| To: | NAIR, VINOD (legal-ip@practicesuite.com) |
| Subject: | U.S. Trademark Application Serial No. 88377046 - PRACTICESUITE - N/A |
| Sent: | July 17, 2019 03:34:08 PM |
| Sent As: | ecom127@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88377046
Mark: PRACTICESUITE
|
|
|
Correspondence Address: PRACTICESUITE INC P.O. BOX 15124
|
|
|
Applicant: NAIR, VINOD
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 17, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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).
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
THIS PARTIAL REFUSAL APPLIES TO CLASS 42 ONLY
In this cases, applicant has applied to register the mark PRACTICESUITE in standard characters for in relevant part “Providing on-line, non-downloadable, Internet-based software application for medical billing for physicians and health care institutions; Providing temporary use of non-downloadable cloud-based software for connecting, operating, and managing networked Electronic Health Management in the internet of things (IoT)” in Class 42.
The term “PRACTICE” refers to “the continuous exercise of a profession”. (See attached dictionary definition evidence). According to the applicant’s website, the software allows users to “Manage Your Entire Medical Practice On A Single Platform”. (See attached applicant website evidence). Further, the applicant’s website identifies the software for use for “private practices” for physicians. (See attached applicant website evidence). Thus, applicant’s services refer to and are to be used by the continuous exercise of the medical profession. Therefore, the term “PRACTICE” in applicant’s applied-for mark is merely descriptive of applicant’s services.
The term “SUITE” refers to “A group of software products packaged and sold together, usually having a consistent look and feel, a common installation, and shared macros.” (See attached dictionary definition evidence). According to applicant’s website “PracticeSuite products are available as an All-in-One ‘complete suite’, or as individual modules” and “PracticeSuite’s fully integrated, All-In-One medical office suite replaces 5 office software and automates the entire patient-to-pay revenue cycle!”. (See attached evidence from applicant’s website). Thus, applicant’s software services refer to a grouping of software products packaged together. Therefore, the term “SUITE” in applicant’s applied-for mark is merely descriptive of applicant’s services.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the services, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002) (holding SMARTTOWER merely descriptive of “commercial and industrial cooling towers and accessories therefor, sold as a unit”); In re Sun Microsystems, Inc., 59 USPQ2d 1084, 1087 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network”); In re Putnam Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of “a news and information service updated daily for the food processing industry, contained in a database”); In re Copytele, Inc., 31 USPQ2d 1540, 1542 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of “facsimile terminals employing electrophoretic displays”).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the services is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s Class 42 services and do not create a unique, incongruous, or nondescriptive meaning in relation to the services. Specifically, the wording “PRACTICESUITE” merely describes what a consumer would expect to encounter when considering the applicant’s services— a computer software with multiple products packaged together for individual practices of medical professionals. Because the wording of applicant’s mark is merely descriptive, it is therefore refused under Section 2(e)(1) of the Trademark Act
Supplemental Registry Advisory
To seek registration on the Principal Register based on a claim of acquired distinctiveness under Section 2(f), applicant generally may (1) submit actual evidence that the mark has acquired distinctiveness of the goods and/or services, (2) claim ownership of an active prior U.S. registration for the same mark for sufficiently similar goods and/or services, or (3) provide the following verified statement of five years’ use: “The mark has become distinctive of the goods and/or services through the applicant’s substantially exclusive and continuous use of the mark in commerce that the U.S. Congress may lawfully regulate for at least five years immediately before the date of this statement.” See 15 U.S.C. §1052(f); 37 C.F.R. §2.41(a); TMEP §§1212.03-.06 et seq.
To amend the application to the Supplemental Register, applicant must provide a written statement requesting that the application be amended to the Supplemental Register. TMEP §816.01; see 15 U.S.C. §1091; 37 C.F.R. §2.47.
Partial Refusal Advisory
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward registration in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for that class, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
THIS PARTIAL REFUSAL APPLIES TO CLASS 35 ONLY
Registration is refused because the specimen does not show the applied-for mark in use in commerce in International Class 35. 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, applicant has identified in Class 35 applicant’s services as “Healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices”. Applicant’s specimen appears to show non-downloadable software provided by applicant for medical billing applications. Thus, applicant’s specimen showing non-downloadable computer software does not show applicant providing the identified Class 35 healthcare management services.
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.
Partial Refusal Advisory
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward registration in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for that class, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Applicant may substitute the following wording, if accurate:
Class 35: Remains Unchanged
Class 42: Providing on-line, non-downloadable, Internet-based software application for medical billing for physicians and health care institutions; Providing temporary use of non-downloadable cloud-based software for connecting, operating, and managing networked {indicate devices, e.g., cars, kitchen appliances, etc.} in the internet of things (IoT)
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.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and 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 divide an application, file a request to divide online using the Trademark Electronic Application System (TEAS) form and include a fee of $100 for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. If dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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
/Rio Toplak/
Trademark Examining Attorrney
Law Office 127
(571) 272-6572
Rio.Toplak@USPTO.gov
RESPONSE GUIDANCE
