To: | Tenet Healthcare Corporation (daltmdept@bakerbotts.com) |
Subject: | U.S. Trademark Application Serial No. 88481859 - TENET HEALTH - 078922.___ |
Sent: | September 19, 2019 11:30:16 AM |
Sent As: | ecom124@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. 88481859
Mark: TENET HEALTH
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Correspondence Address: |
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Applicant: Tenet Healthcare Corporation
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Reference/Docket No. 078922.___
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: September 19, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
IDENTIFICATION OF SERVICES – CLASS 44 ONLY
For Class 44, “medical diagnosis” requires particularity about what conditions or diseases the diagnosis is for. “Hospital” and “physical rehabilitation” requires additional wording because alone, they do not constitute a service. “Chemical dependency rehabilitation facilitates” alone does not constitute a service, and additional wording is required to detail what services will be provided in regards to the facilities.
Applicant may substitute the following wording, if accurate:
“Healthcare services, namely, medical diagnostic services; hospital services, acute care hospital services, hospital outpatient services, hospital emergency care services, physical rehabilitation services and providing chemical dependency rehabilitation facilities; medical diagnostic testing, monitoring and reporting services” in Class 44.
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.
DESCRIPTION OF THE MARK
Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
The following description is suggested, if accurate:
The mark consists of the words “TENET HEALTH” in the color blue to the right of a stylized triangular design comprised of three curved lines where the left curve is blue, the top right curve is green, and the bottom right curve is orange.
DISCLAIMER REQUIRED
In this case, applicant must disclaim HEALTH because it is not inherently distinctive. This unregistrable term at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s 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).
The attached evidence from Merriamwebster.com shows this wording means “the general condition of the body”. Thus, the wording merely describes applicant’s services because applicant’s services relate to the condition of a person’s body, whether it’s diagnosing it or providing outpatient or rehabilitation services. Furthermore, applicant provides a number of health care related services identified in both Class 35 and Class 44 and “health” therefore identifies the category of these services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “HEALTH” 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.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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
/Chandel Boozer/
Examining Attorney
Law Office 124
571-272-7272
chandel.boozer@uspto.gov
RESPONSE GUIDANCE