To: | Commonwealth Scientific and Industrial R ETC. (ip@nelsonmullins.com) |
Subject: | U.S. Trademark Application Serial No. 88665313 - IT'S MY LIFECYCLE MANAGEMENT! - N/A |
Sent: | December 12, 2019 03:21:55 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88665313
Mark: IT'S MY LIFECYCLE MANAGEMENT!
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Correspondence Address: NELSON MULLINS RILEY & SCARBOROUGH LLP 301 SOUTH COLLEGE ST, SUITE 2300
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Applicant: Commonwealth Scientific and Industrial R ETC.
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Reference/Docket No. N/A
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: December 12, 2019
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).
FOREIGN REGISTRATION CERTIFICATE REQUIRED
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
ADVISORY: DUAL BASES
Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e). Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).
IDENTIFICATION OF GOODS AND SERVICES REQUIRES AMENDMENT
Much of the wording in the identification of goods and services must be clarified because it is too broad and could include goods in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, the wording “computer software” could refer to downloadable computer software in Class 09 or non-downloadable computer software in Class 42.
Much of the wording in the identification of goods and services is indefinite and must be clarified to state the purpose or use of the goods or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods or services. See TMEP §1402.01. If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.
Applicant may substitute the following wording, if accurate:
Class 09: Downloadable Computer software for {specify use, e.g., workflow management}; Downloadable application software for {specify use, e.g., workflow management}; Downloadable cloud-based software for {specify use, e.g., workflow management}; Downloadable cloud-based, multitenant software applications for {specify use, e.g., workflow management}; Downloadable system agnostic software for use on computer hardware in the cloud for {specify use, e.g., workflow management}; Downloadable voice recognition software; barcode scanners and readers; Downloadable computer software, namely, application software, for product lifecycle management; Downloadable computer software, namely, application software, for workflow management; Downloadable computer software, namely, application software, for use in the medical and healthcare industries for {specify use, e.g., workflow management}; Downloadable computer software, namely, application software, for use in the medical and healthcare industries to manage and track workflow and patient care management; Downloadable computer software, namely, application software, for managing the logistics of inventory; medical device management system comprised of computer hardware and Downloadable computer software, namely, application software for {specify use, e.g., workflow management}; Downloadable computer software, namely, application software, for use in the medical and healthcare industries to track workflow of medical device actions, namely, medical device order, selection, design, manufacture, test and inspect, track and trace, delivery and post-implant patient monitoring; Downloadable computer software, namely, application software for use by health care providers in the field of workflow management, for managing patient data and information, namely, physician documentation, voice recognition, retrieval of health related records and reports, and tracking of work flow from initial patient consulting through to medical device order, design, manufacture, testing, delivery and post implant patient monitoring
Class 35: Logistics services, namely, business management; computerised inventory control; inventory management services; data collection, data analysis, data processing and data management services, for business purposes to facilitate ordering, selection, design, manufacture, testing, tracking and traceability, delivery and monitoring of medical devices
Class 42: providing temporary use of non-downloadable cloud based software for {specify, e.g., product lifecycle management}; providing temporary use of non-downloadable cloud computing software; Software as a Service (SaaS) for {specify, e.g., product lifecycle management} for {specify, e.g., product lifecycle management}; Platform as a Service (PaaS) for {specify, e.g., product lifecycle management}; provision of on-line non-downloadable software for product lifecycle management and workflow management; provision of on-line non-downloadable software for use in the medical and healthcare industries for {specify, e.g., product lifecycle management}; provision of on-line non-downloadable software for use in the medical and healthcare industries to manage and track workflow and patient care management; provision of on-line non-downloadable software for managing the logistics of inventory; provision of on-line non-downloadable software being a medical device management system; provision of on-line non-downloadable software for use in the medical and healthcare industries to track workflow of medical devices actions, namely, medical device order, selection, design, manufacture, test and inspect, track and trace, delivery and post-implant patient monitoring; Provision of on-line non-downloadable software for use by health care providers in the field of workflow management, for managing patient data and information, namely, physician documentation, voice recognition, retrieval of health related records and reports, and tracking of work flow from initial patient consulting through to medical device order, design, manufacture, testing, delivery and post implant patient monitoring
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.
Questions: Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Rachael Dickson/
Rachael Dickson
Trademark Examining Attorney
Law Office 125
Phone: 571-272-5353
E-mail: rachael.dickson@uspto.gov
RESPONSE GUIDANCE