Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  August 20, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 29, 2020.

 

In a previous Office action dated January 29, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: failure to show the applied-for mark in use in commerce with any of the specified goods in Class 14.  In addition, applicant was required to satisfy the following requirements:  amend the identification of goods and services and satisfy the multiple-class application requirements.

 

The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Specimen – Class 14
• Identification of Goods and Services Requirement
• Multiple-Class Application Requirements
• Partial Abandonment Advisory

 

SPECIMEN – CLASS 14

 

Applicant was previously refused registration in International Class 14 because the submitted specimen does not show the applied-for mark in connection with any of the goods specified in Class 14.  Response options for overcoming that refusal, if any, were set forth in the prior Office action.  Applicant, however, responded to such refusal by arguing that the submitted specimen is sufficient.

 

Thus, the refusal to register the applied-for mark in International Class 14 is now made final because applicant failed to provide evidence of use of the mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.63(b); TMEP §§904, 904.07, 1301.04(g)(i).

 

Specimen does not show use in specific class(es).  Registration is refused because the specimen does not show the applied-for mark as actually used in commerce in connection with any of the goods and/or services specified in International Class 14.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark as actually used in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a); see In re Gulf Coast Nutritionals, Inc., 106 USPQ2d 1243, 1247 (TTAB 2013). 

 

Specifically, the specimen of record consists of a screenshot of a webpage depicting the applied-for mark in connection with the sale of smartwatches and smartwatch bands. However, this usage does not show the mark being used in association with any Class 14 goods (“Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants”), only Class 9 smartwatches and smartwatch bands. Therefore, the submitted specimen does not show actual of the mark in connection to the Class 14 goods.

 

Applicant argues that submitted specimen should be accepted because (1) applicant’s smartwatch provides the same functions as a regular watch and (2) a comparable specimen was accepted in applicant’s prior registrations. These arguments are not persuasive.

 

First, smartwatches and smartwatch bands are definite identifications of goods in International Class 9. Function does not play a role in the classification of these goods. Therefore, even though the items perform the function of a watch, i.e., tell time, that does not affect the classification of the smartwatches and smartwatch bands depicted in the specimen.  As such, the specimen fails to show the applied-for mark in connection with the Class 14 goods.

 

Second, when determining whether an applied-for mark is eligible for registration, each application must be considered on its own record.  In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board, must evaluate the evidence in the present record to determine whether there is sufficient evidence . . . .”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); see also In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the [Trademark Trial and Appeal] Board or this court.”). Thus, applicant’s arguments are unpersuasive.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

Response options.  Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b) (which includes withdrawing an amendment to allege use, if one was filed), as no specimen is required before publication.  This option will later necessitate additional fee(s) and filing requirements, including a specimen.

 

For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.

 

IDENTIFICATION OF GOODS AND SERVICES REQUIREMENT

 

The identification of goods and services requirement from the January 29, 2020 is continued and made FINAL.

 

Applicant argues that the entries “general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned”, “general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption”, and “providing healthcare management services, namely, chronic care management” do not require further clarification because they were found to be acceptable in prior registrations. However, this argument is not persuasive. When determining whether an applied-for mark is eligible for registration, each application must be considered on its own record.  In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board, must evaluate the evidence in the present record to determine whether there is sufficient evidence . . . .”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); see also In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the [Trademark Trial and Appeal] Board or this court.”).

 

In International Class 10, the wording “general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned” and “general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption” in the identification of goods is indefinite and must be clarified because they do not specify the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned consisting of heart rate monitors” and “general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption consisting of respiratory monitors” in International Class 10.

 

In International Class 44, the wording “providing healthcare management services, namely, chronic care management” in the identification of services is indefinite and must be clarified because it does not specify the nature of the services.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “providing healthcare management services, namely, medical services in the field of chronic care management” in International Class 44.

 

The wording “providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending” in the identification of services for International Class 42 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 business data analytics in Class 35 and financial data analytics in Class 36.

 

Applicant may substitute the following wording, if accurate:

International Class 9: Personal electronic devices used to track fitness goals and statistics; wearable activity trackers; smartwatches; portable digital electronic devices for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, and digital files; wearable electronic devices, namely, watches, bracelets, and wristbands that are comprised of software that communicates data to personal digital assistants, smart phones, and personal computers through Internet websites and other computer and electronic communication networks; wearable digital electronic devices comprised primarily of software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files and display screens; cables, namely, electric charging cables; computer peripheral devices; scales; personal weighing scales; computers; sensors for scientific use to be worn by a human to gather human biometric data; downloadable software for alerts, messages, emails, and reminders, and for recording, organizing, transmitting, manipulating, reviewing, and receiving text, data, audio, image and digital files; downloadable computer application software for smartphones and mobile devices in the fields of fitness and exercise featuring personal training services, coaching, workouts and fitness assessments; downloadable mobile application software for creating personalized fitness training programs; downloadable computer application software for smartphones and mobile devices to provide support to corporate wellness programs, namely, to provide tools for corporate client employees that enable them to make health, fitness, wellness and nutritional changes in their daily living to improve health in the nature of wellness; downloadable computer software development tools; pre-recorded video recordings featuring athletic and fitness sessions; computer hardware; electronic devices, namely, portable digital electronic devices for transmitting audio files; headphones; earbuds; earphones; wireless audio devices in the nature of wireless earbuds, earphones and headphones for use with smartwatches and wearable activity trackers; microphones; remote control for controlling mobile devices; sound reproducing apparatus; audio speakers; accessories for mobile, portable and handheld devices, namely, earbuds, earphones and headphones; earphone accessories, namely, earphone cushions, earphone pads, and earphone cases; downloadable software in the nature of a mobile application and desktop applications for facilitating communication between medical facilities, clinicians, caregivers, health coaches, and patients; downloadable software in the nature of a mobile application and desktop applications for facilitating collaborative medical treatment between medical facilities, clinicians, caregivers, health coaches and patients; downloadable software in the nature of a mobile application and desktop applications for communication of medical data between medical facilities, clinicians, caregivers, health coaches and patients; downloadable software in the nature of a mobile application and desktop applications for tracking and maintenance of health and treatment plans; downloadable software in the nature of a mobile application and desktop applications for recording medical data; downloadable computer software for providing health, wellness, healthcare, and medical information; downloadable computer software for providing access to healthcare and health coaching services; downloadable computer software platform for application development for use in the fields of health, wellness, and nutrition; downloadable computer software for retrieving, analyzing, and generating reports on a user's health and wellness from data generated by wearable digital electronic devices; downloadable computer software for use in managing user participation in health challenges in the nature of competitions focused on health and wellness; downloadable computer software in the field of health and wellness for transmission of messages among users; downloadable computer software for enabling social networking among users in the field of health and wellness; downloadable software allowing users to engage in health and wellness challenges with others, to participate in social networking and online discussions with others on medical, healthcare, and wellness issues, to perform health assessments, and to track health and wellness activities, goals, outcomes, and rewards; downloadable software enabling users to receive personalized recommendations in the medical, healthcare, and wellness fields; downloadable software for use by patients, their families, and health care professionals enabling users to provide and receive patient care, patient coaching, and healthcare information; downloadable software that provides information to users regarding health, wellness, and nutrition; downloadable software that allows users to assess their habits in the areas of health, nutrition, and wellness; downloadable software for consumer engagement and behavior change modeling to enable users to improve their health and wellness; downloadable computer software for tracking, collecting and analyzing health data for use in conducting health risk assessments, recommending preventative health measures, condition management, and tracking behavior modification; downloadable software for providing patient engagement, namely, prescription medication adherence and patient health management, through outbound messaging technology

International Class 10: Medical devices for measuring body weight and estimating body fat percentage; general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption

International Class 14: Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants

 

International Class 35: Providing business data analytics, business data analytics reporting, and business data analytics consulting services in the field of medical claim costs and healthcare spending

 

International Class 36: Providing financial data analytics, financial data analytics reporting, and financial data analytics consulting services in the field of medical claim costs and healthcare spending

International Class 41: Conducting fitness classes; physical fitness conditioning classes; fitness boot camps; yoga instruction, namely, yoga classes; boxing and kickboxing fitness classes; providing classes in the fields of fitness and exercise; providing a website featuring non-downloadable pre-recorded videos featuring athletic and fitness sessions; educational services, namely, conducting seminars, conferences, and workshops in the fields of health and wellness; online journals, namely, blogs featuring commentary, advice and information in the fields of health, wellness, sleep, fitness and nutrition; health coaching services, namely, providing personal coaching services in the fields of diet, nutrition, wellness, fitness, mental health, and chronic medical condition management; health care personal coaching services offering calls or chats, notifications, the ability to track activities, incentive management solutions and wellness challenges; health coaching, namely, physical fitness consultation; providing personal coaching in the field of wellness and health; health coaching services in the nature of personal coaching in the field of wellness promotion, disease and condition management

International Class 42: Online non-downloadable computer software for tracking fitness, health and wellness goals and statistics; online non-downloadable computer software for displaying, aggregating, analyzing and organizing data and information in the fields of health, wellness, fitness, physical activity, weight management, sleep, and nutrition; online non-downloadable software for creating personalized fitness training programs; online non-downloadable software for providing personal training services, workouts and fitness assessments; application service provider, featuring application programming interface (API) software for allowing data retrieval, upload, access, management, tracking, and analyzing of user data; software as a service (SaaS) services featuring software that enables users to manage employee accounts, schedule and track employee participation, and facilitate and manage corporate fitness and wellness programs; software as a service (SaaS) services featuring software for use in designing, creating and analyzing data, metrics and reports in the areas of health, fitness, sleep, nutrition and wellness; designing, creating and maintaining electronic commerce websites for others; providing online non-downloadable software in the field of health and wellness for enabling social networking among users; providing online non-downloadable software that helps users maintain and expand health habits; providing online non-downloadable software that allows users to assess their habits in the areas of health, nutrition, and wellness; providing online non-downloadable software for managing user participation in health challenges in the nature of competitions focused on health and wellness; providing online non-downloadable software that allows users to catalog health habits in the areas of nutrition, fitness, health and wellness; providing online non-downloadable software that allows users to interact with other users to form a support network in the areas of nutrition, fitness, health and wellness; providing online non-downloadable software for consumer engagement and behavior change modeling to enable users to improve their health and wellness; providing a web site featuring technology that enables companies and organizations to administer and manage employee incentive award programs to promote employee health; technical support and consultation services for developing computer systems, databases and applications; software as a service (SaaS) services featuring software for facilitating communication between medical facilities, clinicians, health coaches and patients; software as a service (SaaS) services featuring software for facilitating collaborative healthcare treatment between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) services featuring software for communication of health data between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) services featuring software for tracking and maintaining health and treatment plans; software as a service (SaaS) services featuring software for recording health data; software as a service (SaaS) services featuring software communicating health data between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) featuring computer software platforms for providing intelligent analytics in the healthcare field; providing temporary use of non-downloadable software for chronic disease management, diabetes management and health management; software as a service (SaaS) services featuring software for users to aggregate, access and exchange healthcare information, manage diseases and conditions, and manage healthcare costs; design and development of computer hardware and software; scientific research and development

International Class 44: Healthcare services; healthcare services, namely, services to enable effective management of one or more chronic conditions; healthcare services, namely, wellness and prevention programs, healthcare management programs, disease management programs and medical condition management programs; providing healthcare management services, namely, medical services in the field of chronic care management; providing health coaching services in the nature of health counseling; providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing information in the fields of health, wellness, and nutrition; providing advice in the fields of health, wellness, and nutrition; individual health assessment services; providing healthcare and wellness services, namely, personal assessments, personalized routines, maintenance schedules, fitness evaluations, and counseling; providing personal lifestyle wellness evaluation and consultation; health counseling; counseling services in the fields of health, nutrition, and wellness, namely, personalized health coaching in the nature of health consultation and behavior change support; providing educational information about healthcare for wellness program coordinators; corporate wellness services, namely, providing assistance and consultation to corporate clients to help their employees make health, fitness, wellness and nutritional changes in their daily living to improve health in the nature of wellness and health-related consulting services; consulting services in the field of health

 

 

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

 

The application references goods and services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:

 

(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 services based on use in commerce that are classified in at least eight classes; however, applicant submitted fees sufficient for only six classes.  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 classes 9, 10, 41, 42, and 44; and applicant needs a specimen for classes 14, 35, and 36.See more information about specimens.

 

Examples of specimens.  Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods.  See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m).  A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods.  TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c). 

 

Specimens for services must show a direct association between the mark and the services and include:  (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services.  See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C). 

 

Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed.  37 C.F.R. §2.56(c).

 

(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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For 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, see the Multiple-class Application webpage.

 

PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods and services will be deleted from the application: “general wellness instruments and apparatus, namely, health monitoring devices for storing, relaying, tracking, measuring and displaying biometric data, body movement, sleep, heart rate, and calories burned; general wellness instruments and apparatus, namely, health monitoring devices for estimating maximal oxygen consumption” in International Class 10, “Horological and chronometric instruments; watches; timepieces; watch straps; watch bands; jewelry; bracelets; pendants” in International Class 14, “providing data analytics, data analytics reporting, and data analytics consulting services in the field of medical claim costs and healthcare spending” in International Class 42, and “providing healthcare management services, namely, chronic care management” in International Class 44. 

 

The application will then proceed with International Classes 9 and 41 and the following goods and services in International Classes 10, 42, and 44 only: “Medical devices for measuring body weight and estimating body fat percentage” in International Class 10, “Online non-downloadable computer software for tracking fitness, health and wellness goals and statistics; online non-downloadable computer software for displaying, aggregating, analyzing and organizing data and information in the fields of health, wellness, fitness, physical activity, weight management, sleep, and nutrition; online non-downloadable software for creating personalized fitness training programs; online non-downloadable software for providing personal training services, workouts and fitness assessments; application service provider, featuring application programming interface (API) software for allowing data retrieval, upload, access, management, tracking, and analyzing of user data; software as a service (SaaS) services featuring software that enables users to manage employee accounts, schedule and track employee participation, and facilitate and manage corporate fitness and wellness programs; software as a service (SaaS) services featuring software for use in designing, creating and analyzing data, metrics and reports in the areas of health, fitness, sleep, nutrition and wellness; designing, creating and maintaining electronic commerce websites for others; providing online non-downloadable software in the field of health and wellness for enabling social networking among users; providing online non-downloadable software that helps users maintain and expand health habits; providing online non-downloadable software that allows users to assess their habits in the areas of health, nutrition, and wellness; providing online non-downloadable software for managing user participation in health challenges in the nature of competitions focused on health and wellness; providing online non-downloadable software that allows users to catalog health habits in the areas of nutrition, fitness, health and wellness; providing online non-downloadable software that allows users to interact with other users to form a support network in the areas of nutrition, fitness, health and wellness; providing online non-downloadable software for consumer engagement and behavior change modeling to enable users to improve their health and wellness; providing a web site featuring technology that enables companies and organizations to administer and manage employee incentive award programs to promote employee health; technical support and consultation services for developing computer systems, databases and applications; software as a service (SaaS) services featuring software for facilitating communication between medical facilities, clinicians, health coaches and patients; software as a service (SaaS) services featuring software for facilitating collaborative healthcare treatment between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) services featuring software for communication of health data between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) services featuring software for tracking and maintaining health and treatment plans; software as a service (SaaS) services featuring software for recording health data; software as a service (SaaS) services featuring software communicating health data between medical facilities, clinicians, caregivers, health coaches and patients; software as a service (SaaS) featuring computer software platforms for providing intelligent analytics in the healthcare field; providing temporary use of non-downloadable software for chronic disease management, diabetes management and health management; software as a service (SaaS) services featuring software for users to aggregate, access and exchange healthcare information, manage diseases and conditions, and manage healthcare costs; design and development of computer hardware and software; scientific research and development” in International Class 42, and “Healthcare services; healthcare services, namely, services to enable effective management of one or more chronic conditions; healthcare services, namely, wellness and prevention programs, healthcare management programs, disease management programs and medical condition management programs; providing health coaching services in the nature of health counseling; providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing information in the fields of health, wellness, and nutrition; providing advice in the fields of health, wellness, and nutrition; individual health assessment services; providing healthcare and wellness services, namely, personal assessments, personalized routines, maintenance schedules, fitness evaluations, and counseling; providing personal lifestyle wellness evaluation and consultation; health counseling; counseling services in the fields of health, nutrition, and wellness, namely, personalized health coaching in the nature of health consultation and behavior change support; providing educational information about healthcare for wellness program coordinators; corporate wellness services, namely, providing assistance and consultation to corporate clients to help their employees make health, fitness, wellness and nutritional changes in their daily living to improve health in the nature of wellness and health-related consulting services; consulting services in the field of health” in International Class 44.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)        An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Drew Ciurpita/

Examining Attorney

Law Office 114

571-272-8002

drew.ciurpita@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 August 20, 2020 for

U.S. Trademark Application Serial No. 88655636

 

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. 

 

 

/Drew Ciurpita/

Examining Attorney

Law Office 114

571-272-8002

drew.ciurpita@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 August 20, 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.”