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:  April 09, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on October 2, 2019 in connection with this application.  The assigned trademark examining attorney inadvertently omitted a requirement relevant to the mark in the subject application.  See TMEP §§706, 711.02.  Specifically, the identification of services includes a registered trademark.

 

The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s). 

 

Applicant must address all issue(s) raised in this Office action, in addition to the issues raised in the Office action dated March 27, 2020.  The issue(s) raised in the previous October 2, 2019 Office action is/are as follow and is/are maintained:  identification of services requirements. 

 

Further, the following requirement(s) has been satisfied:  multiple-class application requirements.  See TMEP §713.02. 

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Identification of Services Requirement

 

 

NEW ISSUE: IDENTIFICATION OF SERVICES REQUIREMENT

The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended on March 27, 2020.  See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07.  Applicant’s 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.  Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.  See 37 C.F.R. §2.71(a); TMEP §1402.07(d).

 

In this case, the application, as amended, identifies the goods and/or services as follows:  “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 organization 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 precertification 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; providing employee assistance programs, namely, labor negotiation information services in the nature of counseling for employees of others regarding the negotiation of business contracts for the purpose of workplace labor conflict resolution; Business and public policy research services in the field of medicine, management of illness, and healthcare delivery as they relate to the operational aspects of healthcare cost management and financing and their impact of quality of healthcare.”

 

However, a portion of the proposed amendment identifies the following goods and/or services:  “providing employee assistance programs, namely, labor negotiation information services in the nature of counseling for employees of others regarding the negotiation of business contracts for the purpose of workplace labor conflict resolution; Business and public policy research services in the field of medicine, management of illness, and healthcare delivery as they relate to the operational aspects of healthcare cost management and financing and their impact of quality of healthcare.”

 

This portion of the proposed amendment exceeds the scope of the current identification because the original identification of services did not include employee assistance program services or research services related to healthcare operations.

 

Additionally, the wording “Unified IP” in the identification of services is a registered mark not owned by applicant; accordingly, applicant must amend the identification to delete this wording and, if not already included in the identification, provide the common commercial or generic name of the services.  TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958).  See the attached U.S. Registration No(s). 3750899 and 4411065. 

 

Identifications of services should generally be comprised of generic everyday wording for the services, and exclude proprietary or potentially-proprietary wording.  See TMEP §§1402.01, 1402.09.  A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant.  TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). 

 

Applicant may substitute the following wording, if accurate: 

 

Class 35: Business consulting services in the fields of sales, marketing, communications, telecommunications, unified 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 organization 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 precertification 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

 

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).  Additionally, for U.S. applications filed under Trademark Act Section 44(e), the scope of the identification for purposes of permissible amendments may not exceed the scope of the goods and/or services identified in the foreign registration.  37 C.F.R. §2.32(a)(6); Marmark, Ltd. v. Nutrexpa, S.A., 12 USPQ2d 1843, 1845 (TTAB 1989) (citing In re Löwenbräu München, 175 USPQ 178, 181 (TTAB 1972)); TMEP §§1012, 1402.01(b).

 

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.

 

 

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 an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

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 April 09, 2020 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 April 09, 2020, 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.”