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 18, 2020

 

This Office action is supplemental to and supersedes the previous Office action issued on May 8, 2020 in connection with this application.  On May 7, 2020, Applicant submitted a voluntary amendment where it provided verified declaration.

 

Applicant must address all issue(s) raised in this Office action, which have been continued from the Office action dated May 8, 2020.   

 

Further, the following requirement has been satisfied:  the requirement to submit a verified declaration.  See TMEP §713.02.

 

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.

 

Identification of Services

 

THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN

 

The wording educational services, namely, developing and disseminating educational materials for others in the fields of cancer and cancer prevention; educational services, namely, developing and disseminating educational materials and programs for physicians, healthcare professionals, patients and caretakers regarding cancer and other diseases, oncology and disease management,” in Class 041 in the identification of services is indefinite and must be clarified to indicate that the educational materials are printed.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The word, “printed,” is required to justify the classification in Class 041, as this service does not include development of software in Class 042.

 

Classes 009, 035, 036, 042 and 044 are accepted and written.

 

Applicant may substitute the following wording, if accurate: 

 

Class 009:       Downloadable computer software for medical data analysis

 

Class 035:       Business consulting services, namely, business consulting on the establishment, management, and operation of cancer treatment centers for others; medical health care utilization and review services and consulting related thereto; promoting public awareness of cancer treatment, research and prevention

 

Class 036:       Charitable fundraising services

 

Class 041:       Educational services, namely, conducting programs, seminars, lectures and workshops in the fields of medicine and healthcare relating to cancer and cancer prevention and early detection, and distribution of printed materials therewith; educational services, namely, developing and disseminating PRINTED educational materials for others in the fields of cancer and cancer prevention; educational services, namely, developing and disseminating PRINTED educational materials and programs for physicians, healthcare professionals, patients and caretakers regarding cancer and other diseases, oncology and disease management

 

Class 042:       Software as a service (SAAS) services featuring software for medical data analysis; data collection service using software to evaluate, analyze, and collect medical data; medical research services

 

Class 044:       Medical services relating to cancer; medical services, namely, radiation oncology services; medical services, namely, the treatment of cancer, disease management, disease prevention and early detection, standardized diagnosis, staging and treatment, care and care assessment, medical counseling; medical consulting services, namely, consulting on the treatment of cancer, disease management, disease prevention and early detection, standardized diagnosis, staging and treatment, care and care assessment, and patient care management; computer information services, namely, providing medical information on cancer and other diseases, oncology and disease management via the internet; medical services, namely, medical diagnostic testing, monitoring and reporting services; medical imaging services; medical radiology services; nuclear medical services; providing information, advice and data on cancer diagnosis, treatments, DNA coding and genetic composition; medical consulting services, namely, consulting on the detection, treatment and prevention of cancer and analysis of DNA coding and genetic composition in connection therewith; medical services in the nature of medical screening and analysis services for diagnostic and treatment purposes; providing medical and medical clinical data analytics and bioinformatics services; providing health care data analytics and bioinformatics services; health care and medical data analysis services

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

Applicant’s 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 services or add 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 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 services will further limit scope, and once services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Disclaimer

 

Applicant must disclaim the wording “PATIENT” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

The term PATIENT is defined as “One who receives medical attention, care, or treatment” (see attached). Applicant’s software presumably analyzes PATIENT medical data. Additionally, applicant is presumably providing charitable fundraising, programs, seminars, lectures and workshops in the fields of medicine and healthcare relating to cancer and cancer prevention and early detection, and medical services to PATIENTS.  Accordingly, the wording merely describes a feature of the goods and the intended recipient of the services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “PATIENT” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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

 

 

/Christina M Sobral/

Christina Sobral

Trademark Examining Attorney

Law Office 109

Christina.Sobral@uspto.gov

571.272.5703

 

 

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 18, 2020 for

U.S. Trademark Application Serial No. 88856502

 

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. 

 

 

/Christina M Sobral/

Christina Sobral

Trademark Examining Attorney

Law Office 109

Christina.Sobral@uspto.gov

571.272.5703

 

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 18, 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.”