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:  September 06, 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 Results

 

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).

 

Identification of Goods and Services

 

Applicant must clarify the identifications of goods and/or services because they are indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  Some wording is indefinite because it does not make clear what the goods and/or services are and could identify goods and/or services in more than one international class.  For example, in some cases the function of the software is unclear, and it is unclear whether some services are rendered through use of temporary use of non-downloadable software, which could be a Class 42 service.

 

Applicant may substitute the following wording, if accurate. Suggested changes appear in bold, underlined wording. 

 

Class 9:

 

Downloadable software, namely, mobile applications for collecting, analyzing, and sharing of personal medical data via computer networks; downloadable mobile applications for use in ordering prescription and over the counter medications and to conduct searches for healthcare providers; Downloadable software in the nature of a mobile application that allows users to access and compare prices of prescription drugs and over the counter medications, make online purchases of prescription drugs and over the counter medications, and to access information regarding health, prescription drugs and over the counter medications; Downloadable software in the nature of a mobile application that provides access to websites featuring  patient information regarding the use of epinephrine; Downloadable software in the nature of a mobile application for users to conduct online searches for price comparisons of healthcare products and services; downloadable software in the nature of a mobile application for users to conduct searches for healthcare providers within the user’s community; downloadable software in the nature of a mobile application that provides access to a searchable directory of healthcare products and services, and that allows users to receive electronic data and information from others via the internet; downloadable software in the nature of a mobile application that allows users to electronically transmit advertising and promotional materials to others; downloadable software in the nature of a mobile application that allows users to search, compile, index and organize medical information

 

Class 35:

 

Pharmaceutical services, namely, processing and fulfilling online prescription orders in retail pharmacies; online retail store services featuring over-the-counter medications and medical supplies; specialized retail pharmacy services for patients with particular medical conditions; providing a secure online searchable database featuring referrals for healthcare providers; medical and physician referral services; administration of membership club that provides consumer information about prescription medications, and provides online order services for prescription and over the counter medications; Providing online price comparisons of medical products and healthcare services; online referral services for healthcare providers in the field of allergies and allergy relief; promoting the goods and services of other by disseminating advertising and promotional materials through a variety of methods; Providing online price comparisons, cost analysis, coupons, and price quotations for pharmaceuticals and over the counter medications for consumers, healthcare providers, administrators, and other participants in the healthcare industry; providing online consumer product information related to the selection of pharmaceuticals and over the counter medications based on consumer preferences and specifications; membership club services, namely, providing price discounts to members for pharmaceuticals; providing online business directories of healthcare providers and related reviews, schedule information, practice information and locations via computer networks, global information networks and wireless networks for commercial purposes; providing online consumer guides of healthcare providers and related reviews, schedule information, practice information and locations via computer networks, global information networks and wireless networks for commercial purposes

 

 

 

Class 41:

 

Providing a website featuring non-downloadable publications in the nature of blogs, magazines, brochures, and articles in the fields of pharmaceuticals, medicine, healthcare, disease management, nutrition, diet, fitness, and personal health;

 

Class 42:

 

Providing a website featuring technology that allows users to transmit medical information and to send and receive messages between patient and healthcare providers; electronic collection and storage of medical data and records; providing a website featuring technology that allows patients and caregivers to transmit information about disease symptoms and medical events experienced by the patient

 

 

Class 44:

 

Providing on-line information in the field of wellness, nutrition, weight loss and dieting; health care services, namely, wellness programs; providing a website featuring information on health, wellness and nutrition; healthcare in the nature of health maintenance organizations; providing long- term care facilities; providing a website featuring medical information. Health care services, namely, providing medical assessment services; providing on-line information in the field of health; medical services; health care services provided by a network of health care professionals and service providers; disease management services; providing health information; providing internet-based medical information for patients on medical issues and procedures; providing medical information in the field of allergy symptoms and treatment; providing an online searchable database featuring information about allergies

 

Class 45:

 

Online social networking services for registered users to share health and medical information and engage in related social networking

 

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).

 

ID Manual Online

 

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.

 

Classification

 

If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 9, 35, 41, 42, 44, and 45.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Combined 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least 6 classes; however, applicant submitted a fee(s) sufficient for only 5 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.

 

 

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. 

 

 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 September 06, 2019 for

U.S. Trademark Application Serial No. 88472936

 

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. 

 

 

/Karen Bracey/

Examining Attorney

Law Office 116

571-272-9132

karen.bracey@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 September 06, 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.”