To: | Firestar Software, Inc. (handerson@andersongorecki.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88222789 - TRIALCLARITY - 777-013T |
Sent: | 3/14/2019 9:32:49 AM |
Sent As: | ECOM106@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88222789
MARK: TRIALCLARITY
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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: Firestar Software, Inc.
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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: 3/14/2019
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.
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).
IDENTIFICATION & CLASSIFICATION OF GOODS AND SERVICES
For instance, applicant has lumped both regular software and SAAS software services in International Class 9. SAAS services properly are classified in International Class 42.
Similarly, applicant has categorized “education” and “training” services in International Class 42, while they belong in International Class 41.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers
guidance and/or shows the changes being proposed for the identification of goods and services. If there is wording in the applicant’s version of the identification
of goods and services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant
should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.
Applicant may adopt the following identification, if accurate:
International Class 9: RECORDED software and cloud-based Software
As A Service (SaaS) for use with collecting, storing, managing, organizing, and sharing data, images, messages, emails, and medical device data used in the fields
of medical and pharmaceutical clinical trials and research, namely, for determining, managing, monitoring, controlling, analyzing, and reporting on the status, performance, safety, and results of
medical and pharmaceutical clinical trials and medical research; RECORDED SOFTWARE for the deriving, computing, and determining indicators and metrics of status, performance,
safety, results, and outcomes in a medical or pharmaceutical clinical trial or research program; RECORDED SOFTWARE for facilitating decision-making by sponsors of medical and
pharmaceutical clinical trials and research regarding the conduct of and adjustments to the execution of a medical and pharmaceutical clinical trial and research to optimize the outcomes; and
RECORDED SOFTWARE for communicating, enabling, guiding, facilitating, and tracking the actions taken by medical and pharmaceutical clinical trial and research team
personnel
International Class 41: EDUCATIONAL SERVICES, NAMELY, PROVIDING CLASSES AND TRAINING IN THE FIELDS OF THE DESIGN, PLANNING, IMPLEMENTATION AND USE OF SOFTWARE AND SAAS SERVICES
International Class 42: Consulting services in the area of the design, planning, implementation, and use of
software and SAAS SERVICES, namely, installation, adaptation, AND customization, training, and education
OF COMPUTER SOFTWARE; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR COLLECTING, STORING, MANAGING, ORGANIZING, AND SHARING DATA, IMAGES, MESSAGES, EMAILS, AND MEDICAL DEVICE DATA USED
IN THE FIELDS OF MEDICAL AND PHARMACEUTICAL CLINICAL TRIALS AND RESEARCH, NAMELY, FOR DETERMINING, MANAGING, MONITORING, CONTROLLING, ANALYZING, AND REPORTING ON THE STATUS, PERFORMANCE, SAFETY, AND
RESULTS OF MEDICAL AND PHARMACEUTICAL CLINICAL TRIALS AND MEDICAL RESEARCH; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR THE DERIVING, COMPUTING, AND DETERMINING INDICATORS AND
METRICS OF STATUS, PERFORMANCE, SAFETY, RESULTS, AND OUTCOMES IN A MEDICAL OR PHARMACEUTICAL CLINICAL TRIAL OR RESEARCH PROGRAM; SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR
FACILITATING DECISION-MAKING BY SPONSORS OF MEDICAL AND PHARMACEUTICAL CLINICAL TRIALS AND RESEARCH REGARDING THE CONDUCT OF AND ADJUSTMENTS TO THE EXECUTION OF A MEDICAL AND PHARMACEUTICAL CLINICAL
TRIAL AND RESEARCH TO OPTIMIZE THE OUTCOMES; AND SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR COMMUNICATING, ENABLING, GUIDING, FACILITATING, AND TRACKING THE ACTIONS TAKEN BY MEDICAL
AND PHARMACEUTICAL CLINICAL TRIAL AND RESEARCH TEAM PERSONNEL
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least 3 classes; however, applicant submitted fees sufficient for only 2 classes. 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.
For this application to proceed, applicant must explicitly address each requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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 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.
Cameron McBride
/Cameron McBride/
Examining Attorney - Trademarks
Law Office 106
(571) 272-0542
Cameron.McBride@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.