United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
NONFINAL 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 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 03, 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).
SUMMARY OF ISSUES:
- Identification of Services
- Multi-Class Application Requirements
Applicant must rewrite the identification of services with the exception of “healthcare services” because of the nature and extent of the amendment. 37 C.F.R. §2.74(a).
Applicant must clarify the following wording in the identification of services in International Class 44 because it is indefinite and/or
too broad:
- “Chronic care management services” is indefinite because the nature of the services is unclear
- “Data analysis” is indefinite and overbroad, and likely misclassified because the nature of the services is unclear and could
refer to “analyzing and compiling business data” in Class 35 or “financial data analysis” in Class 36
- Finally, the identification for
software in International Class 44 is indefinite and too broad and must be clarified because the wording does not make clear the nature of the software and could identify goods and/or services in
three international classes – as a product in International Class 9 or a service in International Class 41 or 42. See 37 C.F.R. §2.32(a)(6);
TMEP §§1402.03(d), 1402.11(a). Applicant must specify the purpose or function of the software, and if content- or field-specific, the content or field of use of the
software. TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software 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). Computer software is a product classified in International Class 9 if it is (1) recorded on media (such as CDs)
or (2) downloadable and thus can be transferred or copied from a remote computer system for use on a long-term basis. TMEP §1402.03(d). However, on-line non-downloadable software is considered a computer service in International Class 42, unless it is non-downloadable game software provided online or for
temporary use, which is classified in International Class 41. See TMEP §§1402.03(d), 1402.11(a)(xii).
-
- For example, the following are acceptable identifications for
software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing
bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42: “providing
temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” Finally, the following are acceptable identifications for non-downloadable game software in International Class 41: “providing online
non-downloadable game software” and “providing temporary use of non-downloadable game software.” For assistance with software classification and identifications,
please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and
Services Manual.
See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
The Trademark Act requires that a trademark or service mark
application must include a “specification of … the goods [or services]” in connection with which the mark is being used or will be used. 15 U.S.C. §1051(a)(2) (emphasis added), (b)(2) (emphasis added); see 15 U.S.C. §1053. Specifically, a complete application must include
a “list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark.” 37 C.F.R. §2.32(a)(6) (emphasis added). This requirement for a specification of the particular goods and/or services applies to applications
filed under all statutory bases. See 15 U.S.C. §§1051(a)(2), 1051(b)(2), 1053, 1126(d)-(e), 1141f; 37 C.F.R. §2.32(a)(6); TMEP §§1402.01,
1402.01(b)-(c).
“The purpose of the identification of goods [and/or services] is
to provide the general population, including consumers and members of the relevant industry, with an understandable description of the goods and services, which is done by using the common commercial
name for the goods [and/or services].” In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013) (citing In re
Sones, 590 F.3d 1282, 1289, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009)). If there is no common, ordinary name for the goods and/or services, applicant should describe
the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ
485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods
and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal.
Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ at 322.
Applicant may substitute the following wording, if accurate (with changes bolded for clarity):
International Class 9: Downloadable software for {specify function of
software}
International Class 35: Analyzing and compiling business data
International Class 36: Financial data
analysis
International Class 42: Providing temporary use of non-downloadable computer software for
{specify function of software}
International Class 44: Chronic care management services, namely, {specify particular services in Class44, e.g.,
medical care services for the treatment of chronic pain}; healthcare services
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services in more than one international
class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest
numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least five classes; however, applicant submitted a fee sufficient for only one
class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by
the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7),
2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an
overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark
Electronic Application System (TEAS) form.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action
Taylor Singer
/Taylor Singer/
Examining Attorney
Law Office 126
(571)270-3964
taylor.singer1@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.