To: | David, Turner (linda.green@medicalappeals.org) |
Subject: | U.S. Trademark Application Serial No. 88484125 - PREMIER MEDICAL APPEALS EXPERTS IN - N/A |
Sent: | October 17, 2019 12:29:27 PM |
Sent As: | ecom104@uspto.gov |
Attachments: |
The United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88484125
Mark: PREMIER MEDICAL APPEALS EXPERTS IN
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Correspondence Address:
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Applicant: David, Turner
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Reference/Docket No. N/A
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) 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: October 17, 2019
This Office acknowledges receipt of applicant’s communication dated September 20, 2019, in which applicant clarified entity type, submitted a substitute specimen, and disclaimed Experts in Denial Management Services.
The following requirement has been satisfied:
The examining attorney maintains and makes FINAL the following refusal and requirements:
Specimen Refusal – Mark Differs on Drawing and the Specimen
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Classes 36 and 38, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the substitute specimen displays the mark as the wording PREMIER MEDICAL APPEALS YOUR OBVIOUS CHOICE FOR THE MANAGEMENT SERVICES alone on the right side of a webpage and the scroll design alone on the left side of the webpage. However, the drawing displays the mark as the scroll design directly above the wording PREMIER MEDICAL APPEALS, which is above an underline, which is above the words EXPERTS IN DENIAL MANAGEMENT SERVICES. The mark on the specimen does not match the mark in the drawing because the wording and the layout differ. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, amending the mark on the drawing to agree with the mark on the specimen would be a material alteration the wording and the layout differ.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Mark Description Inaccurate
The following description is suggested, if accurate: The mark consists of an incomplete dark royal blue circle inside of which is a concentric white circle inside of which is a dark royal blue background in front of which is a yellow scroll with light royal blue scribbles that imitates writing, in front of the scroll is a gold feather. Under the above described figure are the stylized words Premier Medical Appeals in dark royal blue above a light royal blue underline below which are the stylized words EXPERTS IN DENIAL MANAGEMENT SERVICES in dark royal blue.
COLOR CLAIM INCOMPLETE
A complete color claim must reference all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
The following color claim are suggested, if accurate:
Color claim: “The colors dark royal blue, white, yellow, light royal blue, and gold are claimed as a feature of the mark.”
DISCLAIMER REQUIREMENT
In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of a 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).
As the evidence attached the initial Office action from http://www.ahdictionary.com/word/search.html?q=premier shows, “premier” means “[f]irst in status or importance.” In addition, the term “premier” has been previously held as laudatory. TMEP 1209.03(k). In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) (BEST and PREMIER in mark BEST! SUPPORTPLUS PREMIER merely descriptive of computer consultation and support services and thus subject to disclaimer).
“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)). Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services. See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).
The evidence attached the initial Office action from http://www.healthcare.gov/glossary/appeal/ and http://healthplans.providence.org/members/member-groups/pers/our-plans/medical-appeals-determination-and-grievance-processes/ shows “medical appeals” wording means a patient’s request for his or her health insurance company or the Health Insurance Marketplace to review a decision that denies a benefit or payment.
The evidence attached the initial Office action from http://www.ahdictionary.com/word/search.html?q=expert shows “expert” mean “a person with a high degree of skill in or knowledge of a certain subjects.” Like “premier,” expert is a laudatory term.
The evidence attached the initial Office action from http://www.mrahis.com/healthcare-denial-management/ and http://www.accesshealthcare.com/services/revenue-cycle/denial-management shows “denial management services” is commonly used in connection with similar services to mean efforts to reduce denials of healthcare claims by doctors and hospitals.
Given that the identified services are “[m]edical insurance case and utilization review and insurance claims adjustment services for healthcare purchasers and payors and providers and Medicare beneficiaries” and “[e]lectronic data interchange services in the field of healthcare transactions such as claims, eligibility, claim status, electronic remittance advice, prior authorizations, attachments and referrals that allow direct transaction and payment communications between healthcare providers and payers,” the wording merely describes a quality, characteristic, function, feature, purpose, or use of applicant’s 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 “Premier Medical Appeals Experts in Denial Management SERVICES” 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.
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 final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)
Johnson, Don
/Donald O. Johnson/
Examining Attorney
Law Office 104
571-272-7831
don.johnson@uspto.gov
RESPONSE GUIDANCE