United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88583487
Mark: 24/7 PREVAIL ENURSE
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Correspondence Address: AMSTER, ROTHSTEIN & EBENSTEIN LLP
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Applicant: First Quality Products, Inc.
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Reference/Docket No. 34304/551
Correspondence Email Address: |
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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 13, 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 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).
IDENTIFICATION/CLASSIFICATION OF SERVICES
The word “consulting,” “consultancy,” or “consultation” services in International Class 44 must be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(e). This wording is indefinite because it does not specify the subject matter of the services. Further, this wording could identify services in more than one international class.
Consulting services are classified according to the subject matter of the consulting service; for example, “business management consultancy” is classified in International Class 35 and “computer technology consultancy” is classified in International Class 42. TMEP §1402.11(e).
The following are examples of acceptable identifications for information services: “providing comparison shopping information about automobiles by means of the Internet” is classified in International Class 35, “providing online information regarding financing and insuring an automobile” is classified in International Class 36, “providing an Internet website that features information about automotive maintenance and repair service” is classified in International Class 37, and “providing information in the field of nursing” is classified in International Class 44.
Please note that product information is classified in Class 35.
Applicant may adopt the following identification, if accurate:
“Providing information and consulting services in the field of adult incontinence products.”
International Class 35.
“Providing information and consulting services in the field of adult incontinence.”
International Class 44.
The identification of goods for Class 5 is acceptable. 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.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 2 classes. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 5 and 44; and applicant needs a specimen for Class 35. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
In this case, applicant must disclaim the wording “24/7” and “ENURSE” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or 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).
24/7 means “for twenty-four hours seven days a week.” See attached definition from http://www.merriam-webster.com/dictionary/24/7. E is defined as electronic. See attached definitions from http://www.walthowe.com/glossary/e.html#e- and http://www.merriam-webster.com/dictionary/e- Nurse is defined as “a person who cares for the sick or infirm specifically : a licensed health-care professional who practices independently or is supervised by a physician, surgeon, or dentist and who is skilled in promoting and maintaining health.” See attached definition from http://www.merriam-webster.com/dictionary/nurse. The applicant provides information and consulting electronically using nurses that is available for twenty-four hours seven days a week. Hence, the services acts as an electronic nurse or enurse. According to the applicant’s website at http://www.prevail.com/enurse,
Our team of licensed nurses are ready to lend their confidential, respectful, and personalized expertise at any time. Get in touch with an eNurse now!
Consumers often encounter ENURSE services, as displayed on the following attached websites:
http://www.rcn.org.uk/clinical-topics/ehealth/every-nurse-an-e-nurse
http://link.springer.com/chapter/10.1007/978-3-319-07854-0_71
Therefore, the wording describes a significant feature of the applicant’s 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 “24/7” and “ENURSE” 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.
PLEASE NOTE: Applicant is encouraged to telephone or email (Tracy.Cross@uspto.gov) the trademark examining attorney to resolve the issues raised above, if a new class is not being added. Formal responses are not accepted via email. However, in this case, the examining attorney will issue an examiner’s amendment based upon the applicant’s informal email communication.
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
/Tracy Cross/
Examining Attorney
Law Office 109
(571) 272-9271
Tracy.Cross@uspto.gov
RESPONSE GUIDANCE