United States Patent and Trademark Office (USPTO)

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

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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:  October 09, 2020

 

 

PRIORITY ACTION

 

USPTO database searched; no conflicting marks found.  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.

 

Applicant must address issues shown below.  On October 9, 2020, the examining attorney and Ted Breiner discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

44(e) Filing Basis

 

Applicant indicated in its email correspondence that it would like to add Section 44(e) filing basis and withdraw its Section 1(b) filing basis. However, applicant must formally respond to amend the filing basis to 44(e) and withdraw the 1(b) filing basis.

 

To amend an application to one based on a valid foreign registration of the same mark for the same goods and/or services under Trademark Act Section 44(e), an applicant must provide the following:  (1) a true copy of the foreign registration or a proof of renewal from applicant’s country of origin, and, if the foreign registration or proof of renewal is not written in English, an English translation of it; (2) a list of goods and/or services that does not exceed the scope of the goods and/or services in the foreign registration; (3) the following statement, verified in an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date.”  See TMEP §§1004, 1004.01(a)-(b).

 

Further, applicant’s country of origin must be a party to an international treaty or agreement with the United States that provides registration based on ownership of a foreign registration, or extends reciprocal registration rights to U.S. nationals.  TMEP §1004.

 

For more information about Section 44(e) basis requirements, and instructions on how to satisfy them online using the Trademark Electronic Application System (TEAS) form, please go to the Basis webpage.

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted.  37 C.F.R. §2.71(a).

 

Identification of Goods and Services

 

The identification of good and services is amended to read as follows: 

 

Class 009:       Downloadable software for recording, managing and transferring medical images, reports on medical images and related information; downloadable software for accessing and distributing medical images and related information across multiple distributed sources, including mobile access; downloadable software for the management of enterprise-wide medical imaging, facilitating the workflow, collaboration and communication between users involved in medical imaging, medical image archiving systems, radiology information systems, cardiology information systems; Downloadable business intelligence (BI) software integrated workflows for synchronized view and analysis of medical imaging records and related information; workflow management system comprised of downloadable software for integrating, executing, monitoring and managing a variety of image post-processing and artificial intelligence and machine learning solutions for boosting productivity, reporting efficiency, diagnostic quality, clinical decision support and precision diagnostics to help enable personalized care delivery; downloadable integration software with third parties in the area of medical imaging related workflows that may include image analysis, computer-aided detection (CAD), artificial intelligence (AI), machine learning (ML), clinical decision support, reporting and similar tools; rules-based workflow engine in the nature of downloadable software that influences workflow orchestration, worklist triage, workload and/or case management/distribution, AI/ML/CAD meta data extraction to enable report automation, feedback loop mechanism integration if any discrepancy between the user and AI/ML/CAD findings, and similar task optimizations including hanging protocols optimization

 

Class 042:       Design, development, testing, and configuration management of computer software, technical support in the nature of troubleshooting computer software problems and maintenance of computer software in the domain of medical imaging; providing temporary use of non-downloadable on-premise, cloud-based software for the management of enterprise-wide medical imaging, facilitating the workflow, collaboration and communication between users involved in medical imaging, medical image archiving systems, radiology information systems, cardiology information systems; providing temporary use of non-downloadable hybrid software featuring Software-as-a-Service services for the management of enterprise-wide medical imaging, facilitating the workflow, collaboration and communication between users involved in medical imaging, medical image archiving systems, radiology information systems, cardiology information systems; integration of in-house developed computer software and third party computer software into multiple systems and networks for use by customers           

 

See TMEP §§1402.01, 1402.01(e).

 

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.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 October 09, 2020 for

U.S. Trademark Application Serial No. 88925952

 

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 October 09, 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.”