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 29, 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

 

IDENTIFICATION OF GOODS AND SERVICES

 

Please note – the following requirement only applies to the following goods and services:  Class 9:  Computer software and hardware for use in the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Wearable non-invasive medical monitoring device”, Class 41:  Developing and distributing educational program materials in connection with the aforementioned services”, and “Class 44:  Medical data services in connection with the aforementioned services” and does not bar registration of the remainder of goods and services in International Classes 9, 10, 35, 41, 42, and 44. 

 

The identification for “Computer software and hardware” in International Class 9 is indefinite and too broad and must be clarified to specify whether the 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 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d). 

 

The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §1401.03(d).  Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods.  See TMEP §1904.02(c)(ii).

 

Further, the wording “wearable non-invasive medical monitoring device” in the identification of goods for International Class 9 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass wearable monitors used to measure biometric data for medical use in International Class 10 and wearable computer hardware and recorded software sold as a unit for use with medical patient monitoring equipment, for receiving, processing, transmitting and displaying data in International Class 9.

 

The wording “Developing and distributing educational program materials in connection with the aforementioned services”, and “Medical data services”  in the identification of services is indefinite and must be clarified because applicant must amend this wording to specify the common commercial or generic name of the services.  See 37 C.F.R. §2.32(a)(6); 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:  Recorded computer software and hardware for use in the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data sold as a unit; Wearable non-invasive medical monitoring device in the nature of computer hardware and recorded software sold as a unit for use with medical patient monitoring equipment, for receiving, processing, transmitting and displaying data; Wearable activity trackers

 

Class 10:  Medical device, namely, a device for measuring and monitoring glucose levels; Medical device, namely, a device for measuring and monitoring diabetes; Medical device, namely, a device for measuring and monitoring a metabolic syndrome; Medical devices, namely, medical sensors used to continuously monitor the concentration of glucose in the human body and accessories therefor, namely, receivers and sensor housings; Medical device, namely, a device for measuring and monitoring congestive heart failure; Medical device, namely, a device for measuring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring chronic obstructive pulmonary disease; Medical device, namely, a device for monitoring and monitoring asthma; Wearable non-invasive medical monitoring device in the nature of wearable monitors used to measure biometric data for medical use

 

Class 35 is definite as filed.

 

Class 41:  Educational services, namely, providing coaching programs and training in the field of management and measurement of glucose levels, and the diagnosis, management and treatment of diabetes; Educational services, namely, providing coaching programs and training in connection with the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Developing and distributing educational program course materials in connection with the aforementioned services

 

Class 42 is definite as filed.

 

Class 44:  Remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical conditions and treatment purposes; Medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable medical devices with automated alert and monitoring capacity; Medical services, namely, providing medical information, medical data, medical counseling, medical patient and physician support, and medical consulting services in the field of blood glucose level and diabetes monitoring and treatment systems; Medical data services in the nature of maintaining files and records concerning the medical condition of individuals in connection with the aforementioned services

 

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 goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

RESPONSE GUIDELINES & ABANDONMENT ADVISORY

 

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.

 

If applicant does not timely respond to this Office action, the following goods and services will be deleted from the application: 

 

Class 9:  Computer software and hardware for use in the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data; Wearable non-invasive medical monitoring device

 

Class 41:  Developing and distributing educational program materials in connection with the aforementioned services

 

Class 44:  Medical data services in connection with the aforementioned services

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a). 

 

In such case, the application will then proceed with the following goods and services only: 

 

Class 9:  Wearable activity trackers

 

Class 10:  Medical device, namely, a device for measuring and monitoring glucose levels; Medical device, namely, a device for measuring and monitoring diabetes; Medical device, namely, a device for measuring and monitoring a metabolic syndrome; Medical devices, namely, medical sensors used to continuously monitor the concentration of glucose in the human body and accessories therefor, namely, receivers and sensor housings; Medical device, namely, a device for measuring and monitoring congestive heart failure; Medical device, namely, a device for measuring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring hydration levels; Medical device, namely, a device for monitoring and monitoring chronic obstructive pulmonary disease; Medical device, namely, a device for monitoring and monitoring asthma

 

Class 35:  Data compiling, analyzing and processing services in the field of healthcare, and medical insurance; Database management in the field of healthcare

 

Class 41:  Educational services, namely, providing coaching programs and training in the field of management and measurement of glucose levels, and the diagnosis, management and treatment of diabetes; Educational services, namely, providing coaching programs and training in connection with the acquisition, capture, processing, presentation, transmission and storage of medical and physiological data;

 

Class 42:  Providing an interactive web site featuring technology that enables users to enter, access, track, monitor and generate health and medical information and reports

 

Class 44:  Remote monitoring of data indicative of the health or condition of an individual or group of individuals for medical conditions and treatment purposes; Medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of wearable medical devices with automated alert and monitoring capacity; Medical services, namely, providing medical information, medical data, medical counseling, medical patient and physician support, and medical consulting services in the field of blood glucose level and diabetes monitoring and treatment systems

 

See TMEP §718.02(a). 

ASSISTANCE 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

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.    

 

 

/Seth Willig Chadab/

Seth Chadab

Trademark Examining Attorney

Law Office 104

(571) 270-1875

seth.chadab@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 29, 2019 for

U.S. Trademark Application Serial No. 88591297

 

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. 

 

 

/Seth Willig Chadab/

Seth Chadab

Trademark Examining Attorney

Law Office 104

(571) 270-1875

seth.chadab@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 29, 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.”