To: | Health Career Institute LLC (tm-pto@ssjr.com) |
Subject: | U.S. Trademark Application Serial No. 88299503 - HCI - 06462-T0010A |
Sent: | July 15, 2019 09:37:03 AM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88299503
Mark: HCI
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Correspondence Address: ST. ONGE STEWARD JOHNSTON & REENS LLC
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Applicant: Health Career Institute LLC
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Reference/Docket No. 06462-T0010A
Correspondence Email Address: |
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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: July 15, 2019
Applicant’s mark has been withdrawn from publication because the examining attorney inadvertently failed to require a disclaimer of the description designs of the STAR OF LIFE and the CADUCEUS. The undersigned apologizes for this oversight and any convenience it may cause the applicant.
SUMMARY OF ISSUES
DISCLAIMER REQUIREMENT
In this case, applicant must disclaim the designs of “STAR OF LIFE” and “CADUCEUS” because they are not inherently distinctive. This unregistrable designs at best are merely descriptive of a characteristic, function, feature, purpose, or use of applicant’s 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), (c). Him
A design and the word or words which describe the design are legal equivalents; therefore, a design must be disclaimed the same as descriptive wording. In re Eight Ball, Inc., 217 USPQ 1183, 1184 (TTAB 1983); TMEP §1213.03(c).
The design of STAR OF LIFE is the legal equivalent of the wording “EMS,” which the evidence from http://www.acronymfinder.com/EMS.html shows means EMERGENCY MEDICAL SERVICES. See the attached evidence from http://www.ems1.com/ems-advocacy/articles/47296048-The-Star-of-Life-a-shining-symbol-of-what-it-means-to-be-in-EMS/ shows this design means EMS.
The design of CADUCEUS is the legal equivalent of the wording “MEDICINE.” See the attached evidence from http://www.newworldencyclopedia.org/entry/Caduceus shows this design means “medicine.”
Given that applicant’s identified services are various educational services are in the field of nursing, emergency medical technician, paramedic, and firefighter training, the designs and their legally equivalent wording merely describes characteristics, features, purpose, or uses 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 the designs “STAR OF LIFE” and “CADUCEUS” 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.
ASSISTANCE
Applicant is encouraged to e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment (i.e., authorize the entry of the disclaimer via an examiner’s amendment).
For this application to proceed, applicant must explicitly address each refusal and/or 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.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
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.
How to respond. Click to file a response to this nonfinal Office action
/Donald Johnson/
Examining Attorney
Law Office 104
571-272-7831
don.johnson@uspto.gov
RESPONSE GUIDANCE