Offc Action Outgoing

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.  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:  February 03, 2020

 

Status

 

This Office action is in response to applicant’s communication filed on January 6, 2020.

 

The Section 2(f) claim has been added to the record. The following requirements are maintained: Identification of Goods and Services and Specimen Class 042. See 37 C.F.R. §2.63(b). 

 

The amendment to the identification exceeds the scope of services in the original application. Therefore, an additional refusal has been added for the services in Class 035.

 

Identification of Goods and Services

 

The highlighted wording in the identification of goods and services is vague and/or combines services from more than one International Class. Applicant must specify the exact nature of the goods and/or services using the common commercial name. In addition, the wording “outpatient infusion management services; pharmacy business consulting and optimization services; consulting services for medical practices that include strategic planning, product management, and technology integration” is overly broad and does not identify technology services in Class 042. Applicant must delete this wording from the application.

 

“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.  The applicant must specify the exact nature of the services using the common commercial name.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

As a general rule, applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The following identification of goods and services is suggested, if accurate:

 

Personal hygiene and personal care products, namely toothpaste, denture cleansers, non-medicated mouthwash; personal deodorants and antiperspirants, baby oil, body wash, shampoo, perineal body wash, hand and body moisturizers, skin creams, skin cleansers, pre-moistened disposable wipes impregnated with cleansing compound for use on the perineum, torso, back, hands, arms, feet, and legs, baby wipes impregnated with cleaning preparations, baby powder, shaving cream, shaving gel, adhesive remover wipes, namely, wipes that remove adhesive tape, adhesive residue, and ostomy pouches from the skin, in Class 003.

 

Incontinence diapers; incontinence pads; incontinence garments; disposable baby diapers; incontinence liners in the nature of guards; personal lubricating jelly; medicated skin care preparations, namely comprehensive solutions in the nature of antimicrobial body cleansers and soaps, creams, moisturizers, skin creams, skin lotions, powders, skin barrier powder that absorbs moisture and forms a barrier on the skin for protection from itching, moist, irritated, or broken skin, antifungal creams and powders; antiseptic skin cleanser; hydrogen peroxide for medical use; isopropyl rubbing alcohol; antimicrobial soap; antibacterial soap; alcohol treated disinfecting wipes for use as prep pads; medical saline solution; sterile water for the moistening of wound dressings, wound debridement, and medical device irrigation; silver nitrate for medical purposes sold in applicators; medical ultrasound gel; topical pain relief medication in the form of a spray; over-the-counter pain relief medication in the form of tablets; acetaminophen; aspirin; ibuprofen for use as an oral analgesic; medicated cleansers for wounds and skin; all-purpose surface disinfectants; cleansers and disinfectants for cleaning medical instruments; wound care products, namely, dressings, adhesive bandages, medical adhesive tape and surgical tape, gauze sponges, cotton balls for medical purposes, medical adhesive tape in the nature of dressing retention tape, gauze dressing in the nature of unna boots, tubular bandages for dressings, elastic bandages for dressings, self-adhesive dressings, conforming bandages for dressings, eye protectors, namely, eye protectors, namely, patient eye covers for protection during surgical or medical procedures and eye patches for medical use, cotton swabs for medical use in the nature of swab sticks, retainer dressings, namely, sterilized dressings that stretch to conform to the body's contours, non-adherent dressings, namely, absorbent non-woven pads with non-stick formulation that will not adhere to wounds, medical eye pads, foam dressings for wounds, silicone foam dressings for acute and chronic wounds such as venous leg ulcers, pressure ulcers, diabetic ulcers, and traumatic wounds, hydrocolloid medical dressings, medical xeroform petrolatum dressings, medical impregnated dressings, medical hydrogel dressings, medical calcium alginate dressings, gauze for use as wound packing strips, transparent medical film dressings, medical barrier island dressings, medical contact layer dressings and medical collagen dressings; hand sanitizer gels; Fluoride varnish, namely, a topical fluoride used to prevent tooth decay, in Class 005.

Disposable razors, razor blades; nail clippers; Emory Boards; Eating and drinking utensils, namely spoons, forks, knives for use as tableware, hand tools, namely, hand operated reaching devices in the nature of reaching aids for picking up and removing objects that enable patients with a limited range of motion to pick up and grab objects without having to bend over or stretch, in Class 008.

Batteries, in Class 009.

Medical and surgical products, equipment, and supplies, namely, medical staff apparel in the nature of surgical scrub tops and pants and patient treatment apparel consisting of surgical gowns, procedure gowns, exam gowns, compression stockings, slipper socks, surgical and procedure masks, procedure masks with eye shields, shoe covers, head covers, protective sleeves, lab coats, face shields, and protective glasses; medical exam and surgical gloves; glove box holders and dispensers designed for medical use; containers for sharps and medical waste; incontinence bed pads and underpads; ostomy barrier pastes and powders; ostomy appliance deodorant; ostomy barriers; cold and hot compresses, namely, chemically activated instant cold and hot compresses and therapeutic compresses for cold or hot therapy using a non-toxic gel that can be brought to the preferred temperature through freezing or microwaving; sphygmomanometers; stethoscopes; blood pressure cuffs; pulse oximeters; lancets; glucose monitoring systems comprising devices for monitoring blood glucose for medical purposes; glucose test strips; lancets; EKG electrodes; [specify type of goods, e.g. would suction apparatus, medical intubation apparatus, etc.] in the nature of suction connector tubing and suction tubes that act as the pathway from which medical suction devices evacuate and drain fluids and debris during medical and surgical procedures; surgical instruments; ambulatory products, namely orthopedic walkers, rollators, crutches, medical canes, and accessories and replacement parts thereof; bath safety products designed exclusively for medical use, namely bath benches, bath stools; bath transfer benches, raised toilet seats, handheld showerheads, commodes, commode pails; toilet safety frames, grab bars, bathtub grab bars, and bath mats; transfer equipment and accessories for patient treatment, namely patient lifts, patient slings, and gait belts; exercise peddlers for therapeutic purposes; IV poles; IV start kits; respiratory products, namely anesthesia circuits, oropharyngeal airways, laryngeal mask airways, respiratory masks, nasal cannulas, nebulizers, nebulizer filters, humidifiers, tracheostomy care trays, resuscitator masks, mouthpieces, and oxygen tubing; sterilization wraps; sterilization indicators; urological products, namely catheters, catheter trays, urinary leg bags, urinary drain bags, urinary drain bag holders, bedpans; urinals, and irrigation trays; fall prevention monitors; clinical laboratory products, namely lab caps and closures, laboratory glassware and plasticware, tubes, blood collection tubes, microscope slides, pipettes, beakers and bottles, specimen collection and transport containers, blood collection needles; specimen collection devices, diagnostic test kits, urinalysis controls, centrifuges, clinical analyzers, microscopes, and incubators; cryotherapy treatment kits; medical drapes, procedure drapes, and medical equipment covers; seat cushions for therapeutic purposes; rehabilitative and physical therapy devices, namely manually operated exercise bands and hand putty; orthopedic products, namely splints, heel protectors, elbow protectors, casting roll form splints, cast protectors, arm slings, cast tape, ankle walker boots, and foot pads; medical furniture, namely exam stools, exam tables, recliners, blood drawing chairs, overbed tables, utility carts, and instrument stands; biohazard bags; emesis bags; patient belongings bags; tourniquets; speculums; tongue depressors; pill and tablet cutters and crushers; gravity feeding bags; syringes; needles; syringes with needles; medical measurement tape; medical chart holders; pill envelopes; wound closure products, namely sutures, suture removal kits, skin closure strips, skin staple removal kits, skin adhesive, and wound staplers; Compression bandages, abdominal pads, surgical sponges, medical trays in the nature of dressing change trays; medical wound measuring devices; medical thermometers and thermometers sheaths adapted for use with medical thermometers, commode chairs; laundry bags in the nature of bags for medical waste, in Class 010.

Sitz baths; showerheads, in Class 011.

Wheelchairs, in Class 012.

ECG paper; toilet paper; facial tissue; medical examination table paper; trash bags and liners, in Class 016.

Mattresses, in Class 020.

Toothbrushes; combs; hair picks; hair brushes; nail brushes; eating and drinking utensils, namely, cups, and drinking straws; dispensers for liquid soaps; paper towel dispensers for household use; hygiene dispensing stations, namely, floor-stand units that can dispense items for infection prevention comprised primarily of tissues dispensers and dispensing units for medical face masks, medical examination gloves, and hand sanitizing gel; toilet paper dispensers, in Class 021.

 

Towels; wool blankets, polyester blankets, cotton blankets, mylar rescue blankets, foam rescue blankets, bed sheets, pillowcases, mattress overlays, namely, mattress pads, and washcloths, in Class 024.

 

Providing health information technology and care management tools, namely,  online, non-downloadable payment processing software and accompanying hardware to manage sales transactions, inventory, pricing and promotions at a single pharmacy or across multiple sites; online, non-downloadable software for pharmacy management to track and transfer patient prescriptions, and to compare and analyze store volume, productivity ratios, key performance measures, and profit margins; web-based specialty medication inventory management systems, namely, [specify exact nature of services in Class 042, e.g. providing online, non-downloadable software for management of medical inventory, providing online software featuring technology for use by pharmacies for maintaining product inventory, etc.]; pharmacy management system for prescription processing and claims adjudication, namely, [specify exact nature of services in Class 042, e.g. providing online software for management of pharmacy claims and claim processing, etc.]; [specify exact nature of services, e.g. providing online, non-downloadable software, providing software featuring technology which allows for access of records, etc.] featuring oncology electronic health records including patient charts, comprehensive point-of-care treatment decision support, and customizable features for integration into existing workflow; providing online, non-downloadable software that enables adherence to nationally recognized clinical guidelines for use in the field of [specify e.g. pharmacy management, oncology, medical device production, etc.]; and providing online, non-downloadable communications software for providing secure communications between healthcare providers and patient, in Class 042.

 

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.

 

Amendment to Identification Exceeds Scope (Class 035)

 

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07.  Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application originally identified the goods and/or services as follows: “distributing pharmaceutical products in Class 044.”

 

However, the proposed amendment identifies the following goods and/or services:  “wholesale distributorships in Class 035.”  

 

This proposed amendment is beyond the scope of the original identification because applicant did not include “wholesale distributorships” in Class 035 in the original application. Although the applicant identified “pharmaceutical distributorships,” these are independent services and are not identical to “wholesale distributorships.” Specifically, the attached evidence shows that “pharmaceutical distributorships” is the common commercial name for a specific type of logistics service used in the distribution and warehousing of medical products.  The attached evidence shows that pharmaceutical distribution services are provided by third parties for the benefit of pharmaceutical companies/manufacturers. Moreover, the distribution of one’s own products is not a registrable activity.

 

Thus, the amendment to the services in Class 035, e.g. wholesale distributorship services is not acceptable and must be deleted from the application.

 

Specimen Required—Class 042

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods and/or services specified in International Class(es) 042 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the specimen does not show the mark being used in connection with computer software or computer based technology in Class 042.

 

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 goods and/or 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 goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).  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 goods and/or 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.

 

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.    

 

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. 

 

/Saima Makhdoom/

Trademark Attorney, USPTO

(571) 272-8802 (Tel)

(571) 273-8802 (Fax)

Saima.Makhdoom@uspto.gov

www.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 03, 2020 for

U.S. Trademark Application Serial No. 88411765

 

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. 

 

 

/Saima Makhdoom/

Trademark Attorney, USPTO

(571) 272-8802 (Tel)

(571) 273-8802 (Fax)

Saima.Makhdoom@uspto.gov

www.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 03, 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.”