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.  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: June 30, 2019

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on May 9, 2019.

 

The refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).  In addition, the following requirement is now made FINAL: Amended Identification of Services Required – Software Function.  See 37 C.F.R. §2.63(b).

 

Trademark Act Section 2(e)(1) Refusal to Register – Mere Descriptiveness – Final Refusal

 

In the initial Office action, examining attorney refused registration of the applied-for mark, finding that it merely described a feature, use, or function of applicant’s services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.  In applicant’s communication filed on May 9, 2019, applicant submitted arguments in favor of registration.  The examining attorney has carefully considered applicant’s arguments, but finds them to be unpersuasive.  Therefore, for the reasons set forth below, the refusal under Trademark Act Section 2(e)(1) is now made FINAL.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant has applied to register the mark PRECISION COHORTING for “Software as a service (SAAS) services featuring software for providing analytics to help physicians improve efficiency and quality of patient care, including providing personalized interventions based on the needs and characteristics of the patients” in International Class 042.

 

In the initial Office action, examining attorney found applicant’s mark to merely describe a feature, use, or function of applicant’s software services.  Specifically, the examining attorney noted that precision medicine refers to the ability to leverage an individual’s genomic information to better diagnose a disease or disease risk, or to tailor treatment to improve medication’s effectiveness.  She further found that to apply precision medicine in a cohort setting means bringing this granular level of analysis to a meaningful subgroup (cohort) in order to best identify at risk populations and improve outcomes.  To these points, the examining attorney attached a newspaper article from the Star Tribune (Minneapolis MN) “A Key Building Block for Medicine’s Future” (June 7, 2016), describing precision medicine, a dictionary definition of cohort from The American Heritage® Dictionary of the English Language, and a page from applicant’s website announcing “real time precision cohorting capability.”  See Office action filed on November 9, 2018 and attachments referenced therein.  As such, the examining attorney concluded that in context, the applied-for mark merely describes a feature, use, or function of applicant’s software services, namely, that applicant’s software organizes, analyzes, and manages this granular group data.

 

In applicant’s Response to Office Action filed on May 9, 2019, applicant submitted arguments in favor of registration, arguing that (1) applicant coined the phrase precision cohorting, (2) the definition of the term precision medicine “can hardly be said to be” a common understanding of the term that would immediately convey a quality or characteristic of the applicant’s product to the consumer, (3) unlike the dictionary evidence provided, applicant uses the term cohorting as a verb and not a noun (cohort), and (4) the examining attorney has not provided any evidence that there is a competitive need for the term at issue.

 

Applicant’s arguments are not persuasive.  With respect to applicant’s first and last arguments, that applicant may have coined the term precision cohorting, or that applicant may be the first or only user of a merely descriptive designation does not necessarily render a word or term incongruous or distinctive.  See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).  In the present case, as demonstrated by the evidence attached to the initial Office action, the applied-for mark merely combines two descriptive terms, both of which retain their original descriptive meanings in relation to the identified services.  Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).  In this case, both the individual components and the composite result are descriptive of applicant’s services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. 

 

Second, applicant provides no evidence or explanation to support its argument that consumers would not understand precision cohorting, in context, to relate to precision medicine.  Applicant’s software services are specifically for use by physicians who practice medicine to “improve efficiency and quality of patient care, including providing personalized interventions based on the needs and characteristics of the patients” (see identification of services).  One presumes that physicians would understand the meaning of precision and precision medicine particularly in relation to software providing personalized patient interventions.

Finally, that applicant uses the term cohort as a verb (cohorting) rather than as a noun is not determinative as to whether the term precision cohorting is descriptive as a whole.  The verb cohorting simply refers to the act of grouping specific people together rather than referring to the particular group (cohort) itself.  The Farlex Partner Medical Dictionary© (Farlex 2012) confirms this, defining cohorting as “[i]mposed grouping of people, such as health care workers, potentially exposed to designated diseases” (see attached dictionary definition).  See also attached definition from the Centers for Disease Control and Prevention Glossary, defining cohorting as “the practice of grouping patients infected or colonized with the same infectious agent together to confine their care to one area and prevent contact with susceptible patients (cohorting patients)” in relation to the management of multidrug-resistant organisms in healthcare settings.

Further, the term cohorting is commonly used in the medical field.  See e.g., attached article abstract titled “Patient cohorting and infection control.” Semin Respir Crit Care Med. (December 2003) (“Cohorting of patients according to presence or absence of specific pathogens coupled with conventional hygienic precautions can, however, lead to a decrease in incidence and prevalence of chronic infections with these two species, wherefore patient cohorting is now an integral component of infection control in patients with CF.)

Precision cohorting, therefore, as applied to the identified software services, merely describes a feature, use, or function of those services, namely, that applicant’s software organizes, analyzes, and manages this granular group data.  In view of the foregoing, the refusal to register under Section 2(e)(1) of the Trademark Act is continued and made final.

 

In addition to being merely descriptive, the applied-for mark appears to be generic in connection with the identified services and, therefore, incapable of functioning as a source-identifier for applicant’s services.  In re The Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001); see TMEP §§1209.01(c) et seq., 1209.02(a).  Under these circumstances, neither an amendment to proceed under Trademark Act Section 2(f) nor an amendment to the Supplemental Register can be recommended.  See TMEP §1209.01(c).[1]

 

Amended Identification of Services Required – Software Function – Final Requirement

 

In the initial Office action, the examining attorney required the applicant to clarify the identification of services because applicant had not specified a software function.  See 37 C.F.R. §2.32(a)(6); TMEP§1402.01.  Specifically, the examining attorney found while the identification of services identified the intended result of the software services (“providing analytics to help physicians improve efficiency and quality of patient care, including providing personalized interventions based on the needs and characteristics of the patients”), the description did not indicate the function of applicant’s software.  Applicant did not address this requirement in its Response to Office Action.

 

The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Applicant may adopt any or all of the following wording, if accurate:

 

·       “Software as a service (SAAS) services featuring software for managing, organizing, and analyzing data to help physicians improve efficiency and quality of patient care, including providing personalized interventions based on the needs and characteristics of the patients” in International Class 042.

 

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.

 

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).

 

Response Guidelines

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

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 $125 per 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 or e-mail without incurring this additional fee.  

 

 

 

/Laurie R. Kaufman/

Managing Attorney

Law Office 114

571.272.8913

laurie.kaufman@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.