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:  February 05, 2020

 

INTRODUCTION

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office action is in response to applicant’s communication filed on December 21, 2019.

 

In a previous Office action dated July 9, 2019, the applicant was required to satisfy the following requirement:  amend the identification of goods and services and provide the foreign registration.

 

Based on applicant’s response, the trademark examining attorney notes that the foreign registration has been provided.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the requirement 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

 

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant includes both online and downloadable software in Classes 9 and 42.  The identification for software in International Class 9 must be clarified to specify the purpose or function of the software and its content or field of use, if content- or field- specific.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).   

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).

 

Furthermore, the wording “downloadable electronic databases” in the identification of goods is indefinite and must be clarified because it fails to specify the subject matter or field.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Similarly “clinical and research services in the field of science and technology” must be specified to state the specific medical field, treatment, or procedure.”  Additionally, “computer security” must be clarified to state the specific services, such as restricting unauthorized access to hard drives. 

 

Additionally, “certification of data” is indefinite and must be clarified because it is unclear what the services the applicant is providing are, such as testing, analysis, and evaluation of the services of others to determine conformity with certification standards.

 

Also, for the purposes of identification, surveillance services is considered the close observation of a person or group of people.  Accordingly, such wording does not fit within the identification with wording such as “technical data surveillance.”  Accordingly, applicant must clarify this wording to state the specific services provided, such as computer security threat analysis. 

 

Applicant may adopt the following wording, if accurate: 

 

Class 9: Online and Downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Online and downloadable software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Online and downloadable computer software in the form of apps mobile applications used for database management and electronic storage of data in connection with clinical and research services in the fields of science and technology; Online and downloadable electronic databases in the field of {indicate subject matter or field}; Recorded content, namely, online computer software for electronic storage of data and database management of clinical and research services in the fields of science and technology; Online and downloadable computer software for secure online data sharing; Online and downloadable computer software platforms for electronic storage of data and database management in connection with clinical and research services in the fields of science and technology; Online downloadable artificial intelligence software for analysis of healthcare data for clinical and research purposes; Online downloadable artificial intelligence software for video surveillance; Online downloadable artificial intelligence and machine learning software for {indicate function} for clinical and research purposes; Online downloadable machine learning software for analyzing healthcare data for clinical and research purposes; Online downloadable machine learning software for video surveillance; Online downloadable machine learning software for clinical and research purposes and for analysis of health care data for clinical and research purposes; Online downloadable software to facilitate infection control inspections and quality assurance.

Class 42: Clinical and research services in the field of science and technology, namely, in the field of {specify medical field, treatment, or procedure, e.g., radiology, chemotherapy, coronary artery bypass surgery, etc.}; Online and downloadable Software as a service (SaaS) featuring software for database processing and database analysis of genetic information for the diagnostics of disease and identification and tracing of pathogens; Providing use of online, non-downloadable computer software for {indicate function of the software} in the field of medical and diagnostic services; IT consulting services; web site hosting services; and software as a service featuring online and downloadable software for processing and analysis of genetic information for the diagnostics of disease and identification and tracing of pathogens; and rental of online and downloadable computer software; Data warehousing; Computer security services, namely, restricting unauthorized access to {indicate e.g., hard drives, computer networks, websites, etc.};, computer virus protection services; and data recovery services for computer data; Technical support in the nature of monitoring of computer systems and network systems, namely, monitoring technological functions of computer network systems; Providing an on-line network environment featuring technology that enables users to share peer to peer data in the field of medical and diagnostic services; Design, development, and implementation of software for transforming raw data into actionable information for effective decision making in the field of healthcare organizations and solutions; electronic Data document authentication via blockchain-based software technology for maintaining health, diagnostic and medical records; electronic data storage via blockchain-based software technology for maintaining health, diagnostic and medical records; Certification of computer security threat analysis for protecting data via blockchain-based software technology for maintaining health, diagnostic and medical records; Platform as a service (PAAS) featuring computer software platforms for performing predictive analytics, big data compilation and analysis, and health care data analysis; Platform as a service (PAAS) featuring computer software platforms for processing and analysis of genetic information for the diagnostics of disease and identification and tracing of pathogens; Computer security threat analysis for protecting technical and healthcare data surveillance and assessment services; Consulting services in the field of laboratory diagnostic tests, namely, consulting in the field of analysis of genetic samplings, cultures, pathogens, microorganism and viruses; Online consulting services in the field of laboratory diagnostic tests, namely, consulting in the field of analysis of genetic samplings, cultures, pathogens, microorganism and viruses; Monitoring of bacteria in {indicate subject, e.g., drinking water} for scientific research purposes; Online scientific research consulting services in the field of tracing of pathogens, microorganism and viruses, namely, consulting in outbreak surveillance, epidemiology and advice about the evolution of pathogens; Providing online, non-downloadable and downloadable computer software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Providing online, non-downloadable and downloadable software for {specify the function of the software, e.g., use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}; Providing online, non-downloadable and downloadable artificial intelligence software for video surveillance; Providing online, non-downloadable downloadable artificial intelligence and machine learning software for {indicate function} for clinical and research purposes; Providing online, non-downloadable downloadable machine learning software for analyzing healthcare data for clinical and research purposes; Providing online, non-downloadable downloadable machine learning software for video surveillance; Providing online, non-downloadable downloadable machine learning software for clinical and research purposes and for analysis of health care data for clinical and research purposes; Providing online, non-downloadable downloadable software to facilitate infection control inspections and quality assurance; Technology supervision and remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes in the field of health care.

Class 44: Human mobile healthcare services; Medical advisory services; Medical diagnostic tests testing services; Medical diagnostics testing, monitoring and reporting services; Medical diagnostic monitoring services in the field of infectious diseases, pathogen tracing and in the field of bioinformatics; Medical diagnostic testing services in the field of infectious diseases, pathogen tracing and in the field of bioinformatics; Online medical diagnostic testings; Providing information relating to medical diagnostic tests and testing results and diagnostic tests; Performing diagnoses medical diagnostic testing of infections and other illnesses; Technology supervision and monitoring in the field of health care; Monitoring of bacteria; Veterinary assistance services, namely, veterinary services in the field of infectious diseases, pathogen tracing and in the field of bioinformatics; medical consulting services in the fields of tracing of pathogens; health assessment services;, providing dental and medical information in the field of disease infection control; Healthcare data surveillance and assessment service.

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.

 

ASSISTANCE

 

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 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.  

 

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).

 

 

/Bridget Watson/

Bridget Watson

Examining Attorney

Law Office 128

(571) 272-7163

bridget.watson@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 February 05, 2020 for

U.S. Trademark Application Serial No. 88387441

 

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. 

 

 

/Bridget Watson/

Bridget Watson

Examining Attorney

Law Office 128

(571) 272-7163

bridget.watson@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 February 05, 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.”