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:  August 19, 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.

 

Identification of Goods and Services

 

The wording specified below in the identification of goods and services is indefinite and must be clarified to further specify the nature of the goods and services (see below for explanations and suggestions).  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods and services.  See TMEP §1402.01.  If the goods and services have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses and/or describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant may substitute the following wording, if accurate: 

 

Class 009:       ___ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) software for recording, managing and transferring medical images, reports on medical images and related information; ___ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) software for accessing and distributing medical images and related information across multiple distributed sources, including mobile access; ___ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) 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; ___ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) business intelligence (BI) software integrated workflows for synchronized view and analysis of medical imaging records and related information; a workflow management system COMPRISED OF ____ (SPECIFY COMPONENTS OF SYSTEM, e.g., DOWNLOADABLE SOFTWARE, COMPUTER HARDWARE, COMPUTER PERIPHERALS) 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; ___ (SPECIFY, e.g., DOWNLOADABLE, RECORDED) 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; a rules-based workflow engine IN THE NATURE OF ____ (FURTHER SPECIFY THE NATURE OF WORKFLOW ENGINE, e.g., 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, deployment IN THE NATURE OF ____ (SPECIFY NATURE OF DEPLOYMENT SERVICES), 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 ____ (INDICATE THE FUNCTION OF THE SOFTWARE AND IF CONTENT-SPECIFIC THE FIELD OF USE); PROVIDING TEMPORARY USE OF NON-DOWNLOADABLE hybrid software FEATURING Software-as-a-Service SERVICES FEATURING SOFTWARE FOR ____ (INDICATE THE FUNCTION OF THE SOFTWARE AND IF CONTENT-SPECIFIC THE FIELD OF USE) FOR server HOSTING and ___ (SPECIFY CLASS 042 SOFTWARE SERVICES) FOR client units; INTEGRATION OF in-house developed COMPUTER software and third party COMPUTER software INTO MULTIPLE SYSTEMS AND NETWORKS FOR USE BY customerS

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).  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).

 

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.

 

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 August 19, 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 August 19, 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.”