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 22, 2019

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues 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 requirement
• Disclaimer requirement

 

The trademark examining attorney notes that the applicant’s Voluntary Amendment dated November 1, 2019 has been accepted and entered.

 

Identification of Goods and Services Requirement

 

The identification for software of in International Class 009 is indefinite and too broad and must be clarified to specify whether its format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 009, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).

 

The trademark examining attorney notes that the ID Manual entry for “Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use}” was deleted on January 1, 2019, in compliance with Nice 11-2019.  Under Nice 11-2019, computer software must be specified as “downloadable” and/or “recorded” to clarify the nature of the goods.

 

The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

The wording “software as a service (SAAS) services featuring software related to health status and disease prevention” in the identification of services is indefinite and must be clarified because the function of the software is not clear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following wording, if accurate: 

 

International Class 009:  (Based on Use in Commerce) Downloadable computer software for motion assessment of clinical movements; downloadable computer software for tracking, analyzing and assessing clinical movements; downloadable computer software for use in notifying users based on performance; downloadable computer software for identification of and intervention with at-risk individuals in the field of health and wellness; downloadable computer software for use in identifying health stability, improvement or decline; downloadable computer software featuring predictive analytical software with the capacity to identify decline; downloadable computer software for monitoring gait and fall risk; downloadable computer software featuring predictive analytical software to quantify increases in user's fall risk associated with walking patterns; tablet computers; computers; (Based on Intent to Use) Downloadable computer software for motion assessment of daily activity; downloadable computer software for tracking, analyzing and assessing daily activity; downloadable computer software for monitoring, collecting and assessing vitals; downloadable computer software for processing and analyzing biological and physiological signals for indication of user condition, functional capacity, including changes in such parameters of health stability, improvement, or decline; downloadable computer software for setting and monitoring progress toward meeting individual goals in the management of physical function maintenance; downloadable computer software featuring predictive analytical software to notify users of impeding adverse events; downloadable  computer software for emergency monitoring; downloadable computer software for electronic storage of medical and person contact information for use in the event of a medical emergency; downloadable interactive computer software for assistance in the field of health care and disease prevention; downloadable computer software for allowing users to access physicians, health care professionals, and healthcare services provides via video for the purposes of obtaining medical and health care advice; downloadable computer software for collecting and transmitting patient information in the field of health care and disease prevention

 

International Class 042:  (Based on Use in Commerce) Software as a service (SAAS) services featuring software for motion assessment of daily activity; software as a service (SAAS) services featuring software for tracking, analyzing and assessing daily activity; software as a service (SAAS) services featuring software for tracking medication compliance; software as a service (SAAS) services featuring software for use in notifying users based on performance; software as a service (SAAS) services featuring software for monitoring, collecting and assessing vitals; software as a service (SAAS) services featuring software to process and analyze biological and physiological signals for indication of user condition, functional capacity, including changes in such parameters of health stability, improvement, or decline; software as a service (SAAS) services featuring software related to health status and disease prevention, namely, software for {identify the specific function of the software}; software as a service (SAAS) services featuring software for identification of and intervention with at-risk individuals in the field of health and wellness; software as a service (SAAS) services featuring software for use in identifying health stability, improvement or decline; software as a service (SAAS) services featuring software for the administration of disease specific plans of care; software as a service (SAAS) services featuring software for setting and monitoring progress toward meeting individual goals in the management of physical function maintenance; software as a service (SAAS) services featuring software for use in setting, tracking, and monitoring treatment plans and individual goals to manage and improve personal health and disease status; software as a service (SAAS) services featuring software for creating and sharing personalized plans of care based on users disease profile; software as a service (SAAS) services featuring software for collection, analysis and reporting of personal health and wellness data; Software as a service (SAAS) services featuring an interactive conversational software that enables users to access, enter, track, monitor and generate health and medical information and reports; software as a service (SAAS) services featuring software for emergency monitoring; software as a service (SAAS) services featuring software for electronic storage of medical and person contact information for use in the event of a medical emergency; software as a service (SAAS) services featuring interactive software for assistance in the field of health care and disease prevention; software as a service (SAAS) services featuring software for accessing physicians, medical specialists, nurses, healthcare professionals and healthcare service providers for the purposes of obtaining medical and healthcare services, counseling, advice and pharmaceutical prescriptions; software as a service (SAAS) services featuring software for remote patient monitoring; software as a service (SAAS) services featuring software for remote patient monitoring for collecting and transmitting patient information in the field of health care and disease prevention; providing temporary use of on-line non-downloadable software for motion assessment of clinical movements; providing temporary use of on-line non-downloadable software for tracking, analyzing and assessing clinical movements; providing temporary use of on-line non-downloadable software for use in notifying users based on performance; providing temporary use of on-line non-downloadable software for identification of and intervention with at-risk individuals in the field of health and wellness; providing temporary use of on-line non-downloadable software for use in identifying health stability, improvement or decline; providing temporary use of on-line non-downloadable software featuring predictive analytical software with the capacity to identify decline; providing temporary use of on-line non-downloadable software for monitoring gait and fall risk; providing temporary use of on-line non-downloadable software featuring predictive analytical software to quantify increases in user's fall risk associated with walking patterns (Based on Intent to Use) Software as a service (SAAS) services featuring software for managing and tracking nutritional plans; software as a service (SAAS) services featuring software for disease profiling, managing and monitoring individual health status; software as a service (SAAS) services featuring predictive analytical software with the capacity to identify disease progression; software as a service (SAAS) services featuring predictive analytical software to notify users of impeding adverse events; software as a service (SAAS) services featuring voice recognition software; software as a service (SAAS) services featuring speech processing software; providing temporary use of on-line non-downloadable software for motion assessment of daily activity; providing temporary use of on-line non-downloadable software for tracking, analyzing and assessing daily activity; providing temporary use of on-line non-downloadable software for monitoring, collecting and assessing vitals; providing temporary use of on-line non-downloadable software for processing and analyzing biological and physiological signals for indication of user condition, functional capacity, including changes in such parameters of health stability, improvement, or decline; providing temporary use of on-line non-downloadable computer software for setting and monitoring progress toward meeting individual goals in the management of physical function maintenance; providing temporary use of on-line non-downloadable computer software featuring predictive analytical software to notify users of impeding adverse events; providing temporary use of on-line non-downloadable computer software for emergency monitoring; providing temporary use of on-line non-downloadable computer software for electronic storage of medical and person contact information for use in the event of a medical emergency; providing temporary use of on-line non-downloadable interactive computer software for assistance in the field of health care and disease prevention; providing temporary use of on-line non-downloadable computer software for allowing users to access physicians, health care professionals, and healthcare services provides via video for the purposes of obtaining medical and health care advice; providing temporary use of on-line non-downloadable computer software for collecting and transmitting patient information in the field of health care and disease prevention

 

International Class 044:  (Based on Use in Commerce) Telehealth and telemedicine services; healthcare services, namely, telehealth and remote patient monitoring; in-home telehealth patient monitoring services; integrated telehealth management; remote patient monitoring services, namely, medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of medical devices with automated alert and monitoring capacity; (Based on Intent to Use) Remote monitoring of data indicative of the health or condition of an individual for medical diagnosis and treatment purposes

 

Applicant’s goods and 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 services or add goods and 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 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 services will further limit scope, and once goods and services are deleted, they are not permitted to be reinserted.  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.

 

Disclaimer Requirement

 

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 “VIRTUAL” because it is not inherently distinctive.  This unregistrable term at best is merely descriptive of a characteristic 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 merriam-webster.com shows that “VIRTUAL” means “being on or simulated on a computer or computer network” and, similarly, the attached evidence from lexico.com shows that “VIRTUAL” means “Carried out, accessed, or stored by means of a computer, especially over a network”.  Therefore, the wording “VIRTUAL” merely describes the characteristic of applicant’s goods and services being access by means of a computer.

 

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

 

No claim is made to the exclusive right to use “VIRTUAL” 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 requirement in this Office action.  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 requirements 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.    

 

 

Snabb, Sandra

/Sandra Snabb/

Examining Attorney

Law Office 120

571-272-4633

Sandra.Snabb@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 November 22, 2019 for

U.S. Trademark Application Serial No. 88587224

 

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. 

 

 

Snabb, Sandra

/Sandra Snabb/

Examining Attorney

Law Office 120

571-272-4633

Sandra.Snabb@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 November 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.”