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: 5/17/2014

 

THIS IS A FINAL ACTION.

 

TELEPHONE RESPONSE SUGGESTED

 

Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment.  Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension.  See TMEP §707.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 22, 2014.

 

In a previous Office action dated March 19, 2014, applicant was required to amend the identification of services and provide its foreign registration certificate.

 

Based on applicant’s response, the trademark examining attorney withdraws the requirement to provide its foreign registration certificate.  See TMEP §§713.02, 714.04.

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement set forth below.  See 37 C.F.R. §2.64(a); TMEP §714.04.

 

IDENTIFICATION OF SERVICES

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wording “pharmacy information and advisory services, namely, the provision of alerts via telecommunication and global computer networks relating to the taking of prescription and over the counter medicines and pharmaceutical products” in the identification of services needs clarification because it is too broad and could include services classified in other international classes (e.g., “Information and advisory relating to retail pharmacy services” in Class 35).  See TMEP §§1402.01, 1402.03.

 

Information services are classified according to the subject matter of the information provided.  TMEP §1402.11(b).  Therefore, to justify classification in Class 44, applicant must indicate the Class 44 purpose of its “pharmacy information and advisory services, namely, the provision of alerts via telecommunication and global computer networks relating to the taking of prescription and over the counter medicines and pharmaceutical products.”

 

Applicant may adopt the following identification, if accurate (please note that suggested amendments are in bold italics and suggested deletions are in strikethrough):

 

            International Class 44

 

“Healthcare, medical and personal medical well-being consultancy, information and advisory services; healthcare, medical and personal medical well-being monitoring, namely, medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable, implanted and portable medical devices with automated alert and monitoring capacity; medical aid and medical assistance services; emergency monitoring and assistance services in the medical and health care areas, namely, remote monitoring of data indicative of the health or condition of an individual for medical diagnosis and treatment purposes; pharmacy information and advisory services, namely, the provision of alerts via telecommunication and global computer networks relating to the taking of prescription and over the counter medicines and pharmaceutical products for medical treatment purposes; beauty consultancy, information and advisory services; information and advice relating to nutrition

 

An applicant may amend an identification of services only to clarify or limit the services; adding to or broadening the scope of the 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 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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS – ADVISORY

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b) and a foreign registration under Section 44(e):

 

(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.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

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)  A $325 fee per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp, via the Trademark Electronic Application System (TEAS).

 

(2)  A $375 fee per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(ii); TMEP §§810, 1403.02(c).

 

RESPONSE GUIDELINES – PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 44 will be deleted from the application:  “pharmacy information and advisory services, namely, the provision of alerts via telecommunication and global computer networks relating to the taking of prescription and over the counter medicines and pharmaceutical products.”  The application will then proceed with the following goods and/or services in International Class 44 only:  “Healthcare, medical and personal medical well-being consultancy, information and advisory services; healthcare, medical and personal medical well-being monitoring, namely, medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable, implanted and portable medical devices with automated alert and monitoring capacity; medical aid and medical assistance services; emergency monitoring and assistance services in the medical and health care areas, namely, remote monitoring of data indicative of the health or condition of an individual for medical diagnosis and treatment purposes; beauty consultancy, information and advisory services; information and advice relating to nutrition.”  See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

ASSISTANCE

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. 

 

/Kim L. Parks/

Trademark Examining Attorney

Law Office 112

571.272.6129

kimberly.parks@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 5/17/2014 FOR U.S. APPLICATION SERIAL NO. 86135174

 

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 5/17/2014 (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.