To: | CHG Management, Inc. (jstringham@wnlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88312606 - COMPHEALTH - 15704.2.2 |
Sent: | March 09, 2020 11:37:20 AM |
Sent As: | ecom112@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88312606
Mark: COMPHEALTH
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Correspondence Address: 60 East South Temple, Suite 1000
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Applicant: CHG Management, Inc.
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Reference/Docket No. 15704.2.2
Correspondence Email Address: |
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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: March 09, 2020
This Office action is in response to applicant’s communication filed on February 4, 2020.
The applicant has proposed an amendment to the identification of goods in Class 9. The proposed amendment to the identification of goods is unacceptable.
The following requirements are now made FINAL: See 37 C.F.R. §2.63(b).
FINAL - IDENTIFICATION OF GOODS AND SERVICES
The identification of goods and services remains indefinite and must be clarified because applicant has included both downloadable and non-downloadable software in Class 9. Applicant was advised in the initial Office action that under Nice 11-2019, computer software in Class 9 must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods. Therefore, this wording must be clarified to specify whether the software is “downloadable” and/or “recorded” in Class 9, OR, to specify that the applicant is providing the temporary, online non-downloadable use of the software, if applicable, which would be a service in Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant included both downloadable and non-downloadable software in Class 9. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id. Applicant must amend the identification to specify the common commercial or generic name of the services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may adopt the following wording, if accurate:
Class 9
Downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning, in International Class 9.
Class 42
Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; providing temporary use of online non-downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning, in International Class 42.
TMEP §1402.01.
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.
Accordingly, the requirement to amend the identification of goods is maintained and made FINAL.
PROPER RESPONSE TO FINAL REQUIREMENT – Partial Abandonment Advisory
In such case, the application will proceed for the following goods and/or services only: “Downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; downloadable computer software, namely, workforce management software for tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning” in Class 9 and all of the services in Class 42, namely, “Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing the activities of employees, contingent workers and other staff; Software as a Service (SAAS) services featuring software for workforce management, namely, tracking, recording, analyzing and managing human resources data, employee time and attendance, employee staffing and scheduling, employee payroll and compensation information, employee performance reviews, employee benefits information, employee succession planning, employee credentials, employee competencies, personal information about employees, employee productivity, employee workflow, employee educational, learning and development requirements and information, recruiting activities and workforce planning; Software as a service (SAAS) services featuring software for managing worker productivity; Software as a service (SAAS) services featuring software for posting and searching and claiming jobs; Software as a service (SAAS) services featuring software for workforce management; Software as a service (SAAS) services featuring software for building a social network of workers and employers; Software as a service (SAAS) services featuring software for connecting employers with independent contractors and freelancers; Software as a service (SAAS) services featuring software for managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services featuring software for connecting workers with employers; Software as a service (SAAS) services featuring software for managing interactions with workers, employers and customers; Software as a service (SAAS) services, namely, hosting software for use by others for use hiring workers from recruitment database; Software as a service (SAAS) services, namely, hosting software for use by others for use managing worker productivity; Software as a service (SAAS) services, namely, hosting software for use by others for use posting and searching and claiming jobs; Software as a service (SAAS) services, namely, hosting software for use by others for use workforce management; Software as a service (SAAS) services, namely, hosting software for use by others for use building a social network of workers and employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing quality of work and customer satisfaction by hiring and managing workers effectively; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting employers with independent contractors and freelancers; Software as a service (SAAS) services, namely, hosting software for use by others for use connecting workers with employers; Software as a service (SAAS) services, namely, hosting software for use by others for use managing interactions with workers, employers and customers.”
RESPONSE GUIDELINES
Response guidelines. 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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Sharon A. Meier/
Trademark Attorney, LO 112
571-272-9195 - phone
sharon.meier1@uspto.gov
RESPONSE GUIDANCE