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:  September 07, 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 OF USPTO DATABASE OF MARKS

 

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.

 

SUMMARY OF ISSUES:

• Classification and Identification of Services
• Disclaimer Required
• Mark Description

 

CLASSIFICATION AND IDENTIFICATION OF SERVICES

 

Applicant has classified “providing and maintaining a database of health records to assist in the screening, identification, monitoring, and tracking of persons at risk of a health issue” in International Class 42; however, the proper classification is International Class 44.  Therefore, applicant may respond by (1) adding International Class 44 to the application and reclassifying these services in the proper international class, (2) deleting “Providing and maintaining a database of health records to assist in the screening, identification, monitoring, and tracking of persons at risk of a health issue” from the application, or (3) deleting the remainder of the items in the identification and reclassifying the specified goods and/or services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

In addition, the identification for computer programs and applications in International Class 42 is indefinite and too broad and must be clarified to specify whether the format is downloadable, recorded, or online non-downloadable.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42.  See TMEP §1402.03(d).

 

Applicant may adopt the following wording, if accurate, with suggested wording in bold and comments in bold italics: 

 

International Class 9:           {Specify if program and applications are: downloadable or recorded} computer programs and application software to allow public health officials to enroll individuals at risk of developing infections, diseases, and illnesses in a monitoring, tracking, and reporting program, and to allow users to enter their symptoms in a database to provide public health officials with real-time information and health-management insights; {Specify if program and applications are: downloadable or recorded} computer programs and application software for use in collecting information on, monitoring, researching, tracking, managing, and reporting on public health issues, including persons at risk of contracting an infection, disease, and illness, and the containment or spread of infections, diseases, and illnesses; {Specify if program and applications are: downloadable or recorded} computer programs and application software in the field of health monitoring, which allows users to provide symptoms and other health-related data via a website, text message, email, or phone; {Specify if program and applications are: downloadable or recorded}  computer programs and application software for use by public health officials to monitor and track patients with health issues by geographic location and other criteria; {Specify if program and applications are: downloadable or recorded} computer programs and mobile application software for use in the field of health monitoring and public health issues

 

International Class 42:            Providing temporary use of on-line non-downloadable computer programs and application software to allow public health officials to enroll individuals at risk of developing infections, diseases, and illnesses in a monitoring, tracking, and reporting program, and to allow users to enter their symptoms in a database to provide public health officials with real-time information and health-management insights; Providing temporary use of on-line non-downloadable computer programs and application software for use in collecting information on, monitoring, researching, tracking, managing, and reporting on public health issues, including persons at risk of contracting an infection, disease, and illness, and the containment or spread of infections, diseases, and illnesses; Providing temporary use of on-line non-downloadable computer programs and application software in the field of health monitoring, which allows users to provide symptoms and other health-related data via a website, text message, email, or phone; Providing temporary use of on-line non-downloadable computer programs and application software for use by public health officials to monitor and track patients with health issues by geographic location and other criteria; Providing temporary use of on-line non-downloadable computer programs and mobile application software for use in the field of health monitoring and public health issues

 

International Class 44:         Providing and maintaining an online computer database featuring information regarding health records to assist in the screening, identification, monitoring, and tracking of persons at risk of a health issue

 

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.

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

FEE ADVISORY

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

 

DISCLAIMER REQUIRED

 

Applicant must disclaim the wording “ALERT” and “SECURE MONITORING AND REPORTING FOR PUBLIC HEALTH” 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 wording “MONITORING”, “REPORTING”, and “PUBLIC HEALTH” appears in applicant’s identification of goods and/or services. In addition, the attached evidence from Merriam-Webster.com shows the wording “ALERT” means “an urgent notice” and the wording “SECURE” means “affording safety”.  Thus, the wording merely describes applicant’s goods and/or services because applicant’s computer programs, applications, and databases provide urgent notices, affords safety, monitors, and provides reports regarding public health and public health information.

 

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

 

No claim is made to the exclusive right to use “ALERT” and “SECURE MONITORING AND REPORTING FOR PUBLIC HEALTH” 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. 

 

MARK DESCRIPTION

 

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate: 

 

The mark consists of the wording “SARA ALERT” placed above the wording “SECURE MONITORING AND REPORTING FOR PUBLIC HEALTH”, with a trefoil design to the left of the words and three arcing bands to the right of the letter “T” in “ALERT”.

 

CONCLUSION

 

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.    

 

 

/Michelle Ribaudo/

Examining Attorney

Law Office 126

(571) 270-3962

michelle.ribaudo@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 September 07, 2020 for

U.S. Trademark Application Serial No. 88932711

 

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. 

 

 

/Michelle Ribaudo/

Examining Attorney

Law Office 126

(571) 270-3962

michelle.ribaudo@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 September 07, 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.”