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:  July 24, 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.

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• Prior-Filed Applications
• Indefinite Identification of Goods & Services
• Multiple-Class Application Requirements
• Amended English Translation Required

 

 

PRIOR-FILED APPLICATIONS

The filing dates of pending U.S. Application Serial Nos. 88233117 and 88460774 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

INDEFINITE IDENTIFICATION OF GOODS & SERVICES

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Further, if the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

The identification of “diagnostic kits for the treatment, monitoring or diagnosis of disease” and “diagnostic kits for clinical or medical use” in International Class 10 are indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(a), 1402.01, 1402.03.  Kits generally consist of a group of components that (1) share a common theme, or (2) are used to make a particular product.  See TMEP §1401.05(a).  Applicant must amend the identification to list the components, using the guidelines below.  See id.

 

For kits consisting of a group of components that share a common theme, the identification should specify the theme followed by the wording “comprising” or “comprised of” and a list of the components that make up the kit, with all of the components in the predominant class listed first.  See id.  Generally, a kit is classified in the same international class as the majority of the components in the kit.  See id.  For example, “nail care kits comprised of nail polish, nail polish remover, false nails, nail files, and printed instructions” are in International Class 3, the class of the kits’ primary components which are listed first in the kits’ components (with “nail files” in International Class 8, and “printed instructions” in International Class 16 listed after the International Class 3 components).

 

If there are no components that are more dominant than another in a shared-theme kit, the first component listed after the wording “comprising” or “comprised of” will determine the class of the kit.  See id.  For example, “tool kits comprising hand saws and power-driven saws” are in International Class 8 (the class for “hand saws”), and “tool kits comprising power-driven saws and hand saws” are in International Class 7 (the class for “power-driven saws”).

 

The goods identified as “mobile diagnostic kids [sic] consisting of software, hardware and medical devices for patient examination” incorporate a typographical error and are indefinite.  As set forth above, kits are classified according to the classification of the first listed component.  If the software that is a component of these kits is in the nature of downloadable and/or recorded computer software for a given purposes, the kits are properly classified in International Class 9 and applicant must specify the function of the software.  Further, if the “hardware” is in the nature of “computer hardware,” applicant may so specify.

 

The goods identified as “diagnostic system consisting of a clinician portal used to access patient data, review clinical data, manage care plans, and improve patient care” in International Class 10 are indefinite.  Services in the nature of providing an internet website portal are classified according to the classification of the information being provided.  Here, however, it appears that applicant intends to use the applied-for mark with providing a website featuring technology that allows clinicians to access patient data, review clinical data, manage care plans, and improve patient care, such services are properly classified in International Class 42 and applicant may so specify.

 

The goods identified as “downloadable software, namely, software application for use in connection with providing telehealth, telemedicine, and remote care” are properly classified in International Class 9.

 

The goods identified as “software for the operation and management of telemedicine, telehealth, remote care and virtual care services” are indefinite.  As identified, these goods may include downloadable and/or recorded computer software the operation and management of telemedicine, telehealth, remote care and virtual care services s, such are goods properly classified in International Class 9.  Additionally, the identified software for the operation and management of telemedicine, telehealth, remote care and virtual care services may identify providing temporary use of on-line non-downloadable use of computer software, which are services properly classified in International Class 42.  Applicant must further clarify the nature of these goods.

 

The services identified as “information storage and retrieval services in the fields of diagnostic testing and preparations for the treatment, monitoring and diagnosis or disease” are indefinite.  If the “information storage” component of these services are in the nature of the temporary storage of information in the fields of diagnostic testing and preparations for the treatment, monitoring and diagnosis or disease, such services are properly classified in International Class 42 and applicant may so specify.  Further, if the “retrieval services” are in the nature of providing customized computer searching services in which applicant retrieves information at the customer’s specific request via the Internet in the fields of diagnostic testing and preparations for the treatment, monitoring and diagnosis or disease, such services are properly classified in International Class 42 and applicant may so specify.

 

The services identified as “providing telehealth, telemedicine, remote care and virtual health care services,” in International Class 44 are indefinite.  If these services are in the nature of providing medical consultations and healthcare services via phone, online chat or videoconferencing, such services are properly classified in International Class 44 and applicant may so specify.

 

The services identified as “administrative and logistical support for remote medical exam services, namely, set-up, support and execution of patient examinations at home or at locations outside of traditional medical clinics,” in International Class 44 are indefinite.  If these services include appointment scheduling services in the field of patient examinations at home or at locations outside of traditional medical clinics, such services are properly classified in International Class 35 and applicant may so specify.  Further, if these services are in the nature of providing medical examinations at home or at locations outside of traditional medical clinics, such services are properly classified in International Class 44 and applicant may so specify.

 

The services identified as “providing an online computer database in the fields of medical testing, testing and healthcare,”  in International Class 44 are indefinite.  Services in the nature of providing an online computer database are classified according to the classification of the subject matter of the data within the database.  Thus, providing an online computer database in the fields of healthcare and medical testing for diagnostic or treatment purposes are properly classified in International Class 44.  The specified field of “testing,” however, is indefinite.  As identified, this wording includes providing an online computer database in the field of medical testing for cancer research purposes, which are services properly classified in International Class 42, and may include providing an online computer database in the field of educational testing, which are services properly classified in International Class 41.  Finally, the “testing” component of these services may identify providing an online computer database in the field of drug use testing, which are services properly classified in International Class 44.

 

The services identified as “transport and storage of diagnostic kits and medical devices” are properly classified in International Class 39.

 

The services identified as “computer services, namely, electronic storage and retrieval of messages and data in the fields of clinical and diagnostic testing and preparations for the treatment, monitoring or diagnosis of medical conditions” are indefinite.  If these are computer services are in the nature of the electronic storage and retrieving information at the customer’s specific request via the Internet in the fields of clinical testing, diagnostic testing, and preparations for treating, monitoring, or diagnosing medical conditions, such services are properly classified in International Class 44 and applicant may so specify.

 

Applicant may adopt the following wording, if accurate:

 

International Class 5 – Diagnostic kits comprised of ______ {Applicant must specify, i.e. monoclonal antibodies, buffers, and reagents} for the treatment, monitoring or diagnosis of disease; diagnostic kits comprised of ______ {Applicant must specify, i.e. monoclonal antibodies, buffers, and reagents} for clinical or medical use;

 

International Class 9 – Mobile diagnostic kits consisting of ______ {Applicant must specify recorded and/or downloadable} computer software for {specify function, e.g., downloading and organizing music files, authenticating user identification, etc.}, computer hardware, and medical devices for use in patient examination; downloadable software, namely, software application for use in connection with providing telehealth, telemedicine, and remote care; of ______ {Applicant must specify recorded and/or downloadable} software for the operation and management of telemedicine, telehealth, remote care and virtual care services

 

International Class 10 – Diagnostic kits comprised of ______ {Applicant must specify, i.e. probes, buffers and reagents} for the treatment, monitoring or diagnosis of disease; diagnostic kits comprised of ______ {Applicant must specify, i.e. probes, buffers and reagents} for clinical or medical use; medical analysis instruments for use in treating ______ {Applicant must indicate disease or condition treated, e.g., temporomandibular joint disorder (TMJ), respiratory diseases, rheumatoid arthritis, etc.}; medical diagnostic instruments for use in treating ______ {Applicant must indicate disease or condition treated, e.g., temporomandibular joint disorder (TMJ), respiratory diseases, rheumatoid arthritis, etc.}; Computer displays and computer monitors and controllers therefor used in direct association with medical diagnosis apparatus during the process of diagnosis of a condition in an individual

 

International Class 35 – Computerized database management for tracking patient information for clinical and diagnostic testing; referral services in the fields of medical, health and clinical care; computer database management of diagnostic testing and results; computerized data base management of medical, hospital, insurance and billing records; trade information services in the fields of medical, health or clinical care; database management of clinical and diagnostic testing and results; providing internet-based business management services for the healthcare industry; administrative and logistical support for remote medical exam services, namely, appointment scheduling services in the field of patient examinations at home or at locations outside of traditional medical clinics

 

International Class 39 – Transport and storage of diagnostic kits and medical devices

 

International Class 42 – Providing a diagnostic website featuring technology that enables clinicians to access patient data, review clinical data, manage care plans, and improve patient care; Providing temporary use of on-line non-downloadable software for the operation and management of telemedicine, telehealth, remote care and virtual care services; Temporary electronic storage of information in the fields of diagnostic testing and preparations for the treatment, monitoring and diagnosis or disease; Providing customized computer searching services, namely, retrieving information at the customer’s specific request via the Internet in the fields of diagnostic testing and preparations for the treatment, monitoring and diagnosis or disease

 

International Class 44 – Medical and clinical diagnostic testing services; medical services for human beings; medical testing for diagnostic, treatment or screening purposes; remote medical exam services; providing telehealth, telemedicine, remote care and virtual health care services, namely, providing medical consultations and healthcare services via phone, online chat or videoconferencing; remote medical exam services, namely, providing patient medical examinations at home or at locations outside of traditional medical clinics; providing an online computer database in the fields of drug use testing, healthcare, and medical testing for diagnostic or treatment purposes; providing an online computer database featuring medical information in the field of patient management and outcomes; computer services, namely, electronic storage and retrieving information at the customer’s specific request via the Internet in the fields of clinical testing, diagnostic testing, and preparations for treating, monitoring, or diagnosing medical conditions

 

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).

 

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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least seven classes; however, applicant submitted fees sufficient for only three classes.  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.

 

 

AMENDED ENGLISH TRANSLATION REQUIRED

 

To permit proper examination of the application, applicant must submit an amended English translation of all wording in the mark that appears to be foreign.  37 C.F.R. §§2.32(a)(9), 2.61(b); TMEP §809.  The following English translation is suggested:  The English translation of “PONTO” is “point”.  TMEP §809.03.  See attached translation evidence.

 

For applicant’s reference, the undersigned trademark examining attorney has also attached evidence concerning the English translation of word similar to the applied-for mark, i.e. “pont,” which is a French word that means “bridge” in English.  The applied-for mark here, however, is PONTO. 

 

 

RESPONSE GUIDELINES

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.

 

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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@uspto.gov

 

 

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.  

 

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 July 24, 2019 for

U.S. Trademark Application Serial No. 88420876

 

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. 

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@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 July 24, 2019, 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.”