Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

 

Issue date:  November 18, 2019

 

The USPTO must receive applicant’s response to this letter within six months of the issue date above 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. 

 

 

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.  

 

 

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).

 

 

SUMMARY OF ISSUES:

• Disclaimer Required
• Indefinite Identification of Goods & Services
• Multiple-Class Application Requirements

 

 

DISCLAIMER REQUIRED

Applicant must disclaim the wording all the wording in the mark because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services, and thus is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 

The attached evidence from The Free Dictionary website shows this wording means “the services rendered by members of the health professions for the benefit of a patient.”  Applicant intends to use the applied-for mark with goods and services that relate to or entail services rendered by members of the health professions for the benefit of a patient.  Therefore, the wording merely describes a characteristic or feature of applicant’s goods and services.

 

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “Care” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

 

 

INDEFINITE IDENTIFICATION OF GOODS & SERVICES

The identification of goods and services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend the identification to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.  Further, 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.

 

The services identified as “providing physician directories and hospital directories” in International Class 35 are indefinite.  If applicant intends to use the applied-for mark with on-line business directories featuring physicians and hospitals, such services are properly classified in International Class 35 and applicant may so specify.  If, however, applicant intends to use the applied-for mark with directories of physicians and hospitals, such goods are properly classified in International Class 16 and applicant may so specify.

 

The services identified as “processing of online orders of prescriptions” in International Class 35 are indefinite.  If these services are in the nature of the electronic processing of online orders of prescriptions for others or the administrative processing of online orders of prescriptions, such services are properly classified in International Class 35 and applicant may so specify.

 

For purposes of clarity, applicant should specify that its “supply prescription drugs to telemedicine participants” in International Class 35 are in the nature of supplying prescription drugs to telemedicine participants.

 

The services identified as “Enabling telecommunications between patients and healthcare providers via global and local computer networks in connection with providing telehealth, telemedicine, remote care, and virtual health care services” in International Class 38 are indefinite because the nature of the services applicant is providing and the manner in which they are provided is not clear.  If applicant intends to use the applied for mark with the electronic transmission of communications between patients and healthcare providers via global and local computer networks in connection with providing telehealth, telemedicine, remote care, and virtual health care services, such services are properly classified in International Class 38 and applicant may so specify.

 

Applicant must specify that the non-downloadable software it intends to provide in the services identified as “providing non-downloadable software for use in connection with providing medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services” is on-line non-downloadable software.

 

The services identified as “providing telehealth, telemedicine, remote care, and virtual health care services by providing real-time access to medical professionals” in International Class 44 are indefinite.  As identified it is not clear if these services are in the nature of medical and healthcare services that are provided via the Internet, and classified in International Class 44, or if they are in the nature of providing access to telecommunications network, which are services properly classified in International Class 38.  If applicant’s services are in the nature of providing real-time telehealth, telemedicine, remote care, and virtual healthcare consultation services from a remote location, such services are properly classified in International Class 44 and applicant may so specify and must specify the means by which the services are provided.

 

The services identified as “providing medical services, telehealth, remote care and virtual health services via web site and mobile app featuring health and medical information” in International Class 44 are indefinite.  If the “web site” component of these services are in the nature of providing a website featuring technology that enables internet users to access health and medical information, such services are properly classified in International Class 42 and applicant may so specify.  If the “mobile app” component of these services are in the nature of downloadable computer application software for mobile phones, namely, software for providing health and medical information, such goods are properly classified in International Class 9 and applicant may so specify.

 

The services identified as “providing users with real-time and on-demand access to health care professionals via computer, telephone, and other electronic means” in International Class 44 are indefinite.  If these services are in the nature of providing real-time and on-demand access to Internet or telecommunication networks to facilitate communications between users and healthcare professionals, such services are properly classified in International Class 38 and applicant may so specify.

 

The services identified as “providing chronic care management services” are indefinite.  As identified, these services may include the management of health care clinics for treatment of chronic health issues of others, such services are properly classified in International Class 35 and applicant may so specify.  Additionally, the services may include chronic care management in the nature of managed health care services, which are services properly classified in International Class 44 and applicant may so specify.

 

The services identified as “providing in-home medical care laboratory testing and diagnostic services” are indefinite.  If these services are in the nature of in-home medical diagnostic testing services, such services are properly classified in International Class 44 and applicant may so specify.

 

Applicant may adopt the following wording, if accurate:

 

International Class 9 – Downloadable computer software for providing medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; downloadable mobile application software for providing medical and healthcare services; downloadable computer software for messaging and chat for medical and healthcare purposes; downloadable mobile application software for use in locating doctors, physician's assistants, nurses, nutritionists, healthcare professionals and healthcare service providers; downloadable computer software for use in scheduling of medical and healthcare services; downloadable software in the nature of a mobile application for allowing doctors, medical specialists, nurses, nutritionists, healthcare professionals and healthcare service providers to be dispatched to consumers; downloadable software for use in providing medical diagnosis, consultation, treatment recommendations, and medical care; downloadable mobile application for enabling remote diagnosis and consultation with physicians; downloadable computer application software for mobile phones, namely, software for providing health and medical information

 

International Class 16 – Directories of physicians and hospitals

 

International Class 35 – Appointment scheduling services; physician referral services; hospital referral services; scheduling medical appointments for others; on-line business directories featuring physicians and hospitals; electronic processing of online orders of prescriptions for others; supplying prescription drugs to telemedicine participants; management of health care clinics for treatment of chronic health issues of others

 

International Class 38 – Electronic transmission of communications between patients and healthcare providers via global and local computer networks in connection with providing telehealth, telemedicine, remote care, and virtual health care services; providing real-time and on-demand access to Internet or telecommunication networks to facilitate communications between users and healthcare professionals

 

International Class 42 – Providing on-line non-downloadable software for use in connection with providing medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; providing temporary use of non-downloadable software for providing medical referrals; software as a service (SAAS) services featuring software for providing medicine, medical care, healthcare, telehealth, telemedicine, remote care, and virtual health care services; software as a service (SAAS) services featuring software for scheduling medical and healthcare services; software as a service (SAAS) services featuring software for providing medical diagnosis, consultation, treatment recommendations, and medical care; providing temporary use of on-line non-downloadable software for remote medical consultation in the field of telemedicine; providing temporary use of on-line non-downloadable software for remote diagnosis and consultation with doctors, medical specialists, nurses, nutritionists and healthcare professionals; providing temporary use of non-downloadable software for streaming medical and healthcare services to others; platform as a service (PAAS) featuring computer software platforms for online rendering of medical and healthcare services; providing a website featuring technology that enables internet users to access health and medical information

 

International Class 44 – Telemedicine services; medical, telehealth, remote care and virtual health care services, namely, providing medical services and consultation over the telephone and via the Internet through the use of personal computers, smartphones, tablets, and mobile wireless devices via video, email, or a global computer network; providing real-time telehealth, telemedicine, remote care, and virtual healthcare consultation services from a remote location via ______ {Applicant must specify means, e.g., network communication systems, telecommunication networks, telephone, wireless devices, etc.}; providing telemedicine and virtual health care services for the diagnosis, consultation, and treatment of cardiovascular, cardiopulmonary, dermatological, endocrine, gastrointestinal, hematological, hepatological, metabolic, musculoskeletal, neurological, ophthalmic, otolaryngological, reproductive, and respiratory conditions; providing medical diagnosis services in the field of ______ {Applicant must indicate condition or disease, e.g., speech disorders, breast cancer, infertility, etc.}; providing chronic care management services in the nature of managed health care services; physician services; medical services in the fields of primary care, internal medicine, and geriatrics; medical counseling; consulting services in the field of medical care; health care services, namely, disease management programs; medical care services, namely, primary care medical services, family medicine, and specialized medical care services in the management of complex and chronic diseases, namely, diabetes, high blood pressure, high cholesterol, thyroid disorders, heart disease, asthma, and arthritis; osteopathic medical services; providing preventative health information; ______ {Applicant must further specify the nature of the “counseling,” i.e. health, medical, etc.} counseling services in the field of disease management; medical services in the nature of chronic pain management; medical services in the fields of women's and men's health; medical services in the fields of infant, youth and adolescent health; providing in-home medical diagnostic testing services; preparation of prescriptions by pharmacists; prescription refill reminder services {Amended for purposes of clarity}; health care services in preparation for traveling including immunization services; medical services, namely, diagnosis and treatment of sports injuries; medical services, namely, diagnosis and treatment of skin disorders; chiropractic services; medical and pharmaceutical consultation; medical diagnostic testing, monitoring, and reporting services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories; physical therapy and rehabilitation

 

Applicant’s goods and/or 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/or services or add goods and/or 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/or 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/or services will further limit scope, and once goods and/or 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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least six classes; however, applicant submitted fees sufficient for only five classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

 

ADVISORY – RESPONSE ASSISTANCE

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 refusal(s) and/or requirement(s) 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. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@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 18, 2019 for

U.S. Trademark Application Serial No. 88627821

 

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. 

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@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 18, 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.”