To: | Blue Cross and Blue Shield of South Caro ETC. (bckillough@barnwell-whaley.com) |
Subject: | U.S. Trademark Application Serial No. 88653648 - KARNA - 368.207 |
Sent: | January 22, 2020 01:53:24 PM |
Sent As: | ecom107@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88653648
Mark: KARNA
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Correspondence Address: BARNWELL WHALEY PATTERSON & HELMS, LLC
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Applicant: Blue Cross and Blue Shield of South Caro ETC.
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Reference/Docket No. 368.207
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 22, 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).
SUMMARY OF ISSUES:
IDENTIFICATION AND CLASSIFICATION OF SERVICES – CLASSES 41 & 42 ONLY
Applicant may adopt the following Class 41 wording, if accurate:
Information technology training services, namely, training services in the field of population health management; education services, namely, providing non-downloadable webinars in the field of health; training services in the field of health care and public health; educational services, namely, conducting classes, seminars, webinars, conferences, workshops in the fields of healthcare and public health
Please note the examiner is unable to provide substitute language for the entry “compiling and analyzing statistical health data in order to support health research.” Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services. In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording. See TMEP §1402.01(e).
Applicant may adopt the following Class 42 wording, if accurate:
Software design and development; planning, design and management of information technology systems; computer security consultancy; development of security systems and contingency planning for information systems; computer network configuration services; scientific research; providing consulting services in the field of medical health research; testing, analysis and evaluation of the services of others to determine conformity with certification standards; testing, analysis and evaluation of health data to assure compliance with health industry standards; design of information graphics and data visualization materials; providing technology consulting in the field of social media; website design and development for others; graphic design; computer graphics design services
Applicant may add and adopt the following Class 45 wording, if accurate:
Regulatory compliance consulting in the field of health research
If adding a class, applicant must comply with the multiple-class application requirements below.
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 – ADVISORY
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 35, 41, and 42; and applicant needs a specimen for class(es) 45. See more information about specimens.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and website printouts that show the mark used in the actual sale, rendering, or advertising of the services.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
WITH THE EXCEPTION OF ADDING A CLASS, ALL REQUIREMENTS MAY BE RESOLVED VIA EMAIL BY REACHING OUT TO THE EXAMINER LISTED BELOW.
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.
/Cynthia R. Smith/
Trademark Examining Attorney
Law Office 107
(571) 272-4685
cynthia.smith@uspto.gov
RESPONSE GUIDANCE