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 12, 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 Services Requirement
• Multiple-Class Application Requirements Advisory

 

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).

 

However, applicant must respond to the following requirement.

 

IDENTIFICATION OF SERVICES REQUIREMENT

Applicant has applied to register the mark LIFE IN CHECK for “Pharmaceutical disposal and take-back services; pharmaceutical and drug take-back services; providing online information in the field of prescription drug disposal and take-back services” in Class 37, “: Providing online, non-downloadable computer software for providing price quotations, price comparisons, coupons and rebate information for pharmaceuticals and over the counter medications; Providing online, non-downloadable computer software for providing product information for the purpose of selection of pharmaceuticals and over the counter medications; Providing online, non-downloadable computer software for providing membership services enabling members to access discount price quotations for purchases of pharmaceuticals; Providing online, non-downloadable computer software for providing a consumer savings program to program participants with rebates and savings offers and the ability to verify and redeem rebates and savings offers; Providing online, non-downloadable computer software for connecting program participants through social media communities; Providing online, non-downloadable computer software for electronic benefit transfers” in Class 42, and “Providing a website featuring information regarding price quotations, price comparisons, coupons, rebate information, and disposal and take-back information for pharmaceuticals and over the counter medications” in Class 44.

 

International Class 37

 

The wording “Pharmaceutical disposal and take-back services” in the identification of services for International Class 37 must be clarified because it is too broad and could include services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass “Collection of pharmaceutical products for take-back” in Class 39 or “Destruction of pharmaceutical products” in Class 40.

 

Further, the wording “pharmaceutical and drug take-back services” in International Class 37 must be clarified because it is too broad and could include “collection of pharmaceutical products and drugs for take-back services” in Class 39 or “pharmaceutical and drug destruction services” in Class 40.

 

In addition, the wording “providing online information in the field of prescription drug disposal and take-back services” in Class 37 must be clarified because it is too broad and could encompass “providing online information in the field of collection of prescription drugs for take-back services” in Class 39 or “providing online information in the field of prescription drug destruction” in Class 40.

 

International Class 42

 

Applicant must correct the punctuation in the identification to clarify the individual items in the list of services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01(a).  Proper punctuation in identifications is necessary to delineate explicitly each product or service within a list and to avoid ambiguity.  Commas, semicolons, and apostrophes are the only punctuation that should be used in an identification of services.  TMEP §1402.01(a).  An applicant should not use colons in an identification.  Id. 

 

International Class 44

 

The wording “Providing a website featuring information regarding price quotations, price comparisons, coupons, rebate information, and disposal and take-back information for pharmaceuticals and over the counter medications” in the identification of services for International Class 44 must be clarified because it is too broad and could include services in other classes.  In particular, this wording could encompass “Providing a website featuring information regarding price quotations, price comparisons, coupons, and rebate information for pharmaceuticals and over the counter medications” in Class 35, “Providing a website featuring information regarding collection of pharmaceuticals and over the counter medications for take-back” in Class 39, or “Providing a website featuring information regarding the destruction of pharmaceuticals and over the counter medications” in Class 40.

 

In summary, applicant may substitute the following Identification of Services, if accurate: 

 

“Providing a website featuring information regarding price quotations, price comparisons, coupons, and rebate information for pharmaceuticals and over the counter medications” in Class 35

 

“Collection of pharmaceutical products for take-back; collection of pharmaceutical products and drugs for take-back services; providing online information in the field of collection of prescription drugs for take-back services; providing a website featuring information regarding collection of pharmaceuticals and over the counter medications for take-back” in Class 39

 

“Destruction of pharmaceutical products; pharmaceutical and drug destruction services; providing online information in the field of prescription drug destruction; providing a website featuring information regarding the destruction of pharmaceuticals and over the counter medications” in Class 40

 

“Providing online, non-downloadable computer software for providing price quotations, price comparisons, coupons and rebate information for pharmaceuticals and over the counter medications; Providing online, non-downloadable computer software for providing product information for the purpose of selection of pharmaceuticals and over the counter medications; Providing online, non-downloadable computer software for providing membership services enabling members to access discount price quotations for purchases of pharmaceuticals; Providing online, non-downloadable computer software for providing a consumer savings program to program participants with rebates and savings offers and the ability to verify and redeem rebates and savings offers; Providing online, non-downloadable computer software for connecting program participants through social media communities; Providing online, non-downloadable computer software for electronic benefit transfers” in Class 42

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS ADVISORY

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 class(es).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although 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  

 

 

/Christopher J Nodes/

Christopher J Nodes

Examining Attorney

Law Office 116

(571) 272-5220

christopher.nodes@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 12, 2019 for

U.S. Trademark Application Serial No. 88510341

 

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. 

 

 

/Christopher J Nodes/

Christopher J Nodes

Examining Attorney

Law Office 116

(571) 272-5220

christopher.nodes@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 12, 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.”