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 26, 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.

 

SUMMARY OF ISSUES:

• Identification of Goods and Services- Indefinite
• Foreign Registration Certificate Required

 

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).

 

IDENTIFICATION OF GOODS & SERVICES-INDEFINITE

 

Applicant must clarify the wording identified below in the identification of goods and/or services 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 goods and/or services are.  Further, this wording could identify goods and/or services in more than one international class.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

For example, the wording “advisory services for patients, hospital staff, healthcare providers, and physicians, namely, information, instructions and technical assistance for the use of software” in the identification of services for International Class 42 could encompass “troubleshooting of computer software problems” in Class 42 or “medical advisory services” in International Class 44.

 

Furthermore, the identification for software in International Classes 9 and 42 are indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 9: “Computer hardware; computer network interface devices; computer network interface devices, namely, interface units for interfacing resistance sensors with mobile communication devices; computer programs, recorded, for responding to a remote sensor for indicating the level of fullness of a container; computer network interface devices, namely, interface units for measuring the level of fullness of stoma bags and urine bags, and for transmitting the measured level to a remote location; computer hardware and downloadable software, namely, {identify the specific function of the software, e.g., for patient care management} for use in ostomy and stoma care; computer hardware and downloadable software for use in body fluid collection and analysis; downloadable computer software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; downloadable software in the nature of a mobile application for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; downloadable computer software for patient care management; downloadable software in the nature of a mobile application for patient care management”

 

International Class 10: “Medical aids for use in stoma care, namely, stoma bags, urine bags, and {identify the specific nature of the sensors, e.g, patient monitoring} sensors for stoma bags and urine bags; stoma bags; urine bags; catheter bags for medical use; drainage bags and containers for concentrates and solutions in solid or liquid form for medical use; bags for use with intravenous drips {identify the specific nature of the bags, e.g., intravenous bags sold empty for intravenous therapy}; bags sold empty for use with naso gastric devices; sensors for use with all the aforesaid bags and containers to measure the level of fullness for medical purposes; medical devices, instruments and apparatus, namely, {identify the specific nature of the devices, instruments and apparatus, e.g., for use in treating or diagnosing ostomy and stoma conditions} for ostomy and stoma care; medical devices, instruments and apparatus, namely, {identify the specific nature of the devices, instruments and apparatus, e.g., for use in treating or diagnosing ostomy and stoma conditions}; medical specimen collection device in the nature of {identify the specific nature of the device and the type of specimen being collected, e.g., bags for the collection of urine}; medical devices, instruments and apparatus for the collection and analysis of body fluids”

 

International Class 42: “Software as a service services featuring software for {identify the specific function of the software, e.g., patient care data management} for use in ostomy and stoma care; software as a service services featuring software for use in body fluid collection and analysis; software as a service services featuring software for monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; software as a service services featuring software for patient care management; cloud computing featuring software for use in monitoring, tracking, accessing, collecting, analyzing, recording and reporting medical and health data; cloud computing featuring software for patient care management; cloud computing featuring software for use in ostomy and stoma care, namely, {identify the specific function of the software, e.g., for patient care management}; cloud computing featuring software for use in body fluid collection and analysis; advisory services for patients, hospital staff, healthcare providers, and physicians, namely, information, instructions and technical assistance for the use of software{this wording is too broad and could include services in other international classes} advisory services for hospital staff, healthcare providers, and physicians, namely, technical assistance for the use of software in the nature of {identify the specific nature of the technical assistance in Class 42, e.g., troubleshooting of computer software problems}; advisory services relating to medical apparatus and instruments, namely, {identify the specific nature of the technical advisory services in Class 42, e.g., technology research in the field of medical instruments}”

 

International Class 44: “Healthcare; medical services; providing healthcare information and medical information; advisory services relating to medical apparatus and instruments, namely, providing patients, hospital staff, healthcare providers, and physicians with information, instructions, and technical assistance for the use of ostomy and stoma care devices {this wording is too broad and could include services in other international classes} advisory services relating to medical apparatus and instruments, namely, {identify the specific nature of the medical advisory services in Class 44, e.g., providing information, advice and data on medical imaging from ostomy and stoma care devices}; providing patients, hospital staff, healthcare providers and physicians with information, namely, {identify the specific nature of the medical information in Class 44, e.g., information for administering medications for use with ostomy and stoma care devices}; Medical advisory services for patients, hospital staff, healthcare providers, and physicians with information and instructions for ostomy and stoma treatment;  advisory services relating to medical apparatus and instruments, namely, providing patients, hospital staff, healthcare providers and physicians with information, instructions, and technical assistance for the use of body fluid collection and analysis devices {this wording is too broad and could include services in other international classes}  advisory services relating to medical apparatus and instruments, namely, {identify the specific nature of the medical advisory services in Class 44, e.g., providing medical advisory services for the use of body fluid collection and analysis devices}; providing patients, hospital staff, healthcare providers and physicians with information, namely, {identify the specific nature of the medical or healthcare information in Class 44, e.g.,  providing health care information by telephone and the internet}; Medical advisory services for patients, hospital staff, healthcare providers, and physicians for collecting body fluid; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; medical {identify the specific nature of the testing, monitoring and reporting services in Class 44, e.g., diagnostic} testing, monitoring and reporting services”.

 

While the suggested wording above provides examples of wording that meets the Office’s requirements for specificity, it does not provide every possible acceptable identification. Applicant must ensure that any identification submitted is accurate, concise, properly classified, and does not include goods or services not included in the identification submitted with the application as originally filed.  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.

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

RESPONSE GUIDELINES

 

 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  

 

 

/Carolyn Wlodarczyk/

Carolyn Wlodarczyk

Trademark Examining Attorney

Law Office 109

571-272-9273

carolyn.wlodarczyk@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 26, 2019 for

U.S. Trademark Application Serial No. 88491708

 

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. 

 

 

/Carolyn Wlodarczyk/

Carolyn Wlodarczyk

Trademark Examining Attorney

Law Office 109

571-272-9273

carolyn.wlodarczyk@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 26, 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.”