To: | Tula Health, Inc. (devin@milleripl.com) |
Subject: | U.S. Trademark Application Serial No. 88591646 - TULA - Tula.403 |
Sent: | November 27, 2019 12:20:02 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88591646
Mark: TULA
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Correspondence Address:
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Applicant: Tula Health, Inc.
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Reference/Docket No. Tula.403
Correspondence Email Address: |
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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 27, 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
SUMMARY OF ISSUES:
· Prior-Filed Trademark Application
· Disclaimer Required
· Identification of Goods and Services
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.
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 “HEALTH” because it is not inherently distinctive. This unregistrable term at best are merely descriptive of a 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 the word “HEALTH” means “the overall condition of an organism at a given time.” The applied-for goods include medical devices and devices for recording medical information and its services are in the field of healthcare and includes medical services. As such, the word “HEALTH” merely describes that the applied-for goods and services are for improving and monitoring the health of a person. Consequently, this wording describes the purpose or use for the 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 “HEALTH” 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.
IDENTIFICATION OF GOODS AND SERVICES
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).
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: Data compiling, analyzing and processing services in the field of healthcare, and medical insurance; Database management, namely, business data compiling and analyzing 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; 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.
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