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:  November 23, 2019

 

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

 

Introduction

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 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).

 

 

SUMMARY OF ISSUES

• Identification of Goods and Services – Amendment Required
• Disclaimer – Required

 

Identification of goods and services – Amendment Required

Applicant has applied for the following identification of goods and services:

 

Class 9:  System comprising secure internal storage compartments, at least two or more access stations for accessing the storage compartments, computer software, and at least one computer display for securely storing inventory in the storage compartments, electronically retrieving a designated storage compartment upon electronic confirmation of identity of a customer, and delivery to the customer of inventory from the storage compartment; system comprising secure internal storage compartments for temporarily storing filled prescriptions, a pharmacist access station for accessing the storage compartments, and at least one or more customer access stations, computer software, and at least one computer display for securely storing filled prescriptions in the storage compartments, electronically retrieving a designated storage compartment upon electronic confirmation of identity of a customer, and delivery to the customer of a filled prescription from the storage compartment without the need to talk to a pharmacist

 

Class 35:  Retail store pharmacy services in the field of prescription drugs; retail pharmacy services featuring secure storage of filled prescriptions and automated in-store pickup by customers of the filled prescriptions; retail pharmacy services featuring pickup by customers of filled prescriptions from a machine that uses electro-mechanical compartments and electronic customer identification to provide access to the filled prescriptions without the need to talk to a pharmacist; retail pharmacy services featuring secure storage of filled prescriptions in a machine and electronically provided access to the filled prescriptions after electronic identity confirmation and without the need to talk to a pharmacist

 

The identification of goods and services is indefinite and must be clarified according to the explanations and suggestions below.  See TMEP §§ 1402.01.

 

The identification for “systems” in International Class 9 is indefinite and must be clarified because the wording does not make clear the nature of the specific systems and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §1401.05(d). 

 

Applicant must clarify the goods by (1) describing the nature, purpose, or use of the system; and (2) listing the system’s parts or components, using common generic terms and referencing the primary parts or components of the system first.  See 37 C.F.R. §2.32(a)(6); TMEP §§1401.05(d), 1402.01, 1402.03(a).  Additionally, this wording should be classified in the same international class as the primary parts or components of the system.  See TMEP §1401.05(d). 

 

Applicant may adopt the following as its identification of goods and services, if accurate, providing additional specificity where indicated:

 

Class 9:  {Applicant must specify type or nature of the system in Class 9, e.g., Electronic communications, Automated process control, otherwise delete} system comprising secure internal storage compartments, at least two or more {applicant must specify Class 9 system goods, e.g., recorded software, otherwise delete} for accessing the storage compartments, {applicant must specify type of computer software in Class 9, e.g., downloadable, otherwise delete} computer software, and at least one computer display {applicant must specify, e.g., screen, monitor, otherwise delete}, all the foregoing for securely storing inventory in the storage compartments, for electronically retrieving a designated storage compartment upon electronic confirmation of identity of a customer, and for delivery to the customer of inventory from the storage compartment; {Applicant must specify type or nature of the system in Class 9, e.g., Electronic communications, Automated process control, otherwise delete} system comprising secure internal storage compartments for temporarily storing filled prescriptions, {applicant must specify Class 9 system goods for pharmacist access, e.g., downloadable software} for a pharmacists accessing storage compartments, and at least one or more {applicant must specify Class 9 system goods for customer access, e.g., downloadable software} for customers accessing {applicant must specify, e.g., storage compartments}, {applicant must specify type of computer software in Class 9, e.g., downloadable, recorded, otherwise delete} computer software, and at least one computer display {applicant must specify, e.g., screen, monitor, otherwise delete}, all the foregoing for securely storing filled prescriptions in the storage compartments, for electronically retrieving a designated storage compartment upon electronic confirmation of identity of a customer, and for delivery to the customer of a filled prescription from the storage compartment without the need to talk to a pharmacist

 

Class 35:  Retail store pharmacy services in the field of prescription drugs; retail pharmacy services featuring secure storage of filled prescriptions and automated in-store pickup by customers of the filled prescriptions; retail pharmacy services featuring pickup by customers of filled prescriptions from a machine that uses electro-mechanical compartments and electronic customer identification to provide access to the filled prescriptions without the need to talk to a pharmacist; retail pharmacy services featuring secure storage of filled prescriptions in a machine and electronically provided access to the filled prescriptions after electronic identity confirmation and without the need to talk to a pharmacist

 

See TMEP §§1402.01, 1402.03.

 

An applicant may only amend an identification to clarify or limit the goods and services, but not to add to or broaden the scope of the goods and services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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

 

 

Disclaimer – Required

Applicant must provide a disclaimer of the unregistrable part 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 “RX” because it is not inherently distinctive.  This unregistrable term is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and 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). 

 

The attached evidence from the American Heritage Dictionary shows that “RX” means “a prescription for medicine or a medical appliance.”  In this case, applicant uses the definition of “RX” descriptively in the identification of goods, for example, “system comprising secure internal storage compartments for temporarily storing filled prescriptions” and identification of services for example, “Retail store pharmacy services in the field of prescription drugs.”  Thus, “RX” merely describes applicant’s goods and services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “RX” 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.

 

 

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  

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

 

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 November 23, 2019 for

U.S. Trademark Application Serial No. 88576827

 

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. 

 

 

/Olivia S. Lee/

Olivia S. Lee

Trademark Examining Attorney

Law Office 128

olivia.lee@uspto.gov

(571) 272-6848

 

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 November 23, 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.”