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: 4/22/2019

 

 

 

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

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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).

 

SUMMARY OF ISSUES:

 

• Identification of Services
• Failure to Function As a Trademark/Service Mark Advisory
• Response Guidelines

 

I.                IDENTIFICATION OF GOODS AND SERVICES

 

Certain wording in the identification of services is indefinite and overly broad, and therefore could include a wide array of services, including services found in other international classes, as indicated below.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

More specifically, in International Class 035, the following entry requires amendment and/or clarification to specify the primary nature of the service activity performed for the benefit of others.  Although similar wording was previously acceptable, recent revisions to the identification manual indicate that the entry for “public advocacy to promote awareness of . . .” was deleted because the term “public advocacy,” as it is used in the marketplace, is overbroad.  Here, the identification of services does not emphasize the primary nature of the activity as a promotional service and therefore must be clarified for a definite identification.

 

Additionally, in International Class 036, the following two clauses are rendered indefinite due to the construction of the entries and use of the term “sale”.  To be a registrable service, the activity must be primarily for the benefit of someone other than the applicant.  See In re Reichhold Chems., Inc., 167 USPQ 376, 377 (TTAB 1970).  “Sales” or “selling” normally refers to selling one’s own goods or services and is not a registrable service rendered for the benefit of others.  See TMEP §§1301.01(a)(ii), 1402.11.  Accordingly, applicant must clarify the identification of services to explicitly specify the service activity rendered primarily for the benefit of someone other than the applicant, such as “brokerage” services.

 

Turning to International Class 041, the following entry is indefinite since it fails to specify the method by which the educational services are rendered (e.g. classes, seminars, workshops, etc.): Educational services in the fields of healthcare and wellness.  Moreover, applicant should note that the provision of websites featuring information and educational information about health or healthcare are classified according to subject matter and therefore belong in International Class 044; as such these clauses must be clarified and reclassified.

 

Additionally, a few of the entries currently in International Class 044 must be further clarified to indicate the primary activity performed.  For instance, “providing information and data about social and environmental conditions affecting access to healthcare” must be classified according to the type of information provided.  Since this information could span “healthcare information” in International Class 044, “economic information” or “demographic information” in International Class 035, applicant must amend the identification to clearly describe the type of information provided.

 

Applicant may substitute the following wording, if accurate: 

 

International Class 016

 

Printed materials, namely, brochures and pamphlets containing information in the fields of healthcare and wellness

 

International Class 035

 

Marketing of medical, dental, vision and long term care insurance, prescription drug benefit plans and Medicare benefit plans; marketing of life, disability, and accidental death and dismemberment insurance plans; health care management and coordination of services, namely, creating, providing, managing and maintaining the business administration of health care provider networks; providing public policy information in the fields of healthcare, and wellness; promoting public awareness of the importance of making good healthcare choices and safe prescription use; promoting public awareness regarding making good healthcare choices and safe prescription use by means of public advocacy

 

International Class 036

 

Insurance and related insurance services, namely, the brokerage, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, and Medicare benefit plans; pharmacy benefit management services; insurance and related insurance services, namely, the brokerage, administration and underwriting of life, disability and accidental death and dismemberment insurance plans; providing information regarding insurance and related insurance services, namely, the brokerage, marketing, administration and underwriting of medical, dental, vision, and long term care insurance, prescription drug benefit plans, Medicare benefit plans 

 

International Class 041

 

Educational services in the nature of {“providing workshops, seminars, and panel discussions”} in the fields of healthcare and wellness

 

International Class 042

 

            Providing a website featuring a search engine for health insurance providers

 

International Class 044 

 

Comprehensive health care benefit programs, namely, integrated healthcare services with a network of healthcare providers including health care rendered through health maintenance organizations, preferred provider organizations, and high performance networks, namely, medical, dental, hospital, surgical, emergency, home health care, rehabilitative treatment, preventive health care treatment, physical and mental therapy services; providing information in the fields of healthcare and wellness; providing information and data in the fields of healthcare, wellness, and prescription medications; providing information regarding health issues, namely, social determinants on health based on community-based data, evidence-based programs and community needs; providing healthcare information and data about social and environmental conditions affecting access to healthcare; providing disease awareness information and treatment information in the fields of substance abuse and addiction; providing a website featuring information about healthcare, wellness, addiction treatment, and prescription medications; medical information; rehabilitation patient care services; rehabilitation of drug addicted patients; {Re-classified from International Class 041} Providing educational information about healthcare comprehensive healthcare benefit programs, namely, integrated healthcare services with a network of healthcare providers including healthcare rendered through health maintenance organizations and preferred provider organizations, namely, medical, hospital, home healthcare, preventive healthcare treatment, mental therapy services; Providing a website featuring information in the fields of healthcare, wellness, and nutrition

 

See TMEP §1402.01.

 

Applicant’s 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 services or add 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 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  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.

 

Applicant should note the advisory stated below.

 

II.             FAILURE TO FUNCTION AS A TRADEMARK/SERVICE MARK ADVISORY

 

THIS IS AN ADVISORY PERTAINING TO ALLEGATIONS OF USE AND POTENTIAL REFUSALS; APPLICANT IS NOT REQUIRED TO RESPOND TO THESE ISSUES AT THIS TIME SINCE SPECIMENS ARE NOT CURRENTLY REQUIRED.

 

Applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the following goods are not “goods in trade”:  “Printed materials, namely, brochures and pamphlets containing information in the fields of healthcare and wellness.”  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.06(b)-(c).

 

“Goods in trade” are items that an applicant sells or transports in commerce for use by others.  See Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1379-80, 103 USPQ2d 1672, 1675 (Fed. Cir. 2012); TMEP §1202.06.  Incidental items that an applicant uses to conduct its business, such as letterhead, invoices, and business forms, are generally not “goods in trade,” because these items are only useful to the applicant and are not separately sold or distributed to consumers.  TMEP §1202.06; see, e.g., Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1380, 1382, 103 USPQ2d at 1675-76 (holding computer software used for ordering contact lenses not goods in trade where applicant solely provided online retail stores for eyewear products, and software was not sold separately and had no independent value apart from applicant’s primary service); In re S’holders Data Corp., 495 F.2d 1360, 1361, 181 USPQ 722, 723 (C.C.P.A. 1974) (holding reports on subscribers’ securities portfolios not goods in trade where applicant solely provided financial reporting services, and reports were not sold separately and had no independent value apart from applicant’s primary service).

 

Although determining whether an applicant’s goods are independent goods in trade, or merely incidental to the applicant’s services, is made on a case-by-case basis, factors to consider include whether:  the goods are simply the conduit or necessary tool useful only to obtain applicant’s services, the goods are so inextricably tied to and associated with applicant’s services as to have no viable existence apart from them; and the goods are neither sold separately from nor have any independent value apart from applicant’s services.  In re Thomas White Int’l, Ltd., 106 USPQ2d 1158, 1161-62 (TTAB 2013) (citing Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676); TMEP §1202.06.  None of these factors is necessarily dispositive.  Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d at 1382, 103 USPQ2d at 1676; TMEP §1202.06. Applicant is therefore advised that additional specimens may be required at the time of filing an allegation of use to enable a complete examination of this application.

 

Similarly, applicant is advised that, upon consideration of an allegation of use, registration may be refused on the ground that the following entries are not service activities performed for the primary benefit of others:  “Marketing of medical, dental, vision and long term care insurance, prescription drug benefit plans and Medicare benefit plans; marketing of life, disability, and accidental death and dismemberment insurance plans.”  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§904.07(b), 1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:

 

(1)  A service is a real activity, not an idea, concept, process, or system.

 

(2)  A service is performed primarily for the benefit of someone other than the applicant.

 

(3)  A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).

 

To be a service, an activity must be primarily for the benefit of someone other than the applicant.  While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.   In re Reichhold Chems., Inc., 167 USPQ 376 (TTAB 1970); see TMEP §§1301.01(a), 1301.01(b)(i).  However, if the activity is done primarily for the benefit of others, the fact that applicant derives an incidental benefit is not fatal.  In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985).  On the other hand, if the activity primarily benefits applicant, it is not a registrable service even if others derive an incidental benefit.   In re Dr. Pepper Co., 836 F.2d 508, 5 USPQ2d 1207 (Fed. Cir. 1987).  The controlling question is who primarily benefits from the activity for which registration is sought.  Applicant is therefore advised that additional specimens may be required for these specific services at the time of filing an allegation of use to enable a complete examination of this application.  See 37 C.F.R. §2.61(b); TMEP §814.   Applicant is not required to respond to these issues at this time since a specimen is not currently required.

 

Applicant should note the response guidelines provided below.

 

III.           RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

Please note that foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c). 

 

The only attorneys who may practice before the USPTO in trademark matters are as follows:

 

(1)       Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories; and

 

(2)       Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.

 

See 37 C.F.R. §§2.17(a), (e), 11.1, 11.14(a), (c); TMEP §602.

 

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.  

 

/Amer Raja/

Examining Attorney

Law Office 121

(571) 270 5936

amer.raja@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 4/22/2019 FOR U.S. APPLICATION SERIAL NO. 88342355

 

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 4/22/2019 (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.