Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  August 05, 2020

 

 

This Office action is in response to applicant’s communication filed on June 10, 2020.

 

 

Identification of Goods

 

The amended identification of goods in Class 10 is indefinite and must be clarified because the medical devices and apparatus must be identified by their common commercial names.  Merely indicating that they are used for detecting or treating cancer is insufficient.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate.

 

 

Class 5 – [acceptable]

 

 

The identification in Class 9 will be amended in the alternative, as agreed to by applicant.

Class 9 -- Downloadable software for managing online purchases, price monitoring, price change alerts, refund request assistance and related e-commerce transactions; Downloadable software that enables users to organize and manage information sent electronically from merchants and that enables users to organize and manage mail; Computer programs for helping users determine which clothes will fit them in terms of size, style, and price; Downloadable interactive multimedia software featuring information in the fields of clothing and clothing fit; Computer software for helping users determine which clothes will fit them in terms of size, style, and price; Application software for collecting information of credit cards and electronic money and for making payment of credit cards and electronic money; Application software for helping users determine which clothes will fit them in terms of size, style, and price; Software for commerce over a global communications network, namely, computer software for use in commerce that helps users determine which clothes will fit them in terms of size, style, and price; Software for promoting other traders and services on the Internet, namely, application software for helping users determine which clothes will fit them in terms of size, style, and price; Downloadable computer application software for providing electronic messaging services, text messaging and instant messaging services; Computer software for providing electronic messaging services, text messaging and instant messaging services; Downloadable computer software for providing electronic messaging services, text messaging and instant messaging services; Downloadable computer game programs for mobile phones; Encryption software; Software for online messaging; Privacy protection software; Computer e-commerce and mobile-commerce software to allow users to perform electronic business transactions via a global computer network; Computer application software for mobile phones, tablets, and handheld computers, namely, ecommerce software to allow users to perform electronic business transactions relating to e-commerce, mobile-commerce and online shopping via a global computer network; Computer software for e-commerce, mobile-commerce, and online shopping, namely, software for chatting and messaging relating to e-commerce, mobile-commerce, and online shopping; Computer software for e-commerce, mobile-commerce, and online shopping, namely, virtual keyboards, character art, and user interfaces for assisting with shopping transactions; Downloadable electronic publications, namely, magazines, books and journals featuring information in the fields of telecommunications, social networking and finance; Mobile phones; Computers; Apparatus for recording, transmission or reproduction of sound or images; Cameras; Televisions; Microphones; Headsets for use with computers, telephones, smartphones; Communication and replication software for computer equipment and appliances, speakers and related electronic components; Location sharing software; Navigation software for walking directions, customized mapping of locations, street atlas information, electronic map display, and destination information; GPS navigation software; Motor vehicle navigation mapping software; Networking software, namely, software for connecting computer network users, for connecting global computer networks, for electronic messaging, instant messaging, text messaging; Downloadable graphics for mobile phones; Downloadable emoticons for mobile phones; Game software; Wearable telecommunication apparatus, namely, wearable walkie-talkies, satellite telephones, mobile telephones, activity trackers, mobile computers, fitness bands; Wearable communications devices in the form of wrist-mounted smartphones; Downloadable mobile applications for use with wearable computer devices for mobile computing, fitness tracking, health care monitoring, electronic messaging, instant messaging, text messaging; File sharing software; Interactive entertainment software, namely, interactive software for electronic messaging, instant messaging, text messaging and audio and video; Interactive computer software enabling electronic exchange of information between computer users; Downloadable software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network; Downloadable publications, namely, downloadable electronic magazines, books, journals in the field of telecommunications and social networking; Portable electronic devices for receiving, downloading, displaying, providing access to and reading text, images and sound and other digital content through wireless Internet access and for receiving, downloading, displaying, providing access to and reading electronically published materials, including, books, journals, newspapers, magazines, multimedia presentations; Computer hardware and software to transmit, receive, download, read and provide access to text, images, sound and other digital content; Computer hardware and software to transmit, receive, download, read and provide access to electronic publications; Portable electronic device for reading, displaying, receiving, purchasing, sharing, lending, accessing and storing downloadable electronic publications, especially, books, journals, newspapers, magazines, multimedia presentations, as well as text, images, sound, and digital website content, all through wired and wireless Internet access, and accessories therefore, namely, cases, covers, adapters and power cords; Computer software for use with computers and mobile devices which enables the computers and mobile devices to track, catalogue, visualize, and generate events, statistics and profiles in connection with books and the usage of an electronic reading service, to interact with digital content libraries, to download digital content therefrom, to interact with other users of digital content, to engage in social networking, to participate in customer incentive, reward and loyalty programs connected with books and the usage of an electronic reading service, and to receive advertising and promotional material based on the usage of an electronic reading service; Computer application software for mobile phones, namely, software for recognition and registration of physical books, and the downloading of ebooks; Downloadable computer software in the nature of computer and mobile applications that enable users to track, catalogue, visualize, and generate events, statistics and profiles in connection with books and the usage of an electronic reading service, and which enables users to interact with digital content libraries, and download digital content therefrom, and interact with other users of digital content; Portable electronic book readers; Portable computers for receiving, downloading, displaying, providing access to and reading text, images and sound and other digital content through wireless Internet access and for receiving, downloading, displaying, providing access to and reading electronically published materials, namely, books, journals, newspapers, magazines, multimedia presentations; Computer hardware and software to transmit, receive, download, read and provide access to text, images, sound and other digital content on portable electronic book readers; Computer hardware and software application to transmit, receive, download, read and provide access to text, images, sound and other digital content on portable electronic book readers; Downloadable mobile application providing access to ebooks and audiobooks; Computer programs for use in multiple document processing in the legal and accounting fields of the business and industry markets as well as the legal and accounting fields of the governmental market, specifically excluding the banking field; Downloadable software for downloading and transferring digital content, namely, eBooks, audiobooks, music, and video; Downloadable software in the nature of a mobile application that allows users obtain rebates, discounts, cash-back, coupons, vouchers and special offers in the nature of free shipping, dollar or percentage price reductions, free products or services, access to exclusive or limited products and services, and limited time offers for purchasing the products and services of the participating businesses of others; Consumer coupons downloaded from a global computer network; Computer software for use in monitoring, visualizing and inspecting application programming interface (APIs) and microservice traffic and data; Computer software for use in creating and maintaining technical documents, generating sample code and onboarding application developers; Computer software for use in securing, managing and extending application programming interfaces (APIs) and microservices; Computer software for processing electronic payments and for transferring funds to and from others; Authentication software for controlling access to and communications with computers and computer networks; Magnetically encoded credit cards and payment cards; Downloadable software for enabling the electronic transfer of money between users; Downloadable software for enabling processing of electronic funds transfers and payments made via ACH (automated clearing house), credit card, debit card, electronic check and electronic, mobile and online payments; Downloadable mobile apps for processing electronic payments, for customer services, and for information relating to credit card transactions; Computer software for travel agency services for ticketing, reservations and destination searches; Computer application software for mobile phones and handheld computers, namely, software for travel agency services for ticketing, reservations and destination searches; Computer software for digital publishing, content collaboration, and marketing of content for others; Computer software, namely, software development tools for the creation of application software for smartphones, web readers, ebooks, and portable handheld computers; Computer programs for user interface design; Computer software for converting digital content to other forms of digital media content and for digital publication in multimedia application software for smartphones, webreaders, ebooks, and portable handheld computers; Computer software for the digital publication of multimedia content through application software for smartphones, web readers, ebooks, and portable handheld computers; Computer software, namely, software development tools for the creation of application software for business platforms, including for staff onboarding, sales enablement and management, and digital publishing; Computer software for tracking application software usage data; Computer software that allows user to connect to e-commerce, fintech, and digital content services platforms; IC card readers and writers; Downloadable image and video files containing information in the field of finance; Electronic payment terminals; Computer software for collecting usage information of credit cards and electronic money, and for making payment by credit cards and electronic money; Magnetic card readers for credit cards; Tablet computers, and parts and fittings thereof; Computer programs for tablets, namely, downloadable mobile apps for processing electronic payments and for transferring funds to and from others; Data carriers recorded with computer programs for tablets, namely, computer operating software for processing electronic payments and for transferring funds to and from others; Cash registers; Personal digital assistants; Computer programs for personal digital assistants, namely, computer operating software for processing electronic payments and for transferring funds to and from others; Computer programs for cellular phones including smart phones, namely, computer operating software for processing electronic payments and for transferring funds to and from others; Cellular phones including smart phones; Parts and fittings for cellular phones including smart phones; Data carriers recorded with computer programs for cellular phones including smart phones, namely, computer operating software for processing electronic payments and for transferring funds to and from others; Automated teller machines; IC cards; Smartwatches; Smartphones; Wireless POS devices and computer operating programs therefor; Encoded electronic chip cards containing programming used to process electronic payments and for transferring funds to and from others; Blank magnetic cards; Pre-recorded magnetic tapes, IC cards, magnetic discs, optical discs, optical magnetic discs and other video disks and video tapes containing information in the field of processing electronic payments and transferring of funds to and from others; Application software for payment or settlement of electronic money, credit cards and debit cards used with barcode or QR code readers; Downloadable computer operating programs for IC card readers and writers; Electronic terminals for payment and settlement of electronic money; Downloadable computer programs for operating electronic terminals for payment and settlement of electronic money; Downloadable computer programs for payment and settlement of electronic money; Downloadable computer programs for recharging IC cards; Apparatus for recharging IC cards; Downloadable computer operating programs for Near field communication (NFC) technology-enabled readers; Near field communication (NFC) technology-enabled readers; Downloadable computer programs for wearable computer, namely, computer operating software; Downloadable computer programs for automatic vending machines, namely, computer operating software; Automatic vending machines; Document printers for use with computers for printing receipts; Downloadable computer programs for management and transaction of virtual currency, cryptocurrency or tokens of value; Computer programs for providing block chain networks and distributed networks; Downloadable computer programs for providing block chain network for virtual currency or cryptocurrency and distributed network for virtual currency or cryptocurrency; Downloadable computer programs for block chain network or distributed network for promoting the goods and services of others through the administration of sales and promotional incentive schemes involving loyalty points

 

Class 10 requires further clarification because as previously indicated, the specific nature of the medical devices must be identified.  Merely indicating their broad purpose for detecting or treating cancer is unacceptable.

Class 10 -- Surgical devices and instruments; Surgical apparatus and instruments; Medical device for detecting cancer, namely, {identify device by its common commercial name}; Medical apparatus for detecting cancer, namely, {identify appartus by its common commercial name}; Medical device for treating cancer, namely, {identify device by its common commercial name}; Medical devices, apparatus and instruments for detecting and treating cancer, namely, lasers for medical use, lasers for medical purposes, lasers for medical use including cylindrical diffusers and frontal diffusers, catheters, needle catheters, balloon catheters; Dental devices, apparatus and instruments for detecting and treating cancer namely, lasers for dental use, lasers for dental purposes, lasers for dental use including cylindrical diffusers and frontal diffusers, catheters, needle catheters, balloon catheters; Manually-operated exercise equipment for physical therapy purposes

 

Class 35 – [acceptable]

 

 

Class 36 – [acceptable]

 

 

Class 38 – [acceptable]

 

 

Class 39 – [acceptable]

 

 

Class 41 – [acceptable]

 

 

Class 42 – [acceptable in the alternative]

 

 

Class 43 – [acceptable]

 

 

Class 44 – [acceptable]

 

 

Class 45 – [acceptable]

 

 

New Issue – Scope of Foreign Registration

 

Please note that the foreign registration does not cover Classes 5 or 10, or any of the goods therein.

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

 

/Patrick Shanahan/ 

Patrick Shanahan

Trademark Attorney

USPTO Law Office 116

Ph: (571) 272-9216

patrick.shanahan@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 05, 2020 for

U.S. Trademark Application Serial No. 88174975

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

 

Patrick Shanahan

Trademark Attorney

USPTO Law Office 116

Ph: (571) 272-9216

patrick.shanahan@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 05, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”