To: | Life Image Inc. (dpierce@lifeimage.com) |
Subject: | U.S. Trademark Application Serial No. 88594366 - REAL WORLD IMAGING DATA - Rl Wrld Im D |
Sent: | December 02, 2019 02:45:49 PM |
Sent As: | ecom103@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. 88594366
Mark: REAL WORLD IMAGING DATA
|
|
Correspondence Address:
|
|
Applicant: Life Image Inc.
|
|
Reference/Docket No. Rl Wrld Im D
Correspondence Email Address: |
|
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: December 02, 2019
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:
· Advisory – Disclaimer of Generic Terms Required if Amending to Supplemental Register
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Applicant’s mark is REAL WORLD IMAGING DATA for use with “Providing medical information, namely, medical imaging and its related diagnostic, treatment, pathology, and other associated information for use as part of a healthcare organization's real world evidence, such as those conducted by life sciences for therapy or device development, for researchers for clinical researchers, or for use in artificial intelligence software creation, improvement, validation, or maintenance efforts” in International Class 42.
The attached evidence shows that the wording REAL WORLD IMAGING DATA is commonly used to identify a type of medical data obtained from actual patients or clinical trial participants. See attached http://thepublicationplan.com/2017/05/10/the-5th-annual-real-world-evidence-europe-summit-2017-day-1-meeting-report/, http://link.springer.com/chapter/10.1007/978-3-642-36678-9_9, and http://books.google.com/books?id=BS9QDAAAQBAJ&pg=PA131&lpg=PA131&dq=%22real+world+imaging+data%22&source=bl&ots=AaMCJqTVWN&sig=ACfU3U1sujWO-fZGb6L6Kw2oBFIES4eldg&hl=en&sa=X&ved=2ahUKEwjLh4HstJfmAhUPheAKHV8NASsQ6AEwCXoECAoQAQ#v=onepage&q=%22real%20world%20imaging%20data%22&f=false. The imaging information described in the identification is exactly such imaging data. Thus, the applied-for mark immediately describes characteristics of the information services.
Because applicant’s mark is merely descriptive of the services, registration is refused under Section 2(e)(1) of the Trademark Act.
Response to Section 2(e)(1) Refusal
Advisory – Supplemental Register Not Available Until Filing of Acceptable Amendment to Allege Use
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
(1) STATEMENTS: The following statements: “The applicant is the owner of the mark sought to be registered.” and “The applicant is using the mark in commerce on or in connection with all the goods/services in the application or notice of allowance, or as subsequently modified.”
(2) DATES OF FIRST USE: The date of first use of the mark anywhereon or in connection with the goods and/or services, and the date of first use of the mark in commerceas a trademark or service mark. See more information about dates of use.
(3) GOODS AND/OR SERVICES: The goods and/or services specified in the application.
(4) SPECIMEN: A specimen showing how applicant uses the mark in commerce for each class of goods and/or services for which use is being asserted. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. See more information about specimens.
(5) FEE(S): A filing fee for each international class of goods and/or services for which use is being asserted (find current fee information).
(6) VERIFICATION: Verification of (1) through (4) above in an affidavit or signed declaration under 37 C.F.R. §2.20. See more information about verification.
See 37 C.F.R. §2.76(b); TMEP §1104.08.
An amendment to allege use may be filed online via the Trademark Electronic Application System (TEAS). Filing an amendment to allege use is not considered a response to an Office action. 37 C.F.R. §2.76(h); TMEP §1104. An applicant must file a separate response to any outstanding Office action. TMEP §1104; see 37 C.F.R. §2.76(h).
Advisory – Disclaimer of Generic Terms Required if Amending to Supplemental Register
Applicant may submit a disclaimer in the following format:
No claim is made to the exclusive right to use “IMAGING DATA” apart from the mark as shown.
TMEP §1213.08(a)(i).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
OVERBROAD AND INDEFINITE IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED
Suggested Amendments
Applicant may substitute the following wording, if accurate:
Class 42 –
Providing medical research information for use as part of a healthcare organization’s real world evidence, such as those conducted by life sciences for therapy or devices development, for researchers, for clinical researchers, or for use in artificial intelligence software creation, improvement, validation, or maintenance efforts
Class 44 –
Medical imaging services and providing information on medical imaging for diagnostic, treatment, pathology
Amendment Guidelines
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.
REQUIREMENT – SPECIFY NUMBER OF CLASSES FOR WHICH REGISTRATION IS SOUGHT
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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).
(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 class 2; and applicant needs a specimen for class 44. See more information about specimens.
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.
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.
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.
/Jacob Vigil/
Trademark Examining Attorney
Law Office 103
571-270-3586
jacob.vigil@uspto.gov
RESPONSE GUIDANCE