Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

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 28, 2019

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Search results

 

The trademark examining attorney has searched the USPTO’s database of registered and pending marks and has found no similar registered marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

 

Prior Pending Application

 

Information regarding pending Application Serial No. 88314106 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Applicant must respond to the following requirements.

 

IDENTIFICATION OF GOODS/SERVICES

 

GENERAL GUIDELINES

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" or "products," such words must be followed by "namely," followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Applicant may amend the identification to list only those items that are within the scope of the goods/services set forth in the application or within the scope of a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.  

 

Unacceptable identification

 

PLEASE NOTE: Recommended changes and suggestions to applicant’s identification have been highlighted in bold.  If the recommended changes and suggestions contain brackets, applicant must remove any brackets from the identification and incorporate the bracketed information into the amended description. 

 

Class 009

 

Applicant filed the following identification:

 

“A wireless patient monitoring platform comprising software, hardware and wearable sensors for gathering data from patients to be viewed remotely on monitors and mobile devices, namely, smart phones and tablets”

 

Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear.  See TMEP §§1402.01, 1402.03.  Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.

 

Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.

 

The following substitute identification with amended wording is suggested, if appropriate:

 

“A wireless patient monitoring platform comprising RECORDED COMPUTER software, COMPUTER hardware and wearable sensors for gathering data from patients to be viewed remotely on monitors and mobile devices, namely, smart phones and tablets” in Class 009

 

Note:

 

1.      Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names.  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Class 042

 

Applicant filed the following identification:

 

“A wireless patient monitoring platform provided as software as a service for gathering data from patients to be viewed remotely on monitors and mobile devices, namely, smart phones and tablets”

 

Some of the wording in the identification of goods and/or services above is indefinite and must be clarified because the exact nature of the goods and/or services is unclear.  See TMEP §§1402.01, 1402.03.  Applicant must specify the common commercial or generic name for the goods and/or services. If there is no common commercial or generic name, applicant must describe the goods and/or services, the intended consumer as well as its main purpose, channels of trade and intended uses.

 

Specifically, the nature of the goods/services requires further specification to ensure appropriate classification.

 

The following substitute identification with amended wording is suggested, if appropriate:

 

“Software as a service (SAAS) services featuring software for  gathering data from patients to be viewed remotely on monitors and mobile devices, namely, smart phones and tablets ” in Class 042

 

Note:

 

2.      Applicant is encouraged to reference the Manual of Acceptable Identifications of Goods and Services for common commercial names.  http://tess2.gov.uspto.report/netahtml/tidm.html.

 

RESPONSE

 

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.    

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Attorney

Law Office 103

571-272-2651

paul.moreno@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 December 28, 2019 for

U.S. Trademark Application Serial No. 88673607

 

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. 

 

 

 

/Paul A. Moreno/

United States Patent and Trademark Office

Attorney

Law Office 103

571-272-2651

paul.moreno@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 December 28, 2019, 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.”