To: | Perception Health, LLC (edl@iplawgroup.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88161432 - CODE - 019627 |
Sent: | 11/27/2018 3:14:32 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88161432
MARK: CODE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Perception Health, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 11/27/2018
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).
In response to this Office action, the applicant must address the following issues:
DISCLAIMER REQUIRED
In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive. These unregistrable term at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
This wording is encompassed by applicant’s identification of services in Class 42. Thus, the wording merely describes applicant’s services related to medical coding. Further, the term “CODE” can also refer to a set of standards, such as the applicant’s Class 35 criteria. See attached Oxford Dictionary definitions for code and criterion. Therefore, the wording merely describes a feature of applicant’s services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CODE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
DRAWING DOES NOT REPRODUCE SATISFACTORILY – NEW DRAWING REQUIRED
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
INCOMPLETE MARK DESCRIPTION – AMENDMENT REQUIRED
The following description is suggested, if accurate:
The mark consists of a box placed at the top upper left-hand corner with the box's border diagonally split near the center of the top and right sides; to the lower right of the box is the stylized letters “CODE”.
INDEFINITE IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
Class 35
Class 42 is acceptable as written
Applicant may adopt the following identification, if accurate:
Class 35 – “[applicant to specify, e.g. human resource analysis services], namely, providing a criteria featuring statistical data on the performance of healthcare professionals for the purpose of assisting healthcare networks in making physician selection decisions.”
Class 42 – “Scientific and technological services, namely, conducting research and analysis to determine the extent and impact of different relationships between medical providers through specific disease states as indicated by medical coding to create benchmarks to create new classifications of medical providers for purposes of noting effectiveness and efficiency of the care network and for developing community care networks based on the data; Scientific and technological services, namely, correlation, regression analysis, and machine language learning to determine the extent and impact of different relationships between medical coding through the aggregation of specific disease states into proprietary service lines across multiple medical disciplines as indicated by medical coding, research and analytics specifically for developing a system capable of medical coding interoperability in the field of health providers and medical coding; Scientific and technological services, namely, medical research and analytics specifically for developing community care networks and medical coding interoperability in the fields of health providers and medical coding; Scientific and technological services, namely, medical research and design in the fields of healthcare analytics in medical coding; industrial analysis and research in the field of developing algorithms, care networks, care outcomes, and medical coding as it relates to specific communities; design and development of computer hardware and software; Providing a website featuring resources, namely, non-downloadable software for generating reports relating to the community care profile of hospitals, physicians, labs, home health, and imaging; Providing a website featuring resources, namely, non-downloadable software for medical data collection and medical coding, namely, generating medical coding consisting of data sets containing subcategories and subdivisions, including for medical services coding, for medical diagnosis statements coding, and for medical procedures statements coding; Providing a website featuring resources, namely, non-downloadable software for generating statistical and indexable reports on medical data collection and medical coding for administrative, financial, and analytical purposes; Providing a website featuring resources, namely, non-downloadable software for providing real-time monitoring service of an entire base of patients at any point in time and for proactively predicting the services needed and the resources required to fulfill the clinical needs of each patient in the patient base.”
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 TO THIS OFFICE ACTION
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.
/Emma Sirignano/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7031
emma.sirignano@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.