Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NON-FINAL OFFICE ACTION

 

THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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 22, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.

 

SEARCH OF OFFICE’S DATABASE OF MARKS – PRIOR-PENDING APPLICATION

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d). TMEP §704.02; see 15 U.S.C. §1052(d). However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

The filing date of pending U.S. Application Serial No. 86598542 (COPE for cancer-related services) precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. 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 application.

 

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 mark in the referenced application. 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.

 

However, regardless of whether applicant addresses the issue of the potential conflict between applicant’s mark and the mark in the referenced application, applicant must respond timely and completely to the following issue. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

IDENTIFICATIONS OF SERVICES REQUIRE AMENDMENT

 

Applicant must amend the International Class 35, 44, and 45 identifications of services for the reasons indicated below. See generally 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

In International Class 35:

 

• The wording “an e-store with oncology-related products and services recommended by healthcare providers and cancer patient advocates” and “retail services featuring products and services for cancer patients and cancer treatment” is indefinite. For example, “retail services” could include a wide array of retail support services – from accounting to advertising and marketing services. See TMEP §§1402.01, 1402.11. If applicant’s retail services involve retail stores or outlets (online or brick-and-mortar), or distributorships, applicant should amend the identification to specify the nature of the retail activity provided (e.g., retail stores, retail distributorships, online retail outlets). See TMEP §§1301.01(a)(ii), 1402.11. 

 

In International Class 44:

 

• The services “providing a website via a global computer network or an app featuring supportive personal stories on the subjects of health, cancer, cancer recovery and survival” are misclassified. Stories of a personal nature are classified in International Class 45. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

• The wording “weight management services” is too broad. For example, weight management services could include personal training provided in connection with weight loss programs (which is classified in International Class 41), providing personalized meal planning services via a website (which is classified in International Class 43), and/or providing weight loss and/or weight maintenance programs (which is classified in International Class 44.

 

• The wording “providing lifestyle and nutrition services, namely, personalized routines, counseling, and support, along with symptom-based recipes and meal plans” is too broad. Providing “personalized support” can include emotional counseling and emotional support services in International Class 45. Providing recipes and meal plans is a service classified in International Class 43. Finally, in the context of providing “lifestyle services,” it is not clear what applicant means by providing “personalized routines, counseling.” Counseling services are classified based on the subject matter of the counseling. TMEP §1402.11(e). Personal lifestyle counseling services are classified in International Class 45.

 

• The wording “providing an internet-based database for collecting and maintaining certain types of cancer patient information and data” is also too broad. Database services, which are a type of information service, are classified based on the subject matter and/or purpose of the information in the database. TMEP §1402.11(b).  For example, if the cancer patient information and data is being collected and maintained for medical research purposes, it is classified in International Class 42; however, if it is being collected and maintained for treatment and diagnostic purposes, it is classified in International Class 44.

 

• The wording “providing counseling services in nutrition, lifestyle and wellness, and physical fitness” is too broad: counseling services in the field of physical fitness are classified in International Class 41 (indeed, applicant lists “counselling services in the field of physical fitness for cancer patients” in International Class 41 currently), and counseling services in the field of “lifestyle” could be classified in International Class 45.

 

In International Class 45:

 

• The wording “providing extensive database of recipes and meal plans personalized to target specific cancer-related symptoms” is misclassified; these services are classified in International Class 43.

 

The following are the suggested formats for the amended identifications of services:

 

CLASS 35: Commercial information and advice for consumers in the choice of products and services addressing the needs of cancer patients and cancer treatment; Providing an e-store with oncology-related products and services recommended by healthcare providers and cancer patient advocates; Online retail store services featuring goods and services addressed to cancer patients and treatment; Retail store services featuring products and services for cancer patients and cancer treatment

 

CLASS 38: [NO CHANGE REQUIRED]

 

CLASS 41: [NO CHANGE REQUIRED]

 

CLASS 42: Providing an internet-based database for collecting and maintaining certain types of cancer patient information and data for medical research purposes

 

CLASS 43: Weight management services, namely, providing personalized meal planning services; Providing lifestyle and nutrition services, namely, providing information to cancer patients in the nature of symptom-specific recipes and meal planning; Providing an extensive database of recipes and meal plans personalized to target specific cancer-related symptoms

 

CLASS 44: Providing a website via a global computer or an app network featuring information in the fields of health, cancer, cancer recovery and survival; Providing a website via a global computer network or an app featuring supportive personal stories on the subjects of health, cancer, cancer recovery and survival; Providing information in the field of cancer prevention, screening, diagnosis and treatment; Providing links to the web sites of others featuring information about the diagnosis and treatment of cancer; Providing health information in the field of cancer symptom-related prevention and treatment; Providing information to patients in the field of managing symptoms relating to cancer and cancer symptoms treatment; Providing a website featuring information in the field of the diagnosis and treatment of cancer symptoms; Providing information to patients in the field of managing symptoms relating to cancer and cancer treatment; Weight management services, namely, providing weight loss and/or weight maintenance programs, and nutritional counseling; Providing healthy lifestyle and nutrition services, namely, personalized routines, counseling, and support in the nature of {clarify what Class 44 service is encompassed by “support,” e.g., personal assessments, maintenance schedules}; Providing nutrition counseling to oncology patients via oncology certified nutritional specialists; Providing a website for medical professionals, patients, and health care related parties featuring patient information that can be accessed for purposes of monitoring patients' nutrition and general wellness status; Providing an internet-based database for collecting and maintaining certain types of cancer patient information and data for treatment and diagnostic purposes; Providing counseling services in nutrition and lifestyle wellness, and physical fitness

 

CLASS 45: Providing personal support services for patients and families of patients with cancer, namely, emotional counseling and emotional support; Providing patient advocate services in the field of cancer and cancer treatment symptom management; Providing patient support groups for oncology patients and their families-both individual and/or group sessions; Providing personal support services for families of patients with cancer, namely, companionship, emotional counseling and emotional support; Providing extensive database of recipes and meal plans personalized to target specific cancer-related symptoms; Providing online social networking services for cancer patients and related persons; Providing a website via a global computer network or an app featuring supportive personal stories on the subjects of health, cancer, cancer recovery and survival; Personal lifestyle counseling services

 

Applicant’s services may be clarified or limited, but may not be expanded beyond those originally itemized in the application. 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 services or add services not found or encompassed by those in the original application. See TMEP §1402.06(a)-(b). The scope of the 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.

 

ADVISORY: MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies services that are classified in at least eight classes; however, applicant submitted fees sufficient for only six classes. Therefore, in response to the requirement that applicant amend the identifications of services, applicant must either (1) restrict the amended identifications to six classes (i.e., the number of classes covered by the fees already paid), or, if classes are added to the application, (2) satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(a)  List the services by their international class number in consecutive numerical order, starting with the lowest numbered class (as demonstrated above).

 

(b)  Submit a filing fee for each international class not covered by the fees already paid. The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class (view the USPTO’s current fee schedule). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.

 

See 15 U.S.C. §§1051(b), 1112; 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a), 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 REQUIRED

 

For this application to proceed, applicant must explicitly address the requirement to amend the International Class 35, 44, and 45 identifications by setting forth the necessary changes. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Click to file a response to this non-final Office action 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

RESPONSE GUIDANCE

 

Missing the response deadline to this letter will cause the application to abandon. A response must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.

 

The response must be signed by a U.S.-licensed attorney. Responses signed by an unauthorized party are not accepted and can cause the application to abandon.

 

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 RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §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. §2.23(b); TMEP §820. TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.23(c); TMEP §820.04. However, in certain situations, 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.

 

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 22, 2019 for

U.S. Trademark Application Serial No. 88572004

 

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. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@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 22, 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.”