NOTE TO THE FILE
SERIAL NUMBER: 88143134
DATE: 12/05/2018
NAME: jgriffin
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:X OTHER:
From: John Rake [mailto:jrake@lvklaw.com]
Sent: Wednesday, December 05, 2018 4:19 PM
To: Griffin, Jim <Jim.Griffin@USPTO.GOV>
Subject: RE: SERIAL NUMBER 88143134
Jim,
The proposed disclaimer and proposed amendment to the services description are both fine. Thanks,
-John
JOHN C. RAKE
Attorney
121 SW Morrison St., Suite 700
Portland, Oregon 97204
O 503-222-4424 D 503-542-3113
From: Griffin, Jim [mailto:Jim.Griffin@USPTO.GOV]
Sent: Wednesday, December 05, 2018 10:21 AM
To: John Rake
Subject: SERIAL NUMBER 88143134
Importance: High
Hi John,
I’m the examiner reviewing your trademark application. All I need to do before I can approve it is add a disclaimer of HEALTH INNOVATORS and make one small ID tweak.
HEALTH INNOVATORS is merely descriptive of the applicant’s services, since they’re targeted to health innovators. The newsletter starts out “Dear Innovator,” and later says “If you know a health innovator who could use an Energy Bar, please forward.” I did a quick search and found lots of others using the term. A representative sample is below.
I can add the disclaimer for you via an examiner’s amendment, and then approve your application for publication. I just need to get your authorization. You can either email me or call me at the number below.
The standard form wording for a disclaimer is: No claim is made to the exclusive right to use “HEALTH INNOVATORS” apart from the mark as shown.
http://studentreportinglabs.org/health-innovators/
http://www.aspeninstitute.org/programs/health-innovators-fellowship/
http://www.medstartr.com/pages/nolahichallenge19
http://www.wilsoncenter.org/program/citizen-health-innovators-project
“The Citizen Health Innovators Project focuses on developing regulatory and governance mechanisms for the fast-growing ecosystem of health innovators, built around maker spaces and community bio labs, to support responsible innovation in distributed networks.”
The ID tweak is very minor, but important. Downloadable newsletters delivered by email are in Class 9, but online newsletters that are delivered by email can stay in Class 41. Your ID currently reads “Providing newsletters available online and delivered to subscribers via email in the fields of healthcare…”. Yours in unclear as to what type of newsletters are delivered via email, so I’d suggest:
Providing ONLINE newsletters
available onlineand ONLINE NEWSLETTERS delivered to subscribers via email in the fields of healthcare, healthcare policy, healthcare policy reform, healthcare economics, healthcare politics, healthcare businesses, healthcare technology, entrepreneurship, evidence-based clinical medicine, and behavioral economics and psychology
I also have your other two SANDERS DIPIERO marks, but I’ll probably not get to those until tomorrow. But glancing at the ID, there appear to be several classes there. Blogs are in 41, downloadable pubs are in 9, commentary in 35 and 44, “audio programming” and “print media” indefinite. Might want to ask them how many classes they want for those marks and/or which is the most important.
Regards,
Jim Griffin
James T. Griffin
Examining Attorney, Law Office 103
United States Patent & Trademark Office
571-272-9169 (voice)
571-273-9169 (fax)