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.

 

TEAS RF applicants must submit responses and other documents electronically or pay an additional fee per international class.  Please see the TEAS RF application response requirements, which are set forth at the end of this Office action.

 

ISSUE/MAILING DATE: 1/16/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

Results of Trademark Act Section 2(d) Search

 

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).

 

 

Summary of Issues that Applicant Must Address

 

1.     Requirement to Clarify the Identification of Services

2.     Multiple Class Requirements - Section 1(b) Basis (if applicable)

 

 

Requirement to Clarify the Identification of Services

 

The wording “Computer programming languages and programs, namely, domain-specific programming languages and programs for information interoperability in the healthcare domain that allow a user to specify a clinical or health information model, publish that model in one or more standard forms, and store, search, and maintain revisions of the model within a model repository” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “computer programming languages” does not identify a service for which registration may be sought, as a programming language is a particular method of writing instructions that can be translated into machine language and then executed by a computer.[1]  A concept, idea, system, process, or method is not a registrable service.  See TMEP §1301.01(a)(i).  However, a computer program that utilizes computer programming language to carry out its particular function does identify a registrable good.  Therefore, applicant must rewrite the identification to clarify the nature of the goods/services, classify them in the appropriate class(es), and ensure that the function of the computer programs is made clear.  See TMEP §1402.03(d).

 

The wording “design, development, and implementation of computer programming languages and programs, clinical and health data models, and other abstract formalizations of clinical and health data, for information interoperability in healthcare particularly in the context of electronic databases storing clinical and health data and other electronic storage and communication systems for clinical data and health data” in the identification of services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, applicant must clarify the nature of the “programs” to which the services pertain, i.e., computer programs.  In addition, the term “implementation” is indefinite with respect to “clinical and health data models, and other abstract formalizations of clinical and health data” because it is not clear what service activity “implementation” refers to the context of such models and abstract formalizations, and it could potentially identify services in another class, such as a business implementation service.  The examining attorney is unable to suggest any substitute language for the “implementation” activity in the context of data models and abstract formalizations because the services are unclear from the application record.  In addition, the wording “other abstract formalizations of clinical and health data” does not adequately identify the nature of what applicant designs, develops and implements.  This wording must either be deleted or replaced with language that clearly identifies the nature of what is being designed, developed and implemented.

 

Similarly, the wording “consulting services in the design, development, implementation, and maintenance of clinical data models and other abstract formalizations of clinical and health data, and computer programming languages for information interoperability in healthcare particularly in the context of databases storing clinical and health data and other electronic storage and communication systems for clinical data and health data” in the identification of services is indefinite and must be clarified because the subject matter of the consulting services does not clearly identify subject matter in International Class 42 only, for reasons similar to those explained in the preceding paragraph.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Consulting services are classified according to the subject matter of the consulting services.  TMEP §1402.11(e).  Therefore, applicant must amend the current wording to clearly identify consulting services in a single class so as to enable proper classification of the consulting services.

 

Scope Advisory

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Suggested Amendments

 

Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of goods and/or services.  If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as this: strikethrough.  Applicant should enter its amendments in standard font.  If applicant wishes to accept the suggested deletions, applicant must manually delete the struck through wording in any USPTO response form.  Copying and pasting the language below will not result in deletion of the struck through wording, which will remain within the identification.

 

Applicant may adopt the following identification of services, if accurate:

 

International Class 9:  Computer programs featuring domain-specific programming languages for information interoperability in the healthcare domain that allow a user to specify a clinical or health information model, publish that model in one or more standard forms, and store, search, and maintain revisions of the model within a model repository

 

International Class 42:  Computer programming languages and programs, namely, domain-specific programming languages and programs for information interoperability in the healthcare domain that allow a user to specify a clinical or health information model, publish that model in one or more standard forms, and store, search, and maintain revisions of the model within a model repository; design, development, and implementation of computer programming languages and computer programs, clinical and health data models, and other abstract formalizations of clinical and health data, for information interoperability in healthcare particularly in the context of electronic databases storing clinical and health data and other electronic storage and communication systems for clinical data and health data; design and development of clinical and health data models for information interoperability in healthcare particularly in the context of electronic databases storing clinical and health data and other electronic storage and communication systems for clinical data and health data; consulting services in the design, development, implementation, and maintenance of clinical data models and other abstract formalizations of clinical and health data, and computer programming languages for information interoperability in healthcare particularly in the context of databases storing clinical and health data and other electronic storage and communication systems for clinical data and health data; consulting services in the design and development of clinical data models for information interoperability in healthcare particularly in the context of databases storing clinical and health data and other electronic storage and communication systems for clinical data and health data

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

Multiple Class Requirements – Section 1(b) Basis

 

Applicant must clarify the number of classes for which registration is sought.

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9 and 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

If applicant has any questions about this Office action, please contact the undersigned examining attorney.

 

/Linda Lavache/

Trademark Examining Attorney

Law Office 106

p. 571.272.7187

f. 571.272.9106

linda.lavache@uspto.gov (informal inquiries only)

 

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.

 

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.  

 

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.