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 PARTIAL 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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 10/5/2018

 

The citations to pending Serial Nos. 86810972 and 86852641 and U.S. Registration No. 4892012 are withdrawn.  The identification/classification requirement is continued and maintained.

 

Clarification of Identification and Classification of Goods and Services Required

 

The goods “thermometers, namely, in-ear thermometers not for medical purposes” in International Class 9 must be reclassified in International Class 10.  37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. See attached entry from the online searchable U.S. Acceptable Identification of Goods and Services Manual. 

 

The goods “smart watches, namely, watches also featuring physiological parameter sensors and featuring a display screen and user interface for controlling sensors, entering data and receiving messages and notifications” in International Class 14 must be reclassified in International Class 9.  37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. See attached entry from the online searchable U.S. Acceptable Identification of Goods and Services Manual. 

 

The wording “Healthcare analysis services, namely, personal health coaching of a user and providing advice in the field of physical activity, sleep, stress and nutrition based on personal health data, physiological parameters, vital sign health information and contextual information” in International Class 41 and “healthcare analysis services, namely, making lifestyle suggestions and recommendations, namely, providing wellness information and advice in the fields of physical activity, nutrition, sleep and stress, based on personal health data, physiological parameters, vital sign health information and contextual information” in International Class 44 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  The service of providing advice is classified according to the subject of the advice provided and advice about physical exercise is in International Class 41, advice about sleep, nutrition and stress reduction is in International Class 44.

 

A sample amended identification is set forth below, which applicant may adopt, if accurate to describe applicant’s goods and/or services.  Wording in italic type represents items in the identification that require clarification.  Bold italic type indicates changes to applicant’s original identification.  Strikethrough marking indicates wording that must be deleted.  Wording in [brackets] following a fill in the blank provides guidance and examples of acceptable amendments.  For example, if the original identification is “clothing,” and the suggestion is “clothing, namely, ____ [specify items in this class, e.g., shirts, pants and coats]”, applicant may amend the identification to “clothing, namely, shirts, pants and coats” in the response to the office action. 

 

International Class 9:  Computer software, namely software for mobile applications on electronic devices for transmitting data from personal health measurement and monitoring devices for physiological parameters namely, blood pressure, blood properties, lung function, stress level, sleep parameters, respiratory events, heart rate, pulse rate, body temperature, weight, ultraviolet light exposure meters, activity levels, energy expenditure, and calories burned; Software for use in the field of healthcare and personal health and wellness for facilitating the capturing, combining, connecting, and analysis of personal health data, physiological parameters, and vital sign health information and software for facilitating the coaching of a user; Software interfaces for use with personal health measurement and monitoring devices, namely devices for physiological parameters; Personal health measurement devices, namely wearable computers in the shape of wrist bands, health bands, wristwatches, and smartwatches for analyzing and transmitting contextual data, personal health data, vital sign information, and physiological parameters, namely, blood pressure, blood properties, stress level, sleep parameters, respiratory events, heart rate, pulse rate, body temperature, weight, ultraviolet light exposure meters, activity levels, energy expenditure, and calories burned to smartphones, tablet computers, and computer terminals through internet websites and other computer and electronic communication networks; electronic display modules, namely, touch screens for wearable mobile computers; weighing scales, thermometers, not for medical purposes; Wireless communication devices for voice, data and image transmission, namely, smartphones and tablet computers; Downloadable computer software, namely, software for recording and tracking health data; apparatus for data storage, namely, blank flash drives; electronic apparatus with multimedia and interactive functions, namely, smartphones and wearable computers, and electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, and adapters, all for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods, namely, USB cables; covers, bags and cases adapted or shaped to contain all of the aforesaid goods; thermometers, namely, in-ear thermometers not for medical purposes; smart watches, namely, watches also featuring physiological parameter sensors and featuring a display screen and user interface for controlling sensors, entering data and receiving messages and notifications

 

International Class 10:  Medical apparatus and instruments, namely, health, fitness, exercise, and wellness sensors, monitors and displays for measuring, displaying, tracking, monitoring, storing, and transmitting physiological parameters, vital signs, biometric data, heart rate, respiration rate, body movement, and calories burned; health monitoring devices consisting of blood pressure measuring apparatus, thermometers, namely in-ear thermometers for medical purposes, and activity monitors for medical purposes; thermometers for medical purposes 

 

International Class 14:  Horological and chronometric instruments; wrist watch bands; watches; timepieces; chronographs for use as timepieces; chronometers; watchstraps; cases for watches, and horological and chronometric instruments, namely, cases adapted for watches and horological and chronometric instruments; parts for watches, and horological and chronometric instruments; smart watches, namely, watches also featuring physiological parameter sensors and featuring a display screen and user interface for controlling sensors, entering data and receiving messages and notifications; watches incorporating a memory function 

 

International Class 35:  Healthcare and personal health and wellness data and database management services; all aforesaid services for facilitating the capturing, combining and connecting of healthcare and personal health and wellness data 

 

International Class 38:  Provision of access to the Internet in the field of personal health and wellness content, websites and portals whether or not in a global healthcare information and communication network; providing telecommunications access to healthcare data and databases whether on a computer or on the internet or on medical devices; Electronic data interchange and transmission services for personal health and wellness data and personal health and wellness information; all aforesaid services for facilitating the capturing, combining and connecting of personal health data 

 

International Class 41:  Healthcare analysis service, namely, personal health coaching of a user and providing advice in the field of physical activity, namely, ___ [specify type of activity in this class, e.g., physical exercise], sleep, stress, and nutrition, based on personal health data, physiological parameters, vital sign health information and contextual information

 

International Class 42:  Scientific and technological services related to health and wellness, namely, scientific research in the field of health and wellness, and design and development of computer and wearable technology hardware and software for monitoring health and wellness; services for facilitating the capturing, combining and connecting of personal health data in a cloud or platform, namely, cloud hosting provider services, platform as a service featuring software platforms for capturing, combining, and connecting personal health data; medical testing and screening for scientific research purposes, within the framework of continuous personal health measurement and personal health monitoring, all aforesaid services provided whether or not on-line by means of the Internet or a cloud-based digital healthcare platform 

 

International Class 44:  Provision of an Internet website portal in the field of personal health and wellness; healthcare analysis services, namely, making lifestyle suggestions and recommendations, namely, providing wellness information and advice in the fields of physical ____ [specify type of activity in this class, e.g., rehabilitation and therapy]activity, nutrition, sleep and stress, based on personal health data, physiological parameters, vital sign health information and contextual information; Medical and healthcare services, namely, advice and consultancy in this field; professional healthcare services and medical testing and screening for diagnostic and treatment purposes, within the frame work of continuous personal health measurement and personal health monitoring, all aforesaid services provided whether or not online by means of the internet or a cloud-based digital healthcare platform; all aforesaid services for facilitating the capturing, combining and connecting of health data delivered from personal health measurement devices and self-generated health data 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.  See TMEP §1402.04.

 

Response Guidelines and Partial Abandonment

 

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

 

International Class 9:  thermometers, namely, in-ear thermometers not for medical purposes” in

 

International Class 14:  smart watches, namely, watches also featuring physiological parameter sensors and featuring a display screen and user interface for controlling sensors, entering data and receiving messages and notifications

 

International Class 41:  Healthcare analysis services, namely, personal health coaching of a user and providing advice in the field of physical activity, sleep, stress and nutrition based on personal health data, physiological parameters, vital sign health information and contextual information

 

International Class 44:  healthcare analysis services, namely, making lifestyle suggestions and recommendations, namely, providing wellness information and advice in the fields of physical activity, nutrition, sleep and stress, based on personal health data, physiological parameters, vital sign health information and contextual information

 

The application will then proceed with the following goods and services:

 

International Class 9:  Computer software, namely software for mobile applications on electronic devices for transmitting data from personal health measurement and monitoring devices for physiological parameters namely, blood pressure, blood properties, lung function, stress level, sleep parameters, respiratory events, heart rate, pulse rate, body temperature, weight, ultraviolet light exposure meters, activity levels, energy expenditure, and calories burned; Software for use in the field of healthcare and personal health and wellness for facilitating the capturing, combining, connecting, and analysis of personal health data, physiological parameters, and vital sign health information and software for facilitating the coaching of a user; Software interfaces for use with personal health measurement and monitoring devices, namely devices for physiological parameters; Personal health measurement devices, namely wearable computers in the shape of wrist bands, health bands, wristwatches, and smartwatches for analyzing and transmitting contextual data, personal health data, vital sign information, and physiological parameters, namely, blood pressure, blood properties, stress level, sleep parameters, respiratory events, heart rate, pulse rate, body temperature, weight, ultraviolet light exposure meters, activity levels, energy expenditure, and calories burned to smartphones, tablet computers, and computer terminals through internet websites and other computer and electronic communication networks; electronic display modules, namely, touch screens for wearable mobile computers; weighing scales, thermometers, not for medical purposes; Wireless communication devices for voice, data and image transmission, namely, smartphones and tablet computers; Downloadable computer software, namely, software for recording and tracking health data; apparatus for data storage, namely, blank flash drives; electronic apparatus with multimedia and interactive functions, namely, smartphones and wearable computers, and electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, and adapters, all for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods, namely, USB cables; covers, bags and cases adapted or shaped to contain all of the aforesaid goods

 

International Class 10:  Medical apparatus and instruments, namely, health, fitness, exercise, and wellness sensors, monitors and displays for measuring, displaying, tracking, monitoring, storing, and transmitting physiological parameters, vital signs, biometric data, heart rate, respiration rate, body movement, and calories burned; health monitoring devices consisting of blood pressure measuring apparatus, thermometers, namely in-ear thermometers for medical purposes, and activity monitors for medical purposes; thermometers for medical purposes 

 

International Class 14:  Horological and chronometric instruments; wrist watch bands; watches; timepieces; chronographs for use as timepieces; chronometers; watchstraps; cases for watches, and horological and chronometric instruments, namely, cases adapted for watches and horological and chronometric instruments; parts for watches, and horological and chronometric instruments; watches incorporating a memory function 

 

International Class 35:  Healthcare and personal health and wellness data and database management services; all aforesaid services for facilitating the capturing, combining and connecting of healthcare and personal health and wellness data 

 

International Class 38:  Provision of access to the Internet in the field of personal health and wellness content, websites and portals whether or not in a global healthcare information and communication network; providing telecommunications access to healthcare data and databases whether on a computer or on the internet or on medical devices; Electronic data interchange and transmission services for personal health and wellness data and personal health and wellness information; all aforesaid services for facilitating the capturing, combining and connecting of personal health data 

 

International Class 42:  Scientific and technological services related to health and wellness, namely, scientific research in the field of health and wellness, and design and development of computer and wearable technology hardware and software for monitoring health and wellness; services for facilitating the capturing, combining and connecting of personal health data in a cloud or platform, namely, cloud hosting provider services, platform as a service featuring software platforms for capturing, combining, and connecting personal health data; medical testing and screening for scientific research purposes, within the framework of continuous personal health measurement and personal health monitoring, all aforesaid services provided whether or not on-line by means of the Internet or a cloud-based digital healthcare platform 

 

International Class 44:  Provision of an Internet website portal in the field of personal health and wellness; Medical and healthcare services, namely, advice and consultancy in this field; professional healthcare services and medical testing and screening for diagnostic and treatment purposes, within the frame work of continuous personal health measurement and personal health monitoring, all aforesaid services provided whether or not online by means of the internet or a cloud-based digital healthcare platform; all aforesaid services for facilitating the capturing, combining and connecting of health data delivered from personal health measurement devices and self-generated health data

 

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

 

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. §§2.62(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.

 

/April Roach/

April Roach

Trademark Examining Attorney

Law Office 115

(571) 272-1092

april.roach@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 10/5/2018 FOR U.S. APPLICATION SERIAL NO. 86895717

 

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 10/5/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.