Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88377046 PRACTICESUITE(Standard Characters, see http://uspto.report/TM/88377046/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE January 17, 2020 RIO TOPLAK Trademark Examining Attorney The United States Patent and Trademark Office Law Office 127 (571) 272-6572 Rio.Toplak@USPTO.gov RE: Serial No: 88377046 Mark: PRACTICESUITE Applicant: VINOD NAIR Office Action Of: July 17, 2019 RESPONSE TO OFFICE ACTION Dear Mr.Toplak: In response to the Trademark Office Action, emailed on July 17, 2019, the Applicant respectfully responds as follows: No Conflicting Marks The Applicant acknowledges that the examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. ? 1052(d), TMEP ?704.02. Trademark Act Section 2(e)(1) Refusal The examining attorney has refused registration for PRACTICESUITE under Trademark Act Section 2(e)(1), 15 U.S.C. ?1052(e)(1); TMEP ??1209.01(b), 1209.03 et seq. claiming that the trademark is merely descriptive. The legal standard for descriptiveness is that it must immediately call to mind a significant aspect of the Applicant?s goods (in re Intelligent Instrumentation Inc., 40 U.S.P.Q. 2d 1792 (TTAB 1996). If there had been anything in them, which was ?incongruous, indefinite or susceptible to multiple connotations,? or if any ?imagination, cogitation, or gathering of further information? were required to perceive precisely the merely descriptive significance of the term as it relates to what the product is designed to do, then the term would not be considered descriptive. (In re Eden Foods, Inc., 24 U.S.P. 2d 1757, 1759 (TTAB 1992) (to be descriptive, a term must immediately convey characteristics of goods or services). The trademark examiner sited a plurality of cases and combined their rulings in a fashion to support his claim that: ?PRACTICESUITE? is merely descriptive. We disagree with the examiner?s findings because, although the examiner provided definitions for both ?practice? and ?suite?, there are a myriad of differing definitions for each term, that when combined would create a plurality of different meanings that would lead to confusion. This ensuing confusion would speak to the fact that the terms are not merely descriptive. This, as supported, would deem ?PRACTICESUITE? suspect to ?incongruous, indefinite or susceptible to multiple connotations,? re Intelligent Instrumentations Inc. The American Heritage? Dictionary of the English Language: Fourth Edition 2000 defines ?Practice ?as follows: Transitive Verb: 1. To do or perform habitually or customarily; make a habit of: practices courtesy in social situations. 2. To do or perform (something) repeatedly in order to acquire or polish a skill: practice a dance step. 3. To give lessons or repeated instructions to; drill: practiced the students in handwriting. 4. To work at, especially as a profession: practice law. 5. To carry out in action; observe: practices a religion piously. 6. Obsolete To plot (something evil). Intransitive Verb: 1. To do or perform something habitually or repeatedly. 2. To do something repeatedly in order to acquire or polish a skill. 3. To work at a profession. 4. Archaic To intrigue or plot. Noun: 1.A habitual or customary action or way of doing something: makes a practice of being punctual. 2a. Repeated performance of an activity in order to learn or perfect a skill: Practice will make you a good musician. b. A session of preparation or performance undertaken to acquire or polish a skill: goes to piano practice weekly; scheduled a soccer practice for Saturday. c. Archaic The skill so learned or perfected. d. The condition of being skilled through repeated exercise: out of practice. 3. The act or process of doing something; performance or action: a theory that is difficult to put into practice. 4. Exercise of an occupation or profession: the practice of law. 5. The business of a professional person: an obstetrician with her own practice. 6. A habitual or customary action or act. Often used in the plural: That company engages in questionable business practices. Facial tattooing is a standard practice among certain peoples. 7. Law The methods of procedure used in a court of law. 8. Archaic a. The act of tricking or scheming, especially with malicious intent. b. A trick, scheme, or intrigue. Additionally, the American Heritage? Dictionary of the English Language: Fourth Edition 2000 defines ?Suite ? as follows: Noun: 1. A staff of attendants or followers; a retinue. 2a. A group of related things intended to be used together; a set. b. (also) A set of matching furniture: a dining room suite. 3. A series of connected rooms used as a living unit. 4. Music a. An instrumental composition, especially of the 17th or 18th century, consisting of a succession of dances in the same or related keys. b. An instrumental composition consisting of a series of varying movements or pieces. 5. Computer Science a. A group of software products packaged and sold together, usually having a consistent look and feel, a common installation, and shared macros. b. A group of procedures that work cooperatively: The TCP/IP suite of protocols includes FTP and Telnet. The examiner claims that the identified mark is merely descriptive under Section 2(e)(1) if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods. And that the determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract. With these two point in mind we can disregard such definition combinations of ?practice? and ?suite? that in the abstract could occur, such as repeatedly playing music or a doctor?s or lawyer?s furniture. For example, or a myriad of other non-sensical combinations. But, if we combine definitions that would be related to computerized program for the aid of a practice, even a medical practice ambiguity still exists. Enough ambiguity to cause confusion and prevent immediate identification of the mark, so that the mark is not merely descriptive. For example, ?PRACTICESUITE? could be construed as a software program that makes a Doctor or other practitioner better, such as in internet training, tutoring and testing, something that our product does not do. Alternatively, it could be interpreted as an interactive Doctor?s or Lawyer?s office that would circumvent the patient?s need to see a physical practitioner, such as an online help desk. On the other hand, it could be a software program that assists Doctors in performing or running their practice. The fact that this unique combination of two words brings up so many possibilities within the narrow construction of case law strengthens our argument that the term ?PRACTICESUITE? is not merely descriptive and so should be allowed registration. Specimen Refusal: 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. Applicant stated refusal by doing one of the following: (1) Deleting the class to which the refusal pertains; IDENTIFICATION OF SERVICES The examining attorney has refused registration for PRACTICESUITE under 37 C.F.R. ?2.32(a)(6); TMEP ?1402.01 claiming that the trademark the wording ?electronic health management? is unclear as to the type of the devices. Class 35: Remains Unchanged/Deleted 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 in the internet of things (IoT) as ?Smart Healthcare" as the technology for creating a healthcare system, connecting available medical resources and healthcare services. (added) The Applicant has responded to all issues raised in the Office Action. If any further information or response is required, please contact the applicant. The applicant may be reached by telephone at (510) 284-2425. Respectfully submitted, Vinod Nair Date: January 17, 2020

EVIDENCE

Original PDF file:
evi_479204115-20200117125701785706_._practicesuite_ofice_action__17_Jan_20.pdf
Converted PDF file(s) ( 6 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 035 for Healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for 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)
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/03/2006 and first used in commerce at least as early as 08/03/2006 , and is now in use in such commerce.

Proposed:
Tracked Text Description: 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); Providing temporary use of non-downloadable cloud-based software for connecting, operating, and managing networked in the internet of things (IoT) as Smart Healthcare as the technology for creating a healthcare system, connecting available medical resources and healthcare services.Class 042 for 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 in the internet of things (IoT) as Smart Healthcare as the technology for creating a healthcare system, connecting available medical resources and healthcare services.
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 08/03/2006 and first used in commerce at least as early as 08/03/2006 , and is now in use in such commerce.
SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /VINOD NAIR/      Date: 01/17/2020
Signatory's Name: VINOD NAIR
Signatory's Position: OWNER
Signatory's Phone Number: (510)284-2425


Response Signature
Signature: /VINOD NAIR/     Date: 01/17/2020
Signatory's Name: VINOD NAIR
Signatory's Position: OWNER

Signatory's Phone Number: (510)284-2425

The signatory has confirmed that he/she is not represented by an authorized attorney, and that he/she is either: (1) the owner/holder ; or (2) a person or persons with legal authority to bind the owner/holder; and if he/she had previously been represented by an attorney in this matter, either he/she revoked their power of attorney by filing a signed revocation with the USPTO or the USPTO has granted this attorney's withdrawal request.

        
Serial Number: 88377046
Internet Transmission Date: Fri Jan 17 13:11:17 EST 2020
TEAS Stamp: USPTO/ROA-XX.X.XXX.XXX-20200117131117868
714-88377046-700ffecb92fdb2aaba3888c4186
ed6212146f5eec7f1b4f7399d84a95ac753a77-N
/A-N/A-20200117125701785706