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 08, 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 Services Unacceptable-Indefinite In Part

The wording “Providing assistance, fitness and health evaluation and consultation to business clients to help their employees make health, wellness, and nutritional changes in their daily living to increase productivity and lower health care costs” in the identification of services in Class 35 is indefinite and must be clarified because the common commercial or generic name of the services must be further specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to further specify the common commercial or generic name of the services.  See TMEP §1402.01.  For example, the wording “Providing business consultation to business clients to help their employees make health, wellness, and nutritional changes in their daily living to increase productivity and lower health care costs” is acceptable in International Class 35; the wording “Medical testing services, namely, fitness and health evaluation provided to business clients to help their employees make health, wellness, and nutritional changes in their daily living to increase productivity and lower health care costs” is acceptable in International Class 44.  If applicant adopts the latter suggested amendment of the identification of services, then applicant must amend the classification to International Class 44.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

The wording “Providing communication technology, namely, providing search platforms and voice enabled search platforms that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas” in the identification of services in Class 42 is indefinite and must be clarified because the common commercial or generic name of the services must be further specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to further specify the common commercial or generic name of the services.  See TMEP §1402.01.  For example, the wording “Platform as a service (PAAS) featuring computer software platforms for providing search engines and voice enabled search engines that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas” is acceptable in International class 42.

 

The wording “Providing a website featuring technology that enables users to access, manage and process health, medical, hospital, pharmaceutical and prescription drug insurance applications, records, claims, benefits, accounts” is acceptable as filed in International Class 42.

 

The wording “Text and voice enabled software that enable users to request and obtain information in the medical, health, hospital, dental, prescription drug, pharmaceutical, wellness, fitness, exercise, diet, nutrition, health insurance, health care plan and health saving account areas; Text and voice enabled software that enables users to access, manage and process health, medical, hospital, pharmaceutical and prescription drug insurance applications, records, claims, benefits, accounts; Computer application software for mobile phones, tablet computers and computes, namely, software for healthcare resource information regarding health insurance, health plan insurance coverage information, information on insurance claims administration and processing, healthcare information, information regarding health treatment options, information regarding health facilities and health-related questions and answers” is acceptable as filed in International Class 9.

 

The wording “Providing health subscribers with information in the field of health insurance; Providing health subscribers with information about health insurance plans; Providing health subscribers with information in the field of insurance claims administration and processing, all of the foregoing accessible using electronic devices, namely, mobile phones, tablet computers and computes; Health, medical, hospital, pharmaceutical and prescription drug insurance underwriting; Administration and organizing of prepaid and/or preferred provider and/or health maintenance organization and/or managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks, including claims administration and processing, enrolling, providing eligibility and benefit information, claims remittance advising, claims and benefits reporting; Providing information, data, pertaining to the underwriting of health, medical, hospital, pharmaceutical and prescription drug insurance and pertaining to the administration and organizing of prepaid and/or preferred provider and/or health maintenance organization and/or managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks; Administering, organizing and underwriting health care coverage through contracted relationships with subscribers and professional clinical, hospital, nursing home and other health care providers” is acceptable as filed in International Class 36.

 

The wording “Providing multiple-user access, using electronic devices, namely, mobile phones, tablet computers and computes, to data on the Internet in the field of healthcare resource information regarding accessing discount programs and healthcare spending account information” is acceptable as filed in International Class 38.

 

The wording “Providing assistance and fitness consultation to business clients to help their employees make physical fitness, strength, conditioning, and exercise changes in their daily living” is acceptable as filed in International Class 41.

 

The wording “Providing health care services digitally using electronic devices, namely, mobile phones, tablet computers and computes via phone calls, video calls, online chat, text messages; Providing in-person health care services; Health care information services accessed via phone calls, video calls, online chat, text messages, namely, providing medical counseling to health care consumers, providing information on health issues to consumers; Providing health information in the field of preventative health, namely, diet and nutrition, smoking cessation, fitness and exercise, weight reduction and diet planning; Providing consultation in the fields of health and lifestyle, in relation to preventative health, diet and nutrition, smoking cessation, weight reduction, diet planning and lifestyle wellness”  is acceptable as filed in International Class 44.

 

Applicant’s goods and/or 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 goods and/or services or add goods and/or 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 goods and/or 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 goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  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. 

 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

dominic.ferraiuolo@uspto.gov

 

 

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

 

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 08, 2020 for

U.S. Trademark Application Serial No. 88960496

 

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. 

 

 

Ferraiuolo, Dominic

/DominicJFerraiuolo/

Examining Attorney, U.S.P.T.O.

Law Office 102

tel:  571-272-9156

fax: 571-273-9102

dominic.ferraiuolo@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 08, 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.”