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: 3/23/2016

 

This Office action supersedes the previous Office action issued earlier on March 23, 2016 in connection with this application.

 

The examining attorney would like to clarify the partial nature of the identification requirement and advise the applicant of the potential partial abandonment of specific services if a response to the Office Action is not received within the six-month period for response.  Therefore, applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the earlier Office action dated March 23, 2016.  The issue(s) raised in the earlier sent March 23, 2016 Office action is as follow:  amend the identification of services.  

 

Applicant must respond to all issues raised in this Office action and the previous March 23, 2016 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a).  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

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.

 

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 the USPTO will not accept a formal response 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 37 C.F.R. §2.62(c); TMEP §707.

 

SUMMARY OF ISSUES:

• Identification of Services
• Advisory: Partial Abandonment of Specific Services

 

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 SERVICES

 

The wording “Software as a service (SAAS) services featuring software for providing online business intelligence and decision support solutions to the dental industry” in the identification of services is indefinite and must be clarified because it does not clearly state the function of the software.  While the broad overall general use of the software is articulated, it does not indicate the precise function the software performs.  See TMEP §1402.01.

 

Applicant may adopt the following identification, if accurate: 

 

International Class 42: Computer services, namely, providing search platforms to allow users to access profiles of dental provider practice patterns, denial rates and fraud and abuse gaming patterns for determining the likelihood that a dental claim will result in savings if reviewed; Software as a service (SAAS) services featuring software for providing online business intelligence and decision support solutions to the dental industry ­­­_______ {specify the function of the program, i.e. by combining information from various databases and presenting it in an easy-to-understand user interface}; Software as a service (SAAS) services featuring software for profiling of dental provider practice patterns into a proprietary predictive savings analysis that determines the relative likelihood that a dental claim will result in savings if reviewed; Software as a service (SAAS) services featuring software for providing access to an analytics engine which evaluates a dental payer's daily claims volume in near real-time, predicts which dental claims have the highest probability of delivering savings for the dental payer and which should be sent for utilization review

 

See TMEP §1402.01.

 

An applicant may only amend an identification to clarify or limit the goods or services, but not to add to or broaden the scope of the goods or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

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.

 

ADVISORY: PARTIAL ABANDONMENT OF SPECIFIC SERVICES

 

If applicant does not respond to this Office action within the six-month period for response, the following services in International Class 42 will be deleted from the application: 

 

International Class 42: Software as a service (SAAS) services featuring software for providing online business intelligence and decision support solutions to the dental industry

 

The application will then proceed with the following services in International Class 42 only: 

 

International Class 42: Computer services, namely, providing search platforms to allow users to access profiles of dental provider practice patterns, denial rates and fraud and abuse gaming patterns for determining the likelihood that a dental claim will result in savings if reviewed; Software as a service (SAAS) services featuring software for profiling of dental provider practice patterns into a proprietary predictive savings analysis that determines the relative likelihood that a dental claim will result in savings if reviewed; Software as a service (SAAS) services featuring software for providing access to an analytics engine which evaluates a dental payer's daily claims volume in near real-time, predicts which dental claims have the highest probability of delivering savings for the dental payer and which should be sent for utilization review

 

See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

ASSISTANCE

 

If applicant has questions regarding its application or 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. §§2.62(c), 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.

 

 

 

 

 

 

 

 

 

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee. 

 

 

 

/Hanna Cho/

Hanna Cho

Trademark Examining Attorney

Law Office 105

(571) 270-1961

Hanna.Cho@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 3/23/2016 FOR U.S. APPLICATION SERIAL NO. 86829372

 

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 3/23/2016 (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.