To: | 1Life Healthcare, Inc. (tm@potomaclaw.com) |
Subject: | U.S. Trademark Application Serial No. 88641341 - ONE MEDICAL KIDS - 1738-1 |
Sent: | January 13, 2020 02:49:31 PM |
Sent As: | ecom112@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88641341
Mark: ONE MEDICAL KIDS
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Correspondence Address: 1300 PENNSYLVANIA AVENUE, NW, SUITE 700
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Applicant: 1Life Healthcare, Inc.
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Reference/Docket No. 1738-1
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.
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).
IDENTIFICATION AND CLASSIFICATION OF SERVICES
Applicant may adopt the following identification, if accurate:
International Class 042: Providing a web site for medical patients featuring technology that allows users to access a patient's personal medical history records
International Class 044: Medical care services, namely, pediatric medical services, primary care medical services, family medicine, pediatrics, adolescent medicine, and
specialized medical care services in the management of complex and chronic diseases, namely, asthma, respiratory allergies, failure to thrive, otitis media, constipation, gastroesophageal reflux
disease (GERD), heart murmurs, and seizures; osteopathic medical services; integrative medical services; pediatric nursing services; providing preventative health information; counseling services in
the field of disease management; mental health services featuring outpatient medical management of attention deficit disorder (ADD) and attention-deficit/hyperactivity disorder (ADHD), depression and
anxiety; psychological assessment services; medical screening services in the field of autism, developmental delay, and learning disorders; medical services in the fields of women’s health and birth control counseling; lactation consulting services; counseling services in the fields of health, nutrition, weight management, and lifestyle wellness; medical
services, namely, diagnosis and treatment of skin disorders; medical diagnostic testing, monitoring, and reporting services; maintaining personal medical history records and files; providing a web
site featuring information on health and wellness; providing a web site for medical patients that allows access to a patient's personal medical history records
{misclassified}
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
(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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies services that are classified in at least two (2) classes; however, applicant submitted a fee sufficient for only one (1) class. 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.
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.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “MEDICAL” and “KIDS” because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of a characteristic, function, feature, purpose, or use of applicant’s 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 wording “MEDICAL” refers to “Relating to the science of medicine, or to the treatment of illness and injuries” and is generic and descriptive of applicant’s various medical services and the term “KIDS” refers to “A child or young person” and merely describes the intended users of the services. As such, these two terms are merely descriptive in relations to the applied-for services and must be disclaimed for the record.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MEDICAL” and “KIDS” 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.
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.
/Hai-Ly Lam/
Trademark Examining Attorney
United States Patent & Trademark Office
Law Office 112
Tel. 571-272-3354
hai.lam@uspto.gov
RESPONSE GUIDANCE