To: | 1928diagnostics AB (stacy@stacygrossmanlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88387441 - 1928 - N/A |
Sent: | July 09, 2019 04:36:44 PM |
Sent As: | ecom128@uspto.gov |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88387441
MARK: 1928
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CORRESPONDENT ADDRESS: LAW OFFICE OF STACY J. GROSSMAN |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: 1928diagnostics AB
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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PRIORITY 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: July 09, 2019
DATABASE SEARCH: The trademark examining attorney has searched the USPTO’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).
ISSUES APPLICANT MUST ADDRESS: On June 18, 2019, the trademark examining attorney and Ms. Stacy Grossman discussed the issues below. Applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.
REQUIREMENT: AMENDMENT TO THE IDENTIFICATION OF THE GOODS AND SERVICES
Class 9
The wording “computer software” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “software” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “computer software in the form of apps” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “electronic databases” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “recorded content” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide the nature or type of content. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “software for secure online data sharing” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “computer software” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “computer software platforms” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “artificial intelligence software for healthcare” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “artificial intelligence software for analysis” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “artificial intelligence software for surveillance” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “artificial intelligence and machine learning software” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “artificial intelligence software” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “machine learning software” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “machine learning software for surveillance” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “machine learning software for analysis” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “machine learning software for healthcare” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software or its function. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “computer software to facilitate infection control inspections and quality assurance” in the identification of goods in International Class 9 is indefinite and must be clarified because it does not provide enough information on the type of software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
Class 42
The wording “Software as a service (SaaS)” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the function of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “Providing computer software for medical and diagnostic services” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the function or nature of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “IT services” in the identification of goods in International Class 42 is indefinite and must be clarified because it does not provide enough information on the type of IT services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “hosting services and software as a service and rental of software” in the identification of servises in International Class 42 is indefinite and must be clarified because it does not provide enough information on the type of services being provided and the nature of the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the nature of the software, e.g., recorded, non-downloadable, online. See TMEP §1402.01.
The wording “Monitoring of computer systems and network systems” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “peer-to-peer data sharing services” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Data authentication via blockchain” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided and the purpose of said services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Data storage via blockchain” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided and the purpose of said services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Certification of data via blockchain” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided and the purpose of said services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Platform as a service (paas)” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided and the purpose of said services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Laboratory diagnostic tests” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Laboratory diagnostics” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Laboratory diagnostic services” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Online laboratory diagnostic tests” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Tracing of pathogens” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Class 44
The wording “Human healthcare services” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Medical diagnostics” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Medical diagnostic services” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Medical diagnostic testing services” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services provided or the condition being diagnosed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Supervision and monitoring (health care)” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “Veterinary assistance” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the nature of the specific services provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “tracing of pathogens” in the identification of services is repeated and must be deleted.
The wording “providing dental and medical information in the field of disease infection control” in the identification of services in International Class 42 is indefinite and must be clarified because it does not provide enough information on the means the information services are being provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following wording, if accurate:
Class 9
{specify nature of the software; e.g. recorded or downloadable}Ccomputer software; {specify nature of the software; e.g. recorded or
downloadable} Ssoftware ; {specify nature of the software; e.g. recorded or downloadable} Ccomputer software in the form of apps {specify the
function of the software, e.g., use in database management, use in electronic storage of data, etc. } ; {specify nature of the software; e.g. recorded or downloadable}
Electronic Databases; Recorded content, namely, recorded computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word
processing, etc. and, if software is content- or field-specific, the content or field of use}; {specify nature of the software; e.g. recorded or downloadable} computer
software for secure online data sharing; Computer software platforms {specify nature of the software; e.g. recorded or downloadable}for {indicate purpose of platforms, e.g.,
application development, web hosting, database management, etc.}; Artificial intelligence {specify nature of the software; e.g. recorded or downloadable} software for
healthcare{indicate function, e.g., replying to questions from online retail store customers related to consumer goods, scheduling doctor’s appointments, making hotel reservations,
etc.}; Artificial intelligence {specify nature of the software; e.g. recorded or downloadable}software for analysis {indicate function, e.g., replying to
questions from online retail store customers related to consumer goods, scheduling doctor’s appointments, making hotel reservations, etc.}; Artificial intelligence {specify
nature of the software; e.g. recorded or downloadable} software for surveillance; Artificial intelligence and machine learning {specify nature of the software; e.g. recorded or
downloadable}software {indicate function, e.g., replying to questions from online retail store customers related to consumer goods, scheduling doctor’s appointments, making hotel
reservations, etc.}; Artificial intelligence {specify nature of the software; e.g. recorded or downloadable} software {indicate function, e.g., replying to
questions from online retail store customers related to consumer goods, scheduling doctor’s appointments, making hotel reservations, etc.}; Machine learning {specify nature of
the software; e.g. recorded or downloadable}software for {indicate function, e.g., replying to questions from online retail store customers related to consumer goods, scheduling
doctor’s appointments, making hotel reservations, etc.}; Machine learning {specify nature of the software; e.g. recorded or downloadable}software for surveillance; Machine
learning {specify nature of the software; e.g. recorded or downloadable}software for analysis {indicate function, e.g., replying to questions from online retail
store customers related to consumer goods, scheduling doctor’s appointments, making hotel reservations, etc.}; Machine learning {specify nature of the software; e.g. recorded or
downloadable} software for healthcare; computer{specify nature of the software; e.g. recorded or downloadable} software to facilitate infection control inspections and
quality assurance.
Class 42
Research services in the field of Sscience and technology services; Software as a service (SaaS) featuring software for
{specify the function of the programs, e.g., for use in database management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of
use}; Providing temporary use of non-downloadable computer software for medical and diagnostic services; IT consulting
services; web site Hhosting services and software as a service featuring software for {specify the function of the programs, e.g., for use in database
management, for use as a spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use} and rental of computer software; Data
warehousing; Computer security, protection and data recovery services; Monitoring of computer systems and network systems, namely,
monitoring technological functions; Providing an on-line network environment featuring technology that enables users to share peer to peer data in the field of {indicate subject
matter, field or type of data}peer - to - peer data sharing 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; Data authentication via blockchain-based software technology for cryptocurrency transactions;
Data storage via blockchain-based software technology for cryptocurrency transactions; Certification of data via blockchain-based software technology for
cryptocurrency transactions; 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 PAAS) featuring computer software platforms for {specify the function of the programs, e.g., for use in database management, for use as a
spreadsheet, for word processing, etc. and, if software is content - or field-specific, the field of use}; technical data surveillance and assessment services; Consulting
services in the field of Llaboratory diagnostic tests; Consulting services in the field of Llaboratory diagnostics;
Consulting services in the field of Llaboratory diagnostic services; Online consulting services in the field of laboratory
diagnostic tests; Monitoring of bacteria; Consulting services in the fields of Ttracing of pathogens
Class 44
Human mobile healthcare services; Medical advisory services; Medical diagnostic tests; Medical diagnostics testing,
monitoring and reporting services; Medical diagnostic services in the field of {indicate type of illness or condition}; Medical diagnostic testing services in the field of {indicate type of illness or condition}; Online medical diagnostic tests; Providing information relating to medical results and diagnostic tests; Performing Ddiagnosis of infections and other illnesses; Technology Ssupervision and monitoring
in the field of (health care); Monitoring of bacteria; Veterinary assistance services, namely, {indicate the specific services, e.g., oral
surgery, euthanasia of animals, etc.}; Tracing of pathogens; health assessment services, providing dental and medical information in the field of disease infection control;
Healthcare data surveillance and assessment services.
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.
REQUIREMENT: FOREIGN REGISTRATION
The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided. See 15 U.S.C. §1126(d), (e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
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.
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.
/Lorena, Soler-Centeno/
Lorena Soler-Centeno
Trademark Attorney
Office 128
571-272-2640
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.