To: | PHOENIX GROUP HOLDINGS LLC (uspto@trademarks411.com) |
Subject: | U.S. Trademark Application Serial No. 88506503 - TRANSFORMING CUSTOMER ENGAGEMENT - N/A |
Sent: | September 30, 2019 10:55:43 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88506503
Mark: TRANSFORMING CUSTOMER ENGAGEMENT
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Correspondence Address:
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Applicant: PHOENIX GROUP HOLDINGS LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: September 30, 2019
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.
NO CONFLICTING 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).
DISCLAIMER OF “CUSTOMER ENGAGEMENT FOR LIFE SCIENCES” REQUIRED:
Applicant must provide a disclaimer of the unregistrable parts of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “CUSTOMER ENGAGEMENT FOR LIFE SCIENCES” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
“Customer engagement is a business communication connection between an external stakeholder (consumer) and an organization (company or brand) through various channels of correspondence.” See Wikipedia attachments.
“Life science” means “Any of several branches of science, such as microbiology, zoology, botany, or ecology, that deal with living organisms and their organization, life processes, and relationships to each other and their environment.” See attachments from <http://www.ahdictionary.com/word/search.html?q=life%20science>.
Collectively, CUSTOMER ENGAGEMENT FOR LIFE SCIENCES immediately conveys to consumers that applicant’s online internet platform is for business communication connection between an external stakeholder (consumer) and an organization (company or brand) through various channels of correspondence in the field of several branches of science, such as microbiology, zoology, botany, or ecology, that deal with living organisms and their organization, life processes, and relationships to each other and their environment. Indeed, applicant’s website states, “Create horizontal integration across 4 key customer engagement stakeholders”. See attachments from <http://www.teamenova.com/our-platform/>. Applicant also states, “. . . Engagement Across the Life Sciences Industry”. See attachments from <http://www.teamenova.com/>.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CUSTOMER ENGAGEMENT FOR LIFE SCIENCES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF SERVICES:
Class 42 -
In Class 42, applicant’s identification is: “Providing an on-line internet platform for medical communications and technology that propels engagement, interaction and activation across the healthcare ecosystem.”
Taking the above together, applicant may adopt the following:
Class 42: Online internet medical communication and technology platform as a service (PAAS) featuring computer software platforms for use in customer relationship management (CRM) and delivery and transmission of medical information to users for the purposes of engaging, interacting, and activating in the nature of promoting in the field of customer engagement for healthcare ecosystems
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
How to respond. Click to file a response to this nonfinal Office action
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE