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:  May 08, 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 Results

 

The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.

 

However, the applicant must respond to the following issues.

 

Identification of Goods and Services

 

Portions of the identification of goods and services require clarification, as the nature of the goods and services that are being provided is unclear.  See TMEP §1402.01.  The applicant must provide the common commercial name for the goods and services or specify the nature of the goods and services.  The proper classification of the goods and services will depend on the type of goods and services that are being provided. 

 

The applicant may adopt the following wording, if accurate:

 

“Downloadable computer software for use in __ [identify specific function(s), e.g., database management, electronic storage of data] for the management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Downloadable computer software for use in the acquisition, storage, organizing, tracking, sharing, and analysis of medical and physiological data in the fields of management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Downloadable computer software for providing coaching and education in the fields of management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Downloadable computer software for preparing and delivering reports and analytics relating to medical and physiological data in the fields of management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Downloadable computer software for delivery of medical and physiological data and clinical decision support to healthcare organizations, healthcare providers, and healthcare professionals,” in International Class 9;

 

“Software as a service (SAAS) services featuring software for collection of patient data related to medical conditions and providing feedback to patients and physicians; Software as a service (SAAS) services featuring software for use in __ [identify specific function(s), e.g., database management, electronic storage of data] for the management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Software as a service (SAAS) services featuring software for use in the acquisition, storage, organizing, tracking, sharing, and analysis of medical and physiological data in the fields of management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Software as a service (SAAS) services featuring software for providing coaching and education in the fields of management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Software as a service (SAAS) services featuring software for preparing and delivering reports and analytics relating to medical and physiological data in the fields of management and treatment of diabetes, cardiac diseases and acute and chronic diseases; Software as a service (SAAS) services featuring software for delivery of medical and physiological data and clinical decision support to healthcare organizations, healthcare providers, and healthcare professionals,” in International Class 42;

 

“Providing health and medical information in the fields of diabetes, cardiac diseases, and chronic and acute diseases; Providing a resource internet website portal featuring medical and health information in the fields of diabetes, cardiac diseases, and chronic and acute diseases; Providing an internet website portal in the field of medical and health information for use in the acquisition, storage, organizing, tracking, sharing, reporting and analysis of medical and physiological data in the fields of diabetes, cardiac diseases, and chronic and acute diseases; Providing an internet website portal featuring medical data and information of patients for use by healthcare providers and healthcare insurance providers for optimization of health care and population management; Medical consultations provided via online chat,” in International Class 44.

 

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.

 

Application Verification Incomplete

 

It is noted that the initial application was unsigned, resulting in the application not being properly verified.  See TMEP §804. The following statement(s) must be verified:  That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true.  37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a). 

 

On April 10, 2020, the applicant submitted a voluntary amendment including a verified statement; however, the verified statement does not indicate that the mark was in use in commerce as of the application filing date.  Please note that if the verified statement is not filed with the original application, it must also allege that the mark was in use in commerce as of the application filing date.  TMEP Section 804.02.   Applicant must therefore submit this assurance, properly verified in an affidavit or signed declaration under 37 C.F.R. §2.20.  See 37 C.F.R. §§2.33(a)-(b)(1), 2.34(a)(1)(i); TMEP §804.02. 

 

For more information about the verified statement and instructions on providing one using the online Trademark Electronic Application System (TEAS) response form, see the Verified statement webpage.

 

If the applicant has any questions or requires assistance in responding to this Office action, please contact the undersigned examining attorney.

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

/Amy Alfieri/

Trademark Examining Attorney

Law Office 109

571-272-9422

amy.alfieri@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 May 08, 2020 for

U.S. Trademark Application Serial No. 88808718

 

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. 

 

 

/Amy Alfieri/

Trademark Examining Attorney

Law Office 109

571-272-9422

amy.alfieri@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 May 08, 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.”