To: | Walgreen Co. (ipdocket@walgreens.com) |
Subject: | U.S. Trademark Application Serial No. 88455416 - WALGREENS ADVANCED CARE - TM.1043 |
Sent: | August 23, 2019 11:38:21 AM |
Sent As: | ecom109@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88455416
Mark: WALGREENS ADVANCED CARE
|
|
Correspondence Address: |
|
Applicant: Walgreen Co.
|
|
Reference/Docket No. TM.1043
Correspondence Email Address: |
|
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: August 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).
In this case, applicant must disclaim the wording “ADVANCED CARE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
ADVANCED means “highly developed or complex”. See attached, or http://www.ahdictionary.com/word/search.html?q=advanced.
CARE means “Attentive assistance or treatment to those in need”. See attached, or http://www.ahdictionary.com/word/search.html?q=Care.
As illustrated by the dictionary definition, the wording “ADVANCED CARE” describes a feature, characteristic, function, or purpose of applicant’s services, namely, providing information or consulting services regarding highly developed (ADVANCED) medical treatments (CARE) to those in need.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ADVANCED CARE” 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.
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.
IDENTIFICATION AND CLASSIFICATION OF SERVICES
The applicant’s identification of services are as follows:
· Class 44: Providing information in the fields of health and wellness; consulting services in the field of medical therapy recommendations
The highlighted portions of the applicant’s identification of services must be clarified because it fails to describe the underlying nature of the services with sufficient particularity and/or includes services classified in other classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Note that the rest of the identification of services is acceptable in Class 44.
Consulting services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42. TMEP §1402.11(e).
Here, applicant lists “medical therapy recommendations” as the field of the consulting services. However, the wording is ambiguous, indefinite, and requires further clarification. Although “medical therapy” is classified in Class 44 for a medical field/service, the addition of the wording “recommendations” alludes to Class 35 services, e.g., “Providing recommendations of service providers to consumers for commercial purposes”.
If applicant’s services are in the nature of medical diagnosis for treatment purposes then the services are classified in Class 44.
Accordingly, applicant may adopt any or all of the following identification(s), if accurate:
· CLASS 35: consulting services in the field of providing recommendations of medical therapy service providers to consumers for commercial purposes
· CLASS 44: Providing information in the fields of health and wellness; consulting services in the field of medical therapy recommendations, namely, medical diagnosis of {indicate condition or disease, e.g., speech disorders}
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
(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 2 classes; however, applicant submitted a fee(s) sufficient for only 1 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
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
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
/Philip Liu/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 109
(571) 272 - 6792
Philip.Liu@uspto.gov
RESPONSE GUIDANCE