To: | TheMedicalMemory, LLC (pctrademarks@perkinscoie.com) |
Subject: | U.S. Trademark Application Serial No. 88639034 - OBEX - 113798-4000 |
Sent: | January 13, 2020 09:34:44 AM |
Sent As: | ecom104@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88639034
Mark: OBEX
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Correspondence Address:
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Applicant: TheMedicalMemory, LLC
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Reference/Docket No. 113798-4000
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: January 13, 2020
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.
Summary of Issues:
Applicant is encouraged to telephone or e-mail the assigned trademark examining attorney to resolve the issues raised in this Office action by examiner’s amendment. Although a formal response may never be submitted by e-mail, an applicant may communicate informally by phone or e-mail with the trademark examining attorney to agree to a proposed amendment to the application that will immediately place the application in condition for publication for opposition, issuance of a registration, or suspension. See TMEP §707.
Search Results:
The Office records have been searched and there are no similar registered or pending marks that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Informal Issues:
Identification of Goods and Services – Clarification Required:
Please note: In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods and services below in bold font. Applicant may adopt the following identification of goods and services, if accurate:
Class 09: “Downloadable computer software for video recording; Downloadable computer software featuring technology that records, stores, searches, analyzes and allows secure access to video and media recordings of doctor-patient interactions and doctor-patient visits; Downloadable computer software featuring technology that facilities electronic communication between doctors and patients related to doctor-patient visits, doctor-patient interactions, and video recordings of the doctor-patient visits and doctor-patient interactions”
Class 42: “Providing a website featuring technology that enables users to securely access video recordings of their doctor-patient visits; Providing temporary use of on-line non-downloadable computer software for video recording; Providing temporary use of on-line non-downloadable computer software featuring technology that records, stores, searches, analyzes, and allows secure access to video and media recordings of doctor-patient interactions and doctor-patient visits; Providing temporary use of on-line non-downloadable computer software featuring technology that facilities electronic communication between doctors and patients related to doctor-patient visits, doctor-patient interactions, and video recordings of the doctor-patient visits and doctor-patient interactions”
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).
Partial Abandonment Advisory:
If applicant does not respond to this Office action within the six-month period for response, the following goods and services in International Class 09 and 42 will be deleted from the application: “Computer software for video recording; computer software featuring technology that records, stores, searches, analyzes and allows secure access to video and media recordings of doctor-patient interactions and doctor-patient visits; computer software featuring technology that facilities electronic communication between doctors and patients related to doctor-patient visits, doctor-patient interactions, and video recordings of the doctor-patient visits and doctor-patient interactions” and “non-downloadable computer software for video recording; non-downloadable computer software featuring technology that records, stores, searches, analyzes, and allows secure access to video and media recordings of doctor-patient interactions and doctor-patient visits; non-downloadable computer software featuring technology that facilities electronic communication between doctors and patients related to doctor-patient visits, doctor-patient interactions, and video recordings of the doctor-patient visits and doctor-patient interactions.” The application will then proceed with the following services in International Class 42 only: “Providing a website featuring technology that enables users to securely access video recordings of their doctor-patient visits.” See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
Responding to Office Action:
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant has a question or amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to email or telephone the examining attorney to expedite the processing of the application.
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.
/Dominic R. Fathy/
Trademark Examining Attorney
Law Office 104
571-272-8801
dominic.fathy@uspto.gov
RESPONSE GUIDANCE