To: | Reliant Immune Diagnostics, Inc. (trademarks@munckwilson.com) |
Subject: | U.S. Trademark Application Serial No. 88412965 - MD BOX - RIDL60-34572 |
Sent: | July 23, 2019 01:51:50 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88412965
Mark: MD BOX
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Correspondence Address: |
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Applicant: Reliant Immune Diagnostics, Inc.
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Reference/Docket No. RIDL60-34572
Correspondence Email Address: |
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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: July 23, 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:
A. SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE – (Class 16)
Applicant’s mark is “MD BOX” in standard character form in International Class 16 for: “Medical kit comprising of a printed redemption code and information and instructions for obtaining telemedicine services; Printed paper, cards, and stickers containing barcodes, QR codes and alphanumeric character redemption codes that provide access to product information and telemedicine services.”
Determining the descriptiveness of a mark is done in relation to an applicant’s goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); TMEP §1209.01(b). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d at 963-64, 82 USPQ2d at 1831.
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, “MD” is a commonly known acronym for a medical doctor, (see, e.g.: http://ahdictionary.com/word/search.html?q=md), and “BOX” refers to a container which is used for holding and storing items, (see, e.g.: http://ahdictionary.com/word/search.html?q=box). The term “MD” in the context of the goods, as set forth in the identification indicates that the goods are for medical purposes and are used by a physician. The medical kit listed in the application contains items that assist a physician with matching patients to services and information. The examining attorney attaches examples from the marketplace wherein the term “BOX” is used for kits containing medical supplies and equipment, literally, the goods are offered to consumers in a rigid container. (See, e.g.: http://www.thedentalbox.smartpractice.com/ and http://www.preppi.co/products/the-preppi-go-box?variant=3533065089).
The evidence indicates that each of the words of applicant’s mark carry merely descriptive meanings that are retained and reinforced when the wording is brought together to form the whole of applicant’s mark. The word combination fails to create new meaning that would require relevant consumers to engage in additional mental steps to gain an understanding of the mark within the context of the goods. Consumers having familiarity with the goods would immediately be informed about their nature and characteristics, i.e. that they are kits (in boxes) comprised of items used by a physician in the treatment of a patient. For these reasons, registration of applicant’s mark is refused under Section 2(e)(1) of the Trademark Act.
SUPPLEMENTAL REGISTER ADVISORY
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
Applicant must disclaim the wording “MD” because it merely describes a characteristic of applicant’s services, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The term “MD” is commonly used to refer to a medical service, or things used for carrying out medical services. The examining attorney references the definition of “MD” from Section A above that the wording is an acronym for a physician. The examining attorney attaches evidence showing the common use of the “MD” acronym for telemedicine services and software related thereto to inform consumers about the medical-related nature of the services and software. See, e.g.:
· http://www.mdlive.com/;
· http://doctors.md.com/premium/telemedicine; and,
· http://www.americanwell.com/the-digital-doctor-a-telemedicine-review-from-a-doctor/
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “MD” in Classes 9 and 42 apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
The Class 42 wording “Non-downloadable software, namely, computer software as a service (SaaS) that allows users to create, view, and update a medical profile, purchase or redeem telemedicine visits, perform medical visit intake, perform rapid self-tests, conduct telemedicine visits, and view medical information, including supportive care plans and diagnoses,” and “Computer software as a service (SaaS) services for others featuring Electronic Medical Record (EMR) and Electronic Health Record (EHR) systems for making, viewing, revising, storing and transferring patient visit notes, patient visit scheduling, referral and admissions tracking, patient records and charts, prescription writing and telemedicine,” and “Non-downloadable software, namely, software as a service (SaaS) for use in connection with providing telehealth, telemedicine, remote care, and virtual health care services” is ambiguous as it fails to clearly indicate whether services are being provided, (i.e. “SaaS services featuring software for…”), and applicant refers to the latter as simply an EMR and EHR “system,” so it is not clear if software services are being provided.
Applicant’s wording in Classes 9 and 16 is acceptable.
Applicant may adopt the following wording, if accurate:
In International Class 9 (acceptable as worded): “Downloadable software, namely, software that allows users to create, view, and update a medical profile, purchase or redeem telemedicine visits, perform medical visit intake, perform rapid self-tests, conduct telemedicine visits, and view medical information, including supportive care plans and diagnoses; Downloadable software, namely, software that enables users to scan and enter barcodes, QR codes and alphanumeric character redemption codes to obtain product information and telemedicine services”
In International Class 16 (acceptable as worded): “Medical kit comprising of a printed redemption code and information and instructions for obtaining telemedicine services; Printed paper, cards, and stickers containing barcodes, QR codes and alphanumeric character redemption codes that provide access to product information and telemedicine services”
In International Class 42: “Software as a service (SaaS)services featuring software that allows users to create, view, and update a medical profile, purchase or redeem telemedicine visits, perform medical visit intake, perform rapid self-tests, conduct telemedicine visits, and view medical information, including supportive care plans and diagnoses; Computer software as a service (SaaS) services featuring software for Electronic Medical Record (EMR) and Electronic Health Record (EHR) systems for making, viewing, revising, storing and transferring patient visit notes, patient visit scheduling, referral and admissions tracking, patient records and charts, prescription writing and telemedicine; Software as a service (SaaS) services featuring software for use in providing telehealth, telemedicine, remote care, and virtual health care services.”
RESPONSE GUIDELINES
For this application to proceed further, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, see “Responding to Office Actions” on the USPTO’s website.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
DIVISIONAL INFORMATION
To divide an application, file a request to divide online using the Trademark Electronic Application System (TEAS) form and include a fee of $100 for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. If dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
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
/Robert Andrew Cohen/
Trademark Examining Attorney
Law Office 103
(571) 270-1389
robert.cohen@uspto.gov
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.