To: | The MITRE Corporation (tm@sternekessler.com) |
Subject: | U.S. Trademark Application Serial No. 88932722 - SARA ALERT - 2272.3510000 |
Sent: | September 07, 2020 01:02:52 PM |
Sent As: | ecom126@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88932722
Mark: SARA ALERT
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Correspondence Address: STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C
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Applicant: The MITRE Corporation
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Reference/Docket No. 2272.3510000
Correspondence Email Address: |
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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
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
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
(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
The wording “ALERT” means “an urgent notice”. See the attached evidence from Merriam-Webster.com. Thus, the wording merely describes applicant’s goods and/or services because applicant’s computer programs, applications, and databases provide urgent notices 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” 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.
CONCLUSION
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