Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  November 08, 2019

 

This Final Office Action is written in response to the applicant’s responses to office action letter dated August 13, 2019 and September 11, 2019.    See TMEP §§713.02, 714.04. 

 

The following requirement(s) have been withdrawn:  “Specimen Refusal – Insufficient Relationship to Services.”  See TMEP §§713.02, 714.04.

 

The refusal for (1) Activities are Not Registrable According to Specimen – International Class 44 and requirement for (2) Identification of Goods and Services – Clarification Required are now made FINAL for the reasons set forth below.  Trademark Act.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§904.07(b), 1301.01 et seq.; See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03; 37 C.F.R. §2.63(b).

 

Activities are Not Registrable According to Specimen – International Class 44:

 

Registration is refused because the activities recited in the identification of services, when viewed in conjunction with the specimen, are not registrable services as contemplated by the Trademark Act.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127; see TMEP §§904.07(b), 1301.01 et seq.

 

The activities set forth as services in an application are reviewed using the following criteria to determine whether they constitute registrable services:

 

(1)       A service is a real activity, not an idea, concept, process, or system.

 

(2)       A service is performed primarily for the benefit of someone other than the applicant.

 

(3)       A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.

 

TMEP §1301.01(a); see In re Dr Pepper Co., 836 F.2d 508, 509-510, 5 USPQ2d 1207, 1208-1209 (Fed. Cir. 1987); In re Canadian Pac. Ltd., 754 F.2d 992, 994-95, 224 USPQ 971, 973 (Fed. Cir. 1985).

 

In this case, the description set forth in the identification of services is as follows:  “Providing information in the fields of health, medicine, and pharmaceuticals for the treatment of infectious disease; Medical information services, namely, providing information to physicians, healthcare professionals, and patients on the topics of health issues, pharmaceutical products, and health awareness in the field of infectious diseases; Health care services, namely, providing patient access programs to provide eligible patients with streamlined access to drugs; Dispensing of pharmaceuticals; Providing an interactive internet website for medical professionals and medical patients featuring cumulative medical information that enables users to enter, access, track, and monitor health and medical information” in International Class 44. 

 

The specimen indicates that these activities are not registrable services because it is clear from the specimens that NUZYRA is a pharmaceutical preparation (“NUZYRA is a tetracycline class antibacterial”).  The use of the mark only indicates its use as a source identifier for pharmaceutical and not Class 44 services. 

 

Applicant argues “the specimen properly shows use of the mark in connection with providing information to physicians, healthcare professionals, and patients.  Specifically, the website shown in the Class 44 specimen is used by doctors, patients, and consumers to gain access to safety information, usage and dosage instructions, and the indications is approved to treat.” 

 

As established in the third criteria set forth above, “A service is an activity that is sufficiently separate and qualitatively different from an applicant’s principal activity, i.e., it cannot be an activity that is merely incidental or necessary to an applicant’s larger business.”  As shown by the attached copy of the applicant’s U.S. Reg. No. 5741452, NUZYRA is a pharmaceutical preparation.  The function of the advertising specimen provided by the applicant is to inform consumers and medical practitioners of the efficacy and issues regarding the pharmaceutical.  The provision of this information is merely incidental or necessary to applicant’s pharmaceutical business and is not a separate registrable service.

 

Accordingly, this refusal is made Final.

 

Identification of Goods and Services – Requirement Made Final:

 

The wording “Providing an interactive internet website for medical professionals and medical patients featuring cumulative medical information that enables users to enter, access, track, and monitor health and medical information” in the identification of services for International Class 44 must be clarified because it is too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

Specifically, a website that “enables” action by the consumer is a technology/computer service in International Class 42.  In order for the services to be a health service in Class 44, the website can merely provide the service of providing medical information.

 

Therefore, applicant may respond by (1) adding International Class 42 to the application and reclassifying these services in the proper international class, (2) deleting “that enables users to enter, access, track, monitor and generate health and medical information” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Please note:  In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font.  Applicant may adopt the following identification of goods and services, if accurate:

 

Class 36:         “Insurance consultancy services in the field of health; Insurance services, namely, insurance eligibility review and verification and consultation in the pharmaceutical industry; Pharmaceutical benefit management services; Insurance administration services, namely, assisting others with applying for insurance benefits”

 

Class 39:         “Transportation of goods, namely, antibiotics; delivery and storage of goods; delivery of pharmaceuticals”

 

Class 42:         “Providing an interactive internet website for medical professionals and medical patients featuring cumulative medical information that enables users to enter, access, track, and monitor health and medical information”

 

Class 44:         “Providing information in the fields of health, medicine, and pharmaceuticals for the treatment of infectious disease; Medical information services, namely, providing information to physicians, healthcare professionals, and patients on the topics of health issues, pharmaceutical products, and health awareness in the field of infectious diseases; Health care services, namely, providing patient access programs to provide eligible patients with streamlined access to drugs; Dispensing of pharmaceuticals; Providing an internet website for medical professionals and medical patients featuring medical information”

 

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).

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 41, 42, 43 and 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Multiple Class Application – Advisory:

 

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(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  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.

 

Options for Response to Final Office Action:

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

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.  

 

/Dominic R. Fathy/

Trademark Examining Attorney

Law Office 104

571-272-8801

dominic.fathy@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 November 08, 2019 for

U.S. Trademark Application Serial No. 88438211

 

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. 

 

 

/Dominic R. Fathy/

Trademark Examining Attorney

Law Office 104

571-272-8801

dominic.fathy@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 November 08, 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.”