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 06, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

·       Prior-Filed Pending Applications May Bar Registration

·       Section 2(d) Refusal – Likelihood of Confusion

·       Identification of Goods/Services Partial Requirement

 

PRIOR-FILED PENDING APPLICATIONS MAY BAR REGISTRATION

 

The filing dates of pending U.S. Application Serial Nos. 88161954, 88280794, 88433846, 88433852, 88489965, and 88489974 precede applicant’s filing date.  See attached referenced applications.  If one or more of 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

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1830669, 4422674, 4698814, 5041621, and 5122650.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See attached registrations.

 

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.

 

The applied-for mark is FOUNTAIN in standard character format for “pharmaceuticals for the treatment of low testosterone; medicated skin care preparations” in International Class 005; “Downloadable software, namely, mobile applications for use in connection with the collection, analysis, and sharing of medical data; mobile applications for use in obtaining prescription medications and referrals to healthcare providers” in International Class 009; “Providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with the collection, analysis, and sharing of medical data; Providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with for use in obtaining prescription medications and referrals to healthcare providers” in International Class 042; “Medical consultation services in the field of men's sexual health and wellness; Medical services, namely, treatments for low testosterone; hormone therapy; providing a website featuring medical information” in International Class 044.

 

The registered marks are:

 

• FOUNTAIN CENTERS (U.S. Registration No. 1830669) in typed format with CENTER(S) disclaimed for “chemical dependency treatment services” in International Class 042;

 

• FOUNTAIN DAY SPA (U.S. Registration No. 4422674) in standard character format with DAY SPA disclaimed for “Health spa services for health and wellness of the body and spirit, namely, providing massage, facial and body treatment services, cosmetic body care services” in International Class 044;

 

• BINARY FOUNTAIN (U.S. Registration No. 4698814) in standard character format for “Computer software for operational performance analyses, measuring customer satisfaction, monitoring social media and identifying expenditure analytics in the healthcare, real estate and travel industries; computer software for use in generating feedback from customers to improve business operations resulting in an enhanced patient-customer experience in the healthcare, real estate and travel fields; Computer software for providing technology consulting in the field of social media; Computer software for business reputation management and improvement; Computer software for data mining” in International Class 009; and “Software as a service (SAAS) services featuring software for operational performance analyses, measuring customer satisfaction, monitoring social media and identifying expenditure analytics in the healthcare field, real estate and travel industries; software as a service (SAAS) services featuring computer software for use in generating feedback from customers to improve business operations resulting in an enhanced patient-customer experience in the healthcare, real estate and travel fields; Software as a service (SAAS) services featuring software for providing technology consulting in the field of social media; Software as a service (SAAS) services featuring software for business reputation management and improvement, Software as a service (SAAS) services featuring software for data mining” in International Class 042;

 

• FOUNTAIN (U.S. Registration No. 5041621) in standard character format for “Beauty care products, namely, perfume, body soaps, non-medicated preparations for the care of the hair, skin and body” in International Class 003; “Beauty supplements in the nature of dietary supplements; dietary protein supplements, food supplements, health food supplements and nutritional supplements” in International Class 005; and

 

• FOUNTAIN MD (U.S. Registration No. 5122650) featuring design  with MD disclaimed for “Acupuncture services; Chiropractic services; Facial treatment services, namely, cosmetic peels; Health spa services, namely, cosmetic body care services; Health spa services, namely, providing weight loss programs; Laser hair removal services; Massage therapy services; Vitamin therapy; Weight management services, namely, providing weight loss and/or weight maintenance programs; Advice relating to allergies; Dentistry services in the field of teeth whitening” in International Class 044.

 

Similarity of the Marks

 

U.S. Registration No. 5041621

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is FOUNTAIN and registrant’s mark is FOUNTAIN.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.  Id.

 

Therefore, the marks are confusingly similar.

 

U.S. Registration No. 1830669, 4422674, 4698814, and 5122650

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In the present case, the marks are greatly similar in sound, appearance, connotation and overall commercial impression because the marks share the same term FOUNTAIN.  The additional term/lettering in the registered marks does not overcome a likelihood of confusion because the registered marks fully encompass the applied-for mark and both FOUNTAIN carries a similar connotation and overall commercial impression between the applied-for and registered marks because the term appears identically in each mark and the impression of FOUNTAIN is not significantly altered in marks.  In addition, the connotation and commercial impression of the marks, which is a source of supplying something, such as water, do not differ when considered in connection with applicant’s and registrant’s goods and/or services.  See attached evidence from Merriam-Webster.

 

The registered marks fully encompass the applied-for mark.  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; therefore, consumer confusion is likely.

 

Additionally, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  The additional wording/lettering in U.S. Registration Nos. 1830669, 4422674 and 5122650 is disclaimed as descriptive thereby rendering the wording FOUNTAIN the dominant wording in the registered marks.  As the dominant term in the registered marks is identical to the only term in the applied-for mark, consumer confusion is likely.

 

Also, the design/stylization element(s) in the mark in U.S. Registration No. 5122650 fail(s) to obviate a likelihood of confusion in this case because it is not such that consumers would request the services by design as opposed to name, and the applied-for mark is in standard character format.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

And, as the applied-for marks is in standard character format, it can appear in the any design, including that of the registered mark.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Therefore, the wording in the marks is rendered the dominant portion of the marks.  And, as the wording in the applied-for mark is identical to the dominant wording in the registered mark, consumer confusion is likely.

 

Finally, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).  As the applied-for mark encompasses the single term FOUNTAIN and no other distinguishing wording, consumers are likely to recall the same wording and ideas from the applied-for and registered marks.  Therefore, consumer confusion is likely, especially when the marks are encountered separately.

 

Accordingly, giving each feature of the marks appropriate weight, the marks when compared in their entireties are sufficiently similar to create consumer confusion or mistake as to the source of the goods and/or services despite some differences.

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Similarity of the Goods and/or Services

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

U.S. Registration Nos. 1830669, 4422674 and 5122650

 

Applied-for (FOUNTAIN) services: Medical consultation services in the field of men’s sexual health and wellness; Medical services, namely, treatments for low testosterone; hormone therapy; providing a website featuring medical information

 

U.S. Registration No. 1830669 (FOUNTAIN CENTERS) services: chemical dependency treatment services

U.S. Registration No. 4422674 (FOUNTAIN DAY SPA) services: Health spa services for health and wellness of the body and spirit, namely, providing massage, facial and body treatment services, cosmetic body care services

U.S. Registration No. 5122650 (FOUNTAIN MD featuring design) services: Acupuncture services; Chiropractic services; Facial treatment services, namely, cosmetic peels; Health spa services, namely, cosmetic body care services; Health spa services, namely, providing weight loss programs; Laser hair removal services; Massage therapy services; Vitamin therapy; Weight management services, namely, providing weight loss and/or weight maintenance programs; Advice relating to allergies; Dentistry services in the field of teeth whitening

 

In the present case, the applied-for and registered services are related because they are medical/health services.  The related services are often associated with a single source and targeted at the same consumers.  The applicant’s and registrant’s services are used by the same purchasers for the same purpose of medical/health treatment and information.  See attached Internet evidence showing applicant’s and registrant’s services are offered by the same entity.  Specifically, the attached evidence from Kaiser Permanente, Renew Health & Wellness and Novant Health demonstrates that a single entity that offers applicant’s type of services also offers registrant’s type of services under the same name.

 

Additionally, the attached evidence from Kaiser Permanente and Novant Health demonstrates that registered services are also of a kind that emanate from the same source as applicant’s software goods and services.

 

U.S. Registration No. 4698814

 

Applied-for goods/services: Downloadable software, namely, mobile applications for use in connection with the collection, analysis, and sharing of medical data; mobile applications for use in obtaining prescription medications and referrals to healthcare providers; Providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with the collection, analysis, and sharing of medical data; Providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with for use in obtaining prescription medications and referrals to healthcare providers

 

U.S. Registration No. 4698814 (BINARY FOUNTAIN) goods/services: Computer software for operational performance analyses, measuring customer satisfaction, monitoring social media and identifying expenditure analytics in the healthcare, real estate and travel industries; computer software for use in generating feedback from customers to improve business operations resulting in an enhanced patient-customer experience in the healthcare, real estate and travel fields; Computer software for providing technology consulting in the field of social media; Computer software for business reputation management and improvement; Computer software for data mining; Software as a service (SAAS) services featuring software for operational performance analyses, measuring customer satisfaction, monitoring social media and identifying expenditure analytics in the healthcare field, real estate and travel industries; software as a service (SAAS) services featuring computer software for use in generating feedback from customers to improve business operations resulting in an enhanced patient-customer experience in the healthcare, real estate and travel fields; Software as a service (SAAS) services featuring software for providing technology consulting in the field of social media; Software as a service (SAAS) services featuring software for business reputation management and improvement, Software as a service (SAAS) services featuring software for data mining

 

The applied-for and registered software goods and services are related because they are encompassing, as the software is used to collect, provide and analyze information/data in the medical/healthcare field.  Thus, the goods and services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

U.S. Registration No. 5041621

 

Applied-for goods: pharmaceuticals for the treatment of low testosterone; medicated skin care preparations

 

U.S. Registration No. 5041621 (FOUNTAIN) goods: Beauty care products, namely, perfume, body soaps, non-medicated preparations for the care of the hair, skin and body; Beauty supplements in the nature of dietary supplements; dietary protein supplements, food supplements, health food supplements and nutritional supplements

 

The applied-for and registered goods are related because they are encompassing.  In particular, the applied-for goods are worded broadly and encompass any goods that are used to treat low testosterone and skin issues, and the registered goods are broad because they do not specify what the various supplements are intended to treat or improve.  For example, the beauty supplements could encompass supplements intended to improve skin and the health food supplements could encompass supplements intended to help with hormone levels.  Additionally, companies that make medicated preparations for the skin also make non-medicated preparations for the skin.  See attached evidence from Scarology and Eucerin. 

 

Accordingly, when purchasers encounter the applied-for and registered goods and services  offered under highly similar marks, they are likely to be confused as to the source of the goods/services.  Thus, the goods/services identified in the application and the registered goods/services are considered related for the purposes of the likelihood of confusion analysis.

 

Thus, use of the applied-for mark and the registered marks by different parties with the identified goods/services is likely to lead to consumer confusion or mistake as to the source of the goods and services.  Therefore, registration is refused under Trademark Act Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

IDENTIFICATION OF GOODS/SERVICES PARTIAL REQUIREMENT

 

The current delineation of goods/services is as follows: pharmaceuticals for the treatment of low testosterone; medicated skin care preparations in International Class 005; Downloadable software, namely, mobile applications for use in connection with the collection, analysis, and sharing of medical data; mobile applications for use in obtaining prescription medications and referrals to healthcare providers in International Class 009; Providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with the collection, analysis, and sharing of medical data; Providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with for use in obtaining prescription medications and referrals to healthcare providers in International Class 042; and Medical consultation services in the field of men's sexual health and wellness; Medical services, namely, treatments for low testosterone; hormone therapy; providing a website featuring medical information.

 

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the following clauses in the identification of goods and services are indefinite:

 

• International Class 009: “mobile applications for use in obtaining prescription medications and referrals to healthcare providers”
• International Class 042: “providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with the collection, analysis, and sharing of medical data” – the nature of the services must be clear
• International Class 042: “providing a web site, web-based portal or software as a service (SaaS) non-downloadable software for use in connection with for use in obtaining prescription medications and referrals to healthcare providers” – the nature of the services must be clear
• International Class 044: “hormone therapy” – further clarification is required

 

The identification for mobile applications in International Class 9 is indefinite and too broad and must be clarified to specify whether the 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.  See TMEP §1402.03(d).

 

Also, while not required, applicant should amend the first clause International Class 009 for further clarity, as shown below.

 

Applicant may adopt the following identification, if accurate: (bolding/strikethroughs/italics indicate suggested amendments)

 

International Class 005: (acceptable)

 

Pharmaceuticals for the treatment of low testosterone; medicated skin care preparations

 

International Class 009:

 

Downloadable software, namely, downloadable mobile applications for use in connection with the collecting, analyzing, and sharing of medical data; Downloadable mobile applications for use in obtaining prescription medications and referrals to healthcare providers

 

International Class 042:

 

Providing a web site featuring non-downloadable software for collecting, analyzing and sharing medical data;  , web-based portal or Software as a service (SaaS) services featuring non-downloadable software for collecting, analyzing and sharing medical data; Providing a web site featuring non-downloadable software for obtaining prescription medications and referrals to healthcare providers;, web-based portal or Software as a service (SaaS) services featuring non-downloadable software for obtaining prescription medications and referrals to healthcare providers use in connection with for use in obtaining prescription medications and referrals to healthcare providers

 

International Class 044:

 

Medical consultation services in the field of men's sexual health and wellness; Medical services, namely, treatments for low testosterone; Medical services, namely, hormone replacement therapy; providing a website featuring medical information

 

Applicant’s goods and/or 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.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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.

 

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  

 

 

/Brittany Lee-Richardson/

Trademark Examining Attorney

Law Office 116

571.272.9750

Brittany.Lee-Richardson@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 06, 2019 for

U.S. Trademark Application Serial No. 88507854

 

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. 

 

 

/Brittany Lee-Richardson/

Trademark Examining Attorney

Law Office 116

571.272.9750

Brittany.Lee-Richardson@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 06, 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.”