To: | National Board of Medical Examiners (bischoff@ballardspahr.com) |
Subject: | U.S. Trademark Application Serial No. 88648192 - NBME - 00828907 |
Sent: | January 21, 2020 02:24:07 PM |
Sent As: | ecom121@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88648192
Mark: NBME
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Correspondence Address: 1735 MARKET STREET, 51ST FLOOR
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Applicant: National Board of Medical Examiners
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Reference/Docket No. 00828907
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 21, 2020
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).
AMENDMENT TO IDENTIFICATION OF GOODS AND/OR SERVICES REQUIRED
The wording “providing consulting services to . . . organizations in the field of medicine and related disciplines” in the identification of services must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass providing consulting services to educational organizations in the field of medicine and related disciplines in International Class 41 and providing consulting services to medical organizations in the field of medicine and related disciplines in International Class 44. Additionally, the wording “providing assessments and exam questions and other educational tutorial materials in connection with examinations in the field of medicine and related disciplines” in the identification of services must be clarified because it is too broad and could include goods and services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, this wording could encompass downloadable electronic assessments and exam questions and other educational tutorial materials in connection with examinations in the field of medicine and related disciplines in International Class 9, printed assessments and exam questions and other educational tutorial materials in connection with examinations in the field of medicine and related disciplines in International Class 16, and providing non-downloadable electronic assessments and exam questions and other educational tutorial materials in connection with examinations in the field of medicine and related disciplines in International Class 41. Applicant may substitute the following wording, if accurate:
International Class 9: Downloadable electronic assessments and exam questions and other educational tutorial materials in connection with examinations in the field of medicine and related disciplines
International Class 16: Printed assessments and exam questions and other educational tutorial materials in connection with examinations in the field of medicine and related disciplines
International Class 41: Preparation, scoring, analysis and evaluation of examinations and assessments, and examination and assessment questions for testing or assessing individuals to ascertain their competence in the field of medicine and related disciplines, administration of such examinations and assessments, conducting research in the field of medical educational programs and assessment to ascertain the effectiveness thereof, providing consulting services to examining boards, certifying bodies, and other educational organizations in the field of medicine and related disciplines; Providing educational assessment services in the field of medicine and related disciplines; Providing non-downloadable videos featuring self-assessment tools in the field of medicine and related disciplines for the improvement of student learning and patient care; Educational services, namely, providing non-downloadable electronic assessments and exam questions and other educational tutorial materials in connection with examinations in the field of medicine and related disciplines
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 already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 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.
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.
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.
AMENDMENT TO DESCRIPTION OF MARK REQUIRED
The following description is suggested, if accurate:
The mark consists of the stylized lettering “NBME” with a stylized flame secured in an upside down triangle holder appearing over the letter “M”.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal 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.
/Steven W. Ferrell Jr./
Examining Attorney
Law Office 121
(571) 270-3424
steven.ferrell@uspto.gov
RESPONSE GUIDANCE