United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88491735
Mark: 1 PATIENT AT A TIME
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Correspondence Address: KNOBBE MARTENS OLSON & BEAR, LLP
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Applicant: 11 Health and Technologies Limited
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Reference/Docket No. 11HUK.022TFC
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 27, 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:
SEARCH OF OFFICE’S DATABASE OF MARKS
The effective filing dates of pending U.S. Application Serial Nos. 88350605, 88123657, and 87703338 precede applicant’s filing date. See attached referenced applications. If the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
SHIRE TRANSFORMING MEDICINE ONE PATIENT AT A TIME, in standard characters, for the following relevant services “Medical and scientific research; pharmaceutical research and development; providing medical and scientific research information” in Class 42 (U.S. Registration No. 4627213).
WE BUILD OUR IMAGE...ONE PATIENT AT A TIME., in standard characters, for “Medical radiology services; medical interventional radiology services” in Class 44 (U.S. Registration No. 5799560).
REDEFINING MEDICINE, ONE PATIENT AT A TIME, in standard characters, for “Medical services” in Class 44 (U.S. Registration No. 5721244).
OUTSMARTING CANCER ONE PATIENT AT A TIME, in standard characters, for “health care services; medical services, namely, cancer care, diagnostic radiology, radiation and treatment services for patients” in Class 44 (U.S. Registration No. 3974446).
CHANGING THE QUALITY OF LIFE ONE PATIENT AT A TIME, in standard characters, for “Health care services, namely, physical therapy services and consulting services in the field of physical rehabilitation; healthcare information services, namely, providing information relating to treatment and medical procedures in the field of balance restoration to the general public, patients, health care providers, physicians, and physical therapists” in Class 44 (U.S. Registration No. 3668909).
"IMPROVING HEALTHCARE, ONE PATIENT AT A TIME", in standard characters, for “Medical clinics; Medical consultations” in Class 44 (U.S. Registration No. 3955779).
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
1. Similarity of the Marks
The applicant’s mark:
1 PATIENT AT A TIME in standard characters.
The registrants’ marks:
SHIRE TRANSFORMING MEDICINE ONE PATIENT AT A TIME, in standard characters (U.S. Registration No. 4627213).
WE BUILD OUR IMAGE...ONE PATIENT AT A TIME., in standard characters (U.S. Registration No. 5799560).
REDEFINING MEDICINE, ONE PATIENT AT A TIME, in standard characters (U.S. Registration No. 5721244).
OUTSMARTING CANCER ONE PATIENT AT A TIME, in standard characters (U.S. Registration No. 3974446).
CHANGING THE QUALITY OF LIFE ONE PATIENT AT A TIME, in standard characters (U.S. Registration No. 3668909).
"IMPROVING HEALTHCARE, ONE PATIENT AT A TIME", in standard characters (U.S. Registration No. 3955779).
The dominant portion of the compared marks are similar in appearance, pronunciation, and meaning because they all contain slight variations of the wording “1 PATIENT AT A TIME”, that is “1 PATIENT AT A TIME/ ONE PATIENT AT A TIME”. Comparing the literal word portions of the marks, the marks are similar except applicant’s mark simply contains the wording “1 PATIENT AT A TIME” with the number one used in place of the word, whereas registrants’ marks all contain the word “ONE” rather than the number one, that is “ONE PATIENT AT A TIME”. Specifically, U.S. Registration No. 4627213, contains the wording “ONE PATIENT AT A TIME” preceded by the wording “SHIRE TRANSFORMING MEDICINE”, that is “SHIRE TRANSFORMING MEDICINE ONE PATIENT AT A TIME”, U.S. Registration No. 5799560 contains the wording “ONE PATIENT AT A TIME” preceded by the wording “WE BUILD OUR IMAGE”, that is “WE BUILD OUR IMAGE...ONE PATIENT AT A TIME.” U.S. Registration No. 5721244 contains the wording “ONE PATIENT AT A TIME” preceded by the wording “REDEFINING MEDICINE”, that is “REDEFINING MEDICINE, ONE PATIENT AT A TIME”, U.S. Registration No. 3974446 contains the wording “ONE PATIENT AT A TIME” preceded by the wording “OUTSMARTING CANCER”, that is “OUTSMARTING CANCER ONE PATIENT AT A TIME”, U.S. Registration No. 3668909 contains the wording “ONE PATIENT AT A TIME” preceded by the wording “CHANGING THE QUALITY OF LIFE”, that is “CHANGING THE QUALITY OF LIFE ONE PATIENT AT A TIME”, and lastly, U.S. Registration No. 3955779 contains the wording “ONE PATIENT AT A TIME” preceded by the wording “IMPROVING HEALTHCARE”, that is "IMPROVING HEALTHCARE, ONE PATIENT AT A TIME". Thus, the dominant portion of the compared marks are similar and create the same overall commercial impression and the marks are thus confusingly similar for the purposes of determining likelihood of confusion.
Moreover, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Thus, the marks convey the same commercial impression and are substantially similar in this comparison. Consumers are likely to be confused as to the source of the origin of the goods and/or services and the marks are similar. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Therefore, the marks are confusingly similar.
2. Relatedness of the Goods and/or Services
The applicant’s goods and/or services are:
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 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 software for use in ostomy and stoma care; computer hardware and software for use in body fluid collection and analysis; computer software; 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; computer software for patient care management; downloadable software in the nature of a mobile application for patient care management
Class 10: Medical aids for use in stoma care, namely, stoma bags, urine bags, and sensors for stoma bags and urine bags; stoma bags; urine bags; catheter bags; drainage bags and containers for medical use; bags for use with intravenous drips; bags 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 for ostomy and stoma care; medical devices, instruments and apparatus; medical specimen collection device; medical devices, instruments and apparatus for the collection and analysis of body fluids
Class 42: Software as a service services; software as a service services featuring software 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 services; 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; 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
Class 44: Healthcare; medical services; providing healthcare 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; 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; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; medical testing, monitoring and reporting service.
The registrants’ goods and/or services are:
Class 42: Medical and scientific research; pharmaceutical research and development; providing medical and scientific research information (U.S. Registration No. 4627213).
Class 44: Medical radiology services; medical interventional radiology services (U.S. Registration No. 5799560).
Class 44: Medical services (U.S. Registration No. 5721244).
Class 44: Health care services; medical services, namely, cancer care, diagnostic radiology, radiation and treatment services for patients (U.S. Registration No. 3974446).
Class 44: Health care services, namely, physical therapy services and consulting services in the field of physical rehabilitation; healthcare information services, namely, providing information relating to treatment and medical procedures in the field of balance restoration to the general public, patients, health care providers, physicians, and physical therapists (U.S. Registration No. 3668909).
Class 44: Medical clinics; Medical consultations (U.S. Registration No. 3955779).
When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Absent restrictions in an application and/or registration, the identified goods and/or services are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Further, the applicant uses broad wording to describe the goods and/or services, which presumably encompasses all goods and/or services of the type described, including registrant’s more narrow identification. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). For example, applicant’s identification of “Healthcare” in Class 44 is presumed to encompass the related listed goods and/or services in the registrants’ identification of goods and/or services, including “Medical radiology services” for U.S. Registration No. 5799560, “Medical services” for U.S. Registration No. 5721244, “Health care services” for U.S. Registration No. 3974446 and U.S. Registration No. 3668909, and “Medical clinics” for U.S. Registration No. 3955779.
Moreover, the attached Internet evidence, establishes that the same entity commonly provides the relevant goods and/or services and markets the goods and/or services under the same mark and the goods and/or services are similar or complementary in terms of purpose or function. This evidence shows that the applicant’s “computer software”, “network interface devices”, “medical devices”, “advisory services”, and “healthcare” are commercially related and likely to be encountered together in the marketplace by consumers with registrants’ various medical services and medical and scientific research. Therefore, consumers are likely to be confused and mistakenly believe that the products and/or services originate from a common source.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, “computer hardware”, “Medical devices”, “software as a service”, “cloud computing”, “Medical and scientific research”, and “healthcare services” are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Applicant should note the following additional ground for refusal.
FAILURE TO FUNCTION
Specifically, the applied-for mark does not function as a trademark because applicant has applied for the following goods and services:
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 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 software for use in ostomy and stoma care; computer hardware and software for use in body fluid collection and analysis; computer software; 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; computer software for patient care management; downloadable software in the nature of a mobile application for patient care management
Class 10: Medical aids for use in stoma care, namely, stoma bags, urine bags, and sensors for stoma bags and urine bags; stoma bags; urine bags; catheter bags; drainage bags and containers for medical use; bags for use with intravenous drips; bags 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 for ostomy and stoma care; medical devices, instruments and apparatus; medical specimen collection device; medical devices, instruments and apparatus for the collection and analysis of body fluids
Class 42: Software as a service services; software as a service services featuring software 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 services; 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; 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
Class 44: Healthcare; medical services; providing healthcare 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; 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; remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical diagnosis and treatment purposes; medical testing, monitoring and reporting service.
Therefore, the applied-for mark appears to be an advertising slogan and informational phrase for the healthcare industry, such that it would not be recognized as a source indicator for the goods and services. See evidence addressed below showing the popularity and common usage of the wording “1 PATIENT AT A TIME” in the marketplace:
Not every designation that appears on a product or its packaging functions as a trademark, even though it may have been adopted with the intent to do so. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1404 (TTAB 2018) (citing In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993)). Further, not every designation used in the advertising or performance of services functions as a service mark, even though it may have been adopted with the intent to do so. In re Keep A Breast Found., 123 USPQ2d at 1879 (quoting Am. Velcro, Inc. v. Charles Mayer Studios, Inc., 177 USPQ 149, 154 (TTAB 1973)); see TMEP §1301.02. A designation can only be registered when purchasers would be likely to regard it as a source-indicator for the goods and services. TMEP §1301.02; see In re Moody’s Investors Serv. Inc., 13 USPQ2d 2043, 2047-49 (TTAB 1989); see In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)); TMEP §1202.
Thus, because consumers are used to commonly encountering slogans or sayings as advertising material, consumers are not likely to view the applied-for mark as a source identifying trademark.
Therefore, applicant’s applied-for mark “1 PATIENT AT A TIME” fails to function as a trademark and service mark.
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.
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, namely, {identify the specific function of the software, e.g., health data management}; 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 services, namely, {identify the specific nature and function of the cloud computing services, e.g., featuring software for use in monitoring, and reporting medical and
health data}; 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
