Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  April 25, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on April 23, 2020.

 

In a previous Office action dated March 3, 2020, Applicant was required to satisfy the following requirements: Amend the Identification of Goods and Services.

 

In response, Applicant has proposed an amended the Identification of Goods and Services, however the amendment is beyond the scope of the Identification of Goods and Services as previously amended. As a result, the Identification of Goods and Services as previously amended remains operative and the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Identification of Goods and Services Amendment Required
• Partial Abandonment Advisory

 

IDENTIFICATION OF GOODS AND SERVICES AMENDMENT REQUIRED

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended on February 3, 2020.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  Applicant’s goods and/or 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application, as amended, identifies Applicant’s software services as “Providing on-line downloadable medical software for displaying, recording, storing and analyzing medical data for diagnosis; providing on-line downloadable medical software with embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of the ultrasound images”.

 

However, the proposed amendment to the goods identified in this class is to “Providing on-line non-downloadable medical software for displaying, recording, storing and analyzing medical data for diagnosis; providing on-line non-downloadable medical software with embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of the ultrasound images”

 

This portion of the proposed amendment exceeds the scope of the current identification because Applicant specifically identified this software was downloadable, which is in direct logical opposition to the proposed amendment that the software is non-downloadable.

 

As a result, the entries of record “Providing on-line downloadable medical software for displaying, recording, storing and analyzing medical data for diagnosis; providing on-line downloadable medical software with embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of the ultrasound images” in the identification of services for International Class 42 must be clarified because it is indefinite, 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 downloadable software for these purposes as a good in International Class 9, or online retail store services featuring downloadable software for these purposes in International Class 35. However, as only the provision of online non-downloadable software is properly classified in International Class 42, Applicant must additionally amend the classification of these goods or services to the proper class or delete these entries.

 

Applicant may substitute the following wording, if accurate (suggestions in bold):

 

Class 9: to remain as is

 

Class 10: to remain as is

 

Class 35: online retail store services featuring downloadable medical software for displaying, recording, storing and analyzing medical data for diagnosis; online retail store services featuring downloadable medical software with embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of the ultrasound images

 

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or 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/or 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.

 

PARTIAL ABANDONMENT AND 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.

 

If applicant does not timely respond to this Office action, the following class will be deleted from the application:  International Class 42.  See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following classes only: Classes 9 and 10.  See TMEP §718.02(a). 

 

 

 

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).

 

 

Riso, Mark

/Mark Riso/

Trademark Examining Attorney

Law Office 108

(571)272-0167

Mark.Riso@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 25, 2020 for

U.S. Trademark Application Serial No. 88371342

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Riso, Mark

/Mark Riso/

Trademark Examining Attorney

Law Office 108

(571)272-0167

Mark.Riso@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 25, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”