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.

 

 

ISSUE/MAILING DATE: 3/19/2019

 

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.

 

SUMMARY OF ISSUES:

• Identification of Goods and Services Requirement
• Clarification of the Number of Classes for Which Registration is Sought Requirement
• Multiple-Class Application Requirements Advisory
• Disclaimer Requirement

 

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).

 

However, applicant must respond to the following requirements.

 

IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

The following wording in the identification of goods and services is indefinite and must be clarified because it does not sufficiently specify, the nature, purpose, and/or field of use of the goods and services identified: “Printed matter; books; magazines; posters; leaflets; manuals; instructional and teaching materials; all of the aforesaid relating to medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication” in International Class 016; “Medical and health care insurance services; savings scheme services relating to medical and health care insurance; administration of patient reimbursement programs; assisting others with insurance verification and evaluation, eligibility status and related information; information, advisory and consultancy services relating to all the aforesaid services” in International Class 036; and “Providing medical support to healthcare professionals, caregivers and patients; information, advisory and consultancy services relating to all the aforesaid services”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Particularly, the wording “all of the aforesaid relating to medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations and dosing and administering of medication” in International Class 016; “information, advisory and consultancy services relating to all the aforesaid services” in International Class 036; and “information, advisory and consultancy services relating to all the aforesaid services” in the identification of goods and services is indefinite and must be clarified by (1) specifying the common commercial or generic name for these goods and services, or (2) deleting this wording.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a). This wording is an open-ended “catch-all” word or phrase (e.g., “etc.,” “and other similar services,” “and related services”) that is not acceptable because it fails to identify the specific nature, field or subject matter of applicant’s goods and services. See TMEP §1402.03(a).  

 

In an identification, an applicant must use the common commercial or generic name for the services, be specific and all-inclusive, and avoid using indefinite words or phrases. TMEP §§1402.01, 1402.03(a).

 

Furthermore, the wording “administration of patient reimbursement programs” in the identification of services for International Class 036 must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “business administration of patient reimbursement programs” in International Class 035 or “financial administration of patient reimbursement programs” in International Class 036.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 016:         “Printed matter, namely, paper signs, books, manuals, curricula, newsletters, informational cards and brochures in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations, and dosing and administering of medication; printed books in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations, and dosing and administering of medication; magazines in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations, and dosing and administering of medication; posters; leaflets about medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations, and dosing and administering of medication; manuals in the field of medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations, and dosing and administering of medication; printed instructional and teaching materials medical disorders and conditions, medical treatments and equipment, pharmaceutical preparations, and dosing and administering of medication”

 

International Class 035:         “Business administration of patient reimbursement programs”

 

International Class 036:         “Medical and health care insurance brokerage services; savings account services relating to medical and health care insurance; financial administration of patient reimbursement programs; Insurance services, namely, insurance eligibility review and verification in the field of {specify field, e.g., life, health, accident, fire} industry; financial evaluation for insurance purposes; providing information about medical and healthcare insurance plans”

 

International Class 044:         “Providing medical support in the nature of medical care to healthcare professionals, caregivers and patients; provision of information and advice relating to medical disorders and conditions, medical treatments and pharmaceutical preparations; provision of information and advice relating to the dosing and administering of medication; provision of information and advice relating to medical equipment; information, advisory and consultancy services relating to all the aforesaid services”

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See TMEP §1402.07(e).

 

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.

 

CLARIFICATION OF THE NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT REQUIREMENT

 

The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fee sufficient for only 3 classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. Therefore, applicant must clarify the number of classes for which registration is sought.

 

Applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application identifies goods 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(s) already paid (view the USPTO’s current fee schedule). 

 

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.

 

DISCLAIMER REQUIREMENT

 

Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “BIOSCIENCES” in the mark because it is not inherently distinctive. This unregistrable term at best is merely descriptive of the characteristic of applicant’s goods and 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). 

 

The attached evidence from Merriam-Webster Dictionary shows the wording BIOSCIENCES in the applied-for mark is the plural form of “BIOSCIENCE” means “life science”. Furthermore, the attached evidence from Merriam-Webster Dictionary shows that “LIFE SCIENCES” are “branch of science (such as biology, medicine, and sometimes anthropology or sociology) that deals with living organisms and life processes —usually used in plural”. Thus, the wording BIOSCIENCES  in the applied-for mark merely describes a characteristic of applicant’s goods and services, namely, that applicant’s goods and services are provided in relation to a field of science that deals with living organisms and life processes, namely, medicine as indicated in applicant’s identification of goods and 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 “BIOSCIENCES” 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. 

 

RESPONSE GUIDELINES

 

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. Applicant is encouraged to call or email the assigned attorney below to resolve the issues in this Office action.

 

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.  

 

 

 

/Obieze Mmeje/

Examining Attorney

Law Office 122

(571) 272-7694

Obieze.Mmeje@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/19/2019 FOR U.S. APPLICATION SERIAL NO. 88226693

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 3/19/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.