To: | Lifecare Advocates, LLC (jweintraub@jwpatents.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88375893 - LA - LCA-003TM |
Sent: | 6/21/2019 2:37:53 PM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88375893
MARK: LA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Lifecare Advocates, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/21/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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).
SPECIMEN – PARTIAL
The following refusal applies only to those services identified in International Class 36, and does not pertain to the services outlined in International Class 45.
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 36. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). Specifically, although the submitted specimen contains the applied-for mark, it does not demonstrate that applicant provides healthcare benefit consultation or information pertaining to government financial assistance programs. As such, the submitted specimen does not demonstrate use of the mark in commerce in connection with the applied-for services in International Class 36.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of services identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Specimens comprising advertising and promotional materials must show a direct association between the mark and the services. TMEP §1301.04(f)(ii).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the services identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
AMENDMENT TO THE IDENTIFICATION OF SERVICES – PARTIAL INTERNATIONAL CLASS 45 ONLY
The following applies to only the entries identified below in International Class 45. Applicant should note that the goods and services as recited in International Class 36 are acceptable as currently identified.
As further explained below, the wording used to describe many of the applied-for goods needs clarification because it is indefinite, overbroad, or contains vague wording that must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Specifically, applicant should note the following issues:
Full Suggested Identifications
In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services require clarification. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.
Suggested amendments appear below. Please note that the suggestions are in bold, explanatory information is in brackets, suggested removal of language is in strikethrough typeface and notations are in italicized parentheses.
Applicant may substitute the following wording if acceptable and accurate:
In Class 36: (no changes)
“Providing counseling and consulting in the field of healthcare benefits; providing information on government financial assistance programs”
In Class 45:
“Providing advocacy and case management services to older and disabled persons, namely, coordinating and monitoring legal, physical, social and psychological care services
and providing support in the nature of emotional support; bereavement consulting; case management services, namely, coordination of legal, social and psychological services for elderly emotional
support persons; in- home support services to senior persons, namely, life care management in the nature of the coordination of necessary services and personal care for older individuals; mediation
of disputes regarding elders, their families, caregivers and stakeholders; providing case management services, namely, coordinating legal, medical, physical, social, personal care and psychological
services for older and disabled persons; providing non-medical assisted living services for personal purposes in the nature of scheduling appointments, answering the telephone, checking messages,
mail sorting, mail handling, mail receiving and secretarial and clerical services; providing non-medical in-home personal services for individuals for assisting with daily living
activities of disabled persons and the elderly including being checking home condition, supplies and individual well-being, scheduling appointments, running errands,
making safety checks, and providing on-line information related to these non-medical in-home personal services; providing patient advocate services in the field of elderly and disabled persons care management; providing patient advocate services to hospital patients and patients in long term care facilities; providing personal support services for
caregivers, partners, wives and husbands of the chronically ill and/or disabled, namely, companionship and emotional support”
Scope Advisory and Identification of Manual Reference
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.
DESCRIPTION OF THE MARK
The following description is suggested, if accurate: The mark consists of the intersecting letters “LA” in stylized font.
COMMUNICATIONS WITH THE TRADEMARK OFFICE
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.
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.
Lauren Roncoroni
/Lauren Roncoroni/
Trademark Examining Attorney
Law Office 109
Phone: (571) 270-5661
Lauren.Roncoroni@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.