject matter of publication};

 

 

 

Class 10:  Medical devices, namely, {specify type of device in 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 for {specify purpose of apparatus}; medical measuring apparatus, namely, 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 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; diagnostic apparatus for the detection of a wide variety of diseases; health monitoring devices, namely, {specify type of device in Class 10, e.g., blood pressure monitors, thermometers and pedometers}; medical diagnostics apparatus for {specify purpose of goods}; medical apparatus and instruments for monitoring blood properties; medical devices for obtaining body fluid samples; patient medical monitors for monitoring a wide variety of physical conditions and diseases;

 

 

Recitation of Services

 

The recitation of services is indefinite and must be clarified because some of the services are not clearly and precisely described.  See TMEP §1402.01.  Applicant may adopt the following identification, if accurate: 

 

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 patient-authorized, HIPAA-compliant  sharing and maintenance of patient medical information between and amongst the patient and healthcare professionals providing services to the patient;

 

Class 042:   Medical and scientific research services in the fields of blood analysis health care and health care monitoring; pharmaceutical research services; pharmaceutical research and development; 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 and other healthcare providers to generate, manage and exchange medical information; Software as a Service (SaaS) featuring software for {specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc medical and disease analysis}  in the field of  medical and disease analysis in International Class 042.

 

Class 44:  Medical evaluation services, namely, {specify type of services in Class 44}; medical evaluation services, namely, assessment of patients undergoing medical treatment; medical 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, namely, {specify type of services in Class 44, e.g., providing a database in the field of sleep apnea and home sleep testing diagnostic information based on collected data and information all for treatment and diagnostic purposes}; 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 providing {specify type of special services, e.g., advanced medical, diagnostic or surgical services for animals}; medical and veterinary services; biomedical services, namely, [applicant must specify the specific type of services]—(the services may be classified in International Class 039 See ID Manual (Biomedical services, namely, the storage of human cells for medical use (039)); advisory, consultative and telephone helpline services relating to the use of apparatus, instruments and test kits diagnostic testing, self testing, self monitoring and testing for adverse drug reactions;

 

 

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.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

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.

 

 

/C. Dionne Clyburn/

C. Dionne Clyburn

Law Office 110

571-272-9358

dionne.clyburn@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 9/26/2013 FOR U.S. APPLICATION SERIAL NO. 85960709

 

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 9/26/2013 (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.