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:  October 06, 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.

 

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.  However, marks in prior-filed pending applications may present a bar to registration of applicant’s mark.

 

 

SUMMARY OF ISSUES:

• Prior-Filed Applications
• Indefinite Identification of Goods & Services

 

 

PRIOR-FILED APPLICATIONS

The filing dates of pending U.S. Application Serial Nos. 88582523, 88758555, and 88252145 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

INDEFINITE IDENTIFICATION OF GOODS & SERVICES

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

 

The services identified as “Electronic personal emergency response system consisting of a device worn on the body or located within the home that notifies others in the event of an emergency, distress event or change in environment,” in International Class 9 are indefinite.  Applicant must further specify the nature of the device that comprises the identified system. 

 

The goods identified as “Electronic personal emergency response system consisting of software, mobile applications, wearable pendants, sensors and sensor hubs to notify others in the event of an emergency, distress event or change in environment,” in International Class 9 are indefinite.  Applicant must specify the format of the software and mobile applications.

 

The wording “including” in in International Class 10 of the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

The goods identified as “Medical and health monitors to detect falls, motion, air quality and temperature changes,” in International Class 10 are indefinite.  Applicant must specify that the goods monitor and detect falls, motion, air quality and temperature changes for medical purposes.

 

The two instances of “software as a service” services in International Class 42 are indefinite.  Applicant must specify that these services feature software that has a specific function or must specify that they are in the nature of hosting software for others that has a specific function.  Furthermore, the nature of the “software subscription” services is not clear.  If these services are in the nature of software as a service (SAAS) services, such services are already identified and are duplicative.

 

Applicant may adopt the following wording, if accurate:

 

International Class 9 – Electronic personal emergency response system consisting of an electronic device worn on the body or located within the home that notifies others in the event of an emergency, distress event or change in environment; Electronic devices comprised of sensors and pendants for determining status of individuals, particularly seniors, and sending electronic alerts to caregivers; Wearable activity trackers; Downloadable mobile applications for gathering individual biometric data, health data, and environmental data from personal emergency response systems, medical and health monitors, sensors, pendants, or wearable activity trackers; Electronic personal emergency response system consisting of ______ {Applicant must specify format, i.e. downloadable, recorded, OR downloadable and recorded} software, downloadable mobile applications, wearable pendants, sensors and sensor hubs to notify others in the event of an emergency, distress event or change in environment

 

International Class 10 – Medical and health monitors and sensors, namely blood pressure monitors, heart rate monitors, cardiac output monitors, blood sugar monitors, pulse rate monitors, and respiratory monitors; Medical and health monitors to detect falls, motion, air quality and temperature changes for medical purposes; Health monitors and sensors that monitor the health of individuals, particularly seniors, in their own homes

 

International Class 42 – Software as a service (SAAS) services featuring software for ______ {Applicant must further specify function, i.e. managing, controlling, etc.} personal emergency response systems; Software as a service (SAAS) services featuring software for gathering human biometric data, health data, and environmental data from personal emergency response systems, sensors, sensor hubs, pendants, medical and health monitors or wearable activity trackers

 

International Class 44 – Emergency medical assistance; Emergency medical response services; Medical assistance services provided via telecommunication and global computer networks for individuals with health problems through the use of personal emergency response systems, medical and health monitors or wearable activity trackers with automated alert and monitoring capabilities; Medical diagnostic testing, monitoring and reporting services

 

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.

 

 

ADVISORY – RESPONSE ASSISTANCE

 

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.    

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@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 October 06, 2020 for

U.S. Trademark Application Serial No. 90022189

 

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. 

 

 

/Christopher M. Law/

Trademark Examining Attorney

Law Office 103

(571) 272-2913

christopher.law@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 October 06, 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.”