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:  January 07, 2020

 

 

Phone/Email Response Suggested:

 

Applicant is encouraged to call or email the assigned trademark examining attorney below to resolve the issues in this Office action.  Although the USPTO will not accept an email as a response to an Office action, an applicant can communicate by phone or email to agree to a proposed amendment to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

Introduction:

 

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/or Services – Amendment Required; and
• Disclaimer Required.

 

Identification of Goods and/or Services – Amendment Required:

 

The wording listed below from the identification of goods and/or services is indefinite and must be clarified for the reasons stated.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.

 

International Class 009:

 

The identification for software in International Class 009 is indefinite and too broad and must be clarified to specify (1) the purpose or function of the software and its content or field of use, if content- or field- specific; and (2) 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 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).   

 

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). Applicant may adopt the wording below, if accurate.

 

International Class 016:

 

The identification for “publications in the field of healthcare and hospitals” in International Class 016 is indefinite and too broad and must be clarified because the word does not make clear whether the “publications” are products or services and thus could identify goods and services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.03(e), 1402.11(a)(x).  Specifically, applicant must clarify whether “publications” identifies print publications in International Class 16, electronic publications in International Class 9 or 41, and/or online/Internet publications in International Class 41, and amend the identification to provide the additional information specified below for such goods and services. 

 

If “publications” identifies print publications, applicant must indicate both the specific physical nature (e.g., pamphlets, brochures, newsletters, journals, or magazines) and the literary subject matter of the publications.  TMEP §§1402.03(e), 1402.07(b).  For example, “magazines in the field of medicine,” “books and pamphlets in the field of financial classification of companies and securities,” and “newsletters about television programs,” are acceptable in International Class 16.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of publications; e.g., “general feature magazines” are acceptable in International Class 16.  TMEP §1402.03(e). 

 

If “publications” identifies electronic or online/Internet publications, applicant must specify (1) the common name of the type of publications, such as brochures, newsletters, or magazines; and (2) the subject matter of the publications.  See id.  If the subject matter is not a significant aspect of the publications, the identification may specify the general character or type of the publications (e.g., downloadable electronic publications in the nature of general feature magazines are acceptable in International Class 9).  Id.  Additionally, for electronic publications, applicant must clarify whether the electronic publications are downloadable or recorded on computer media, such as CDs or DVDs, in International Class 9; or are online non-downloadable publications in International Class 41.  See TMEP §§1402.07(b), 1402.11(a)(x). 

 

The following are examples of acceptable formats for identifications for electronic or online/Internet publications (additional information must be added in each identification below, as indicated in the curly brackets): 

 

Downloadable electronic publications in the nature of {indicate specific nature of publications, e.g., newsletters, journals, books} in the field of {indicate subject matter} in International Class 9;

 

Electronic publications, namely, {indicate specific type of publication} featuring {indicate subject matter} recorded on computer media in International Class 9; or

 

Non-downloadable electronic publications in the nature of {indicate specific nature of publications} in the field of {indicate subject matter} in International Class 41. 

 

Applicant may adopt wording below, if accurate.

 

To address the above issues, applicant may adopt any or all of the following identifications, with the necessary information added, if accurate (proposed changes shown in bold typeface):

 

International Class 009: Downloadable computer software for management, administration, training and analysis of, for, and in the field of healthcare and hospitals; Electronic downloadable publication, namely, newsletters in the field of healthcare and hospitals

 

International Class 016: Printed publications, namely, magazines, newsletters, scholarly articles, and journals in the field of healthcare and hospitals

 

International Class 035: Association services and community outreach services, namely, advertising and promoting public awareness of issues in the fields of healthcare and hospitals and advertising and promoting research and education in the fields of healthcare and hospitals; promoting the interests of healthcare providers and healthcare service providers and fostering the operations of hospitals, healthcare providers and healthcare service providers through a variety of services, research and education

 

International Class 041: Educational services, namely, conducting seminars, courses, conferences, scientific symposiums, lectures, and workshops relating to healthcare and hospitals; providing online non-downloadable publications, namely, magazines, newsletters, scholarly articles and journals in the fields of healthcare and hospitals; production of radio and television programs; production of radio and television commercials

 

International Class 042: Testing, analysis and evaluation of the knowledge and skill of others for the purpose of certification in the field of healthcare and hospitals; Providing temporary use of on-line non-downloadable computer software for management, administration, training and analysis of, for, and in the field of healthcare and hospitals

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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 Required:

 

Applicant must provide a disclaimer of the unregistrable parts 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 “AMERICAN HOSPITAL ASSOCIATION” because it is not inherently distinctive. The wording “AMERICAN” is at best primarily geographically descriptive of the origin of applicant’s goods and/or services.  See 15 U.S.C. §§1052(e)(2); In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).

 

The attached dictionary evidence from The American Heritage Dictionary of the English Language shows that “AMERICAN” means “[o]f or relating to the United States of America or its people, language, or culture” and the attached evidence from Merriam-Webster's Geographical Dictionary shows that the United States of America is a generally known geographic place or location.  See TMEP §§1210.02 et seq. See attached Internet evidence. The goods and/or services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s address.  See TMEP §1210.03.  Because the goods and/or services originate in this place or location, a public association of the goods and/or services with the place is presumed.  See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04. 

 

In addition, the terms “HOSPITAL” and “ASSOCIATION” are used in applicant’s identification of goods and/or services: “Computer software for management, administration, training and analysis of, for, and in the field of healthcare and hospitals; Publications in the field of healthcare and hospitals; Association services and community outreach services, namely, advertising and promoting public awareness of issues in the fields of healthcare and hospitals and advertising and promoting research and education in the fields of healthcare and hospitals; promoting the interests of healthcare providers and healthcare service providers and fostering the operations of hospitals, healthcare providers and healthcare service providers through a variety of services, research and education” in International Class 035, “Educational services, namely, conducting seminars, courses, conferences, scientific symposiums, lectures, and workshops relating to healthcare and hospitals; providing online non-downloadable publications, namely, magazines, newsletters, scholarly articles and journals in the fields of healthcare and hospitals; production of radio and television programs; production of radio and television commercials” in International Class 041, and “Testing, analysis and evaluation of the knowledge and skill of others for the purpose of certification in the field of healthcare and hospitals” in International Class 042” (emphasis added). See application of record. By using these terms in the identification of goods and/or services, the applicant has recognized that these terms are the common commercial or generic name of these services generally understood by the average consumers in the United States. See TMEP §1402.01.

 

Therefore, taken together, “AMERICAN HOSPITAL ASSOCIATION” would be perceived as an ingredient, quality, characteristic, function, feature, purpose, or use> of an applicant’s goods and/or services, i.e., applicant’s goods and association services of or relating to health in the United States of America.

 

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

 

No claim is made to the exclusive right to use “AMERICAN HOSPITAL ASSOCIATION” 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 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.    

 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@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 January 07, 2020 for

U.S. Trademark Application Serial No. 88629018

 

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. 

 

 

/Anna Oakes/

Anna J. Oakes

Examining Attorney

Law Office 103

(571) 272-2569

aoakes1@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 January 07, 2020, 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.”