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 30, 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.

 

 

SEARCH OF THE RECORDS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods is indefinite and must be clarified because the goods and services highlighted below need further clarification and specificity.  In addition, several entries are misclassified and must be moved to the proper International Class.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  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.

 

Applicant may adopt the following wording, if accurate: 

 

 

            Class 9

___________ [applicant must specify either downloadable or recorded.  Please note that providing temporary use of non-downloadable software is a service in Class 42, not Class 9] software for use in calculating, transferring and storing data relating to medical diagnosis and evaluations of medical imagery, in International Class 9.

 

Class 38

Providing virtual chatrooms for a collaborative community of medical professionals; providing multiple-use access to a global computer information network [The wording “in the field of health care” must be deleted.  This activity does not require an indication a specific field or subject matter since the service is providing the telecommunication access and not content. If applicant is a content provider, this language should not be used and the subject matter of the content will control the service classification], in International Class 38.

 

Class 42

Data automation and collection services using proprietary software to evaluate, analyze and collect medical data; Providing a secured-access, members only website featuring technology that enables registered Internet networked medical professionals the ability to network, communicate and share data for the purposes of medical diagnosis and evaluations of medical imagery; Hosting an interactive website for collaboration of medical professionals; providing temporary use of online non-downloadable software for health risk assessment and profiling in the field of preventative medicine, in International Class 42.

 

Class 44

Medical assistance services in the nature of medical information provided to and among medical professionals via the Internet and global computer networks through the use of archived medical images and a data storage and retrieval system; consulting and counseling services in the field of preventative medicine; providing information via the internet in the field of healthcare, namely, providing news and information concerning healthcare-related topics to subscribers such as physicians and other healthcare professionals; and providing news regarding medical and health related events via the internet; Providing information including observations and expertise among medical professionals concerning patient care, use of medical devices and pharmaceuticals Providing health information and analysis in the nature of the performance of and quality of care provided by hospitals and medical professionals, in International Class 44.

 

TMEP section 1402.011.

 

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).  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

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.

 

 

FAILURE TO RESPOND – Partial Abandonment Advisory

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services in International Class(es) 9, 38, 42, and 44 will be deleted from the application:  all the goods and services from Class 9 and 38 and “Providing a secured-access, members only website featuring technology that gives registered Internet networked medical professionals the ability to network, communicate and share data for the purposes of medical diagnosis and evaluations of medical imagery” and “providing use of software for health risk assessment and profiling in the field of preventative medicine” in Class 42.  The application will then proceed with the following goods and/or services in International Class(es) 42 and 44 only:  “Data automation and collection services using proprietary software to evaluate, analyze and collect medical data; Hosting an interactive website for collaboration of medical professionals; Providing health information and analysis in the nature of the performance of and quality of care provided by hospitals and medical professionals” in Class 32 and “Medical assistance services in the nature of medical information provided to and among medical professionals via the Internet and global computer networks through the use of archived medical images and a data storage and retrieval system; consulting and counseling services in the field of preventative medicine; providing information via the internet in the field of healthcare, namely, providing news and information concerning healthcare-related topics to subscribers such as physicians and other healthcare professionals; and providing news regarding medical and health related events via the internet” in Class 44.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

 

 

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  

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@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 30, 2019 for

U.S. Trademark Application Serial No. 88512958

 

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. 

 

 

/Sharon A. Meier/

Trademark Attorney, LO 112

571-272-9195 - phone

sharon.meier1@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 30, 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.”