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:  October 02, 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).

 

 

SUMMARY OF ISSUES:

• Identification of Services Requirement
• Multiple-Class Application Requirements

 

 

IDENTIFICATION OF SERVICES REQUIREMENT

The wording “office functions; marketing; operation of businesses for others; promoting the goods and services of others by means of providing and operating links to web sites of others, promoting the goods and services of others through online ordering and cataloguing of those goods and services; issuing press releases for third parties through direct intervention and through a customer-driven computer platform; information, consultancy and advisory services relating to all the aforesaid services; medical and health-care cost and utilization review and business management” in the identification of services is indefinite and must be clarified because applicant must provide further details regarding the nature and/or scope of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Additionally, applicant must clarify the wording “providing social media and internet commentary either directly, through an application-based platform, or through a cloud-based platform” in the identification of goods and/or services in International Class 35 because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because it does not make clear what the services are.  Further, this wording could identify services in more than one international class.  For example, providing business information is in International Class 35 and providing information about current events is in International Class 41. 

 

Applicant may substitute the following wording, if accurate:

 

Class 35: Business consulting services in the fields of sales, marketing, communications, telecommunications, Unified IP Communications, Voice over Internet-Protocol (VoIP), Wide Area Networking (WAN), business management and network management and security; conducting business and market research surveys; conducting on-line business management research surveys; business monitoring services, namely, tracking interactions between customers and call center agents to provide market related data for sales retail, customer care, or marketing purposes; Providing office functions; Marketing services; operation of businesses for others, namely, telecommunications businesses; business organisation and operation consultancy; business consultancy; database management services, namely, testing, verifying, correcting, and enhancing computer databases of others to include up-to-date and more accurate customer contact information; promoting the goods and services of others; promoting the goods and services of others by means of providing and operating links to web sites of others, promoting the goods and services of others through online cataloguing of those goods and services in the nature of providing hyperlinks to websites of others; promoting the goods and services of others through the operation and management of telephone call centers for others, namely, processing customer service calls and collection calls, providing customer support services and customer care services; operation and management of telephone call centers for others; logistics management in the field of emergency services; general business networking referral services, namely, promoting the goods and services of others by passing leads and referrals among others; Marketing services, namely, issuing press releases for third parties through direct intervention and through a customer-driven computer platform; marketing services, namely, consumer marketing research in the nature of monitoring media coverage; marketing services, namely, consumer marketing research in the nature of monitoring social media; organizing and hosting events for commercial purposes regarding earnings releases, business entities, and business activities; consumer marketing research in the nature of providing custom and automatically generated reporting regarding media coverage; business information, namely, providing social media and internet commentary in the field of business either directly, through an application-based platform, or through a cloud-based platform; marketing services, namely, content creation for marketing both directly and through an application-based marketplace or a cloud-based marketplace; Business information, consultancy and advisory services relating to all the aforesaid services; Medical and health care cost containment and review; Business consulting, namely, medical and health-care cost and utilization review and business management; medical and health-care cost price analysis and account auditing; financial records management, namely, review and evaluating health and medical records for consumers for purposes of accuracy and cost management; providing medical referrals; providing consumer information in the field of healthcare; consultation services regarding management of healthcare costs; providing consumer information comparing health insurance providers and benefits via the Internet; administration, billing and reconciliation of accounts on behalf of others by telephone; business consulting services in the area of accounts receivable management; assistance, advisory services and consultancy with regard to the health care industry with regard to business planning, business analysis, business management, and business organization, namely, business management, medical practice management for others in the field of family medicine and primary care, business record management in the field of health and patient relationship management in the nature of scheduling, automated monitored business activities for patient biometrics capturing and reporting, screenings, surveys, billing, accounts receivable, and business analytics in the field of healthcare; business management, namely, issuing patient reminders in the nature of appointment, follow-up, and payment reminders; arranging of managed care contractual services in the fields of diagnostic imaging, home health care, durable medical equipment, specialty pharmacy, and diagnostic lab services; managed care services, namely, electronic processing of health care information; managed care services, namely, utilization review and pre-certification services; management of health care clinics for others; medical claims management services, namely, receiving, data entering, for transactions that are originated by physicians, hospitals, and ancillary medical care providers; strategic business consulting services, business networking services and business administrative services, namely, patient registration, scheduling, bill generation and tracing, issuing payment reminders, accounts receivable billing services and accounts payable billing administration, purchasing administration and financial reporting services for healthcare providers

 

Class 41: Providing information, news, and commentary in the field of current events via the Internet and social media

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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

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 Sections 1(b) and 44:

 

(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(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 Sections 1(b) and 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class.  See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a).  See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

 

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.

 

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. 

 

 

 

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  

 

 

/Laila Sabagh/

Laila Sabagh

Trademark Examining Attorney

Law Office 127

(571) 272-8230

Laila.Sabagh@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 October 02, 2019 for

U.S. Trademark Application Serial No. 88488593

 

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. 

 

 

/Laila Sabagh/

Laila Sabagh

Trademark Examining Attorney

Law Office 127

(571) 272-8230

Laila.Sabagh@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 October 02, 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.”