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:  December 07, 2020

 

Please call or email the assigned trademark examining attorney to resolve the issues in this Office action.  Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to the application that will immediately place the application in condition for publication, registration, or suspension.  See 37 C.F.R. §2.62(c); TMEP §707.

 

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.

 

Trademark Act Section 2(d) Search Results – No Conflicting Marks Found

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, the applicant must address the following substantive/procedural issues:

 

Summary of Issues

 

• Partial Amended Identification of Goods and Services Required

 

Partial Amended Identification of Goods and Services Required

This partial requirement applies to International Class 009, the following clauses in International Class 035: Design of advertising materials for others in the field of dental practice management; design of online advertising materials for others in the field of dental practice management, and the following clause in International Class 042: computer software technical support services ONLY and does not affect registration for the remaining services in the application.

 

The identification of goods and services requires clarification in several respects.

 

First, the wording “Computer programs, computer software and associated instruction manuals sold as a unit for use….” in the identification of goods for International Class 009 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass downloadable or recorded software in International Class 009, or online nondownloadable software in International Class 042.

 

Second, the wording “Design of advertising materials for others in the field of dental practice management; design of online advertising materials for others in the field of dental practice management” in International Class 035 is misclassified. This wording is now classified in International Class 042 as a graphic design service.

 

Finally, the wording “computer software technical support services” in the identification of services in International Class 042 is indefinite and must be clarified because the nature of the technical support services has not been specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may substitute the following wording, if accurate:  (bold indicates modified language)

 

·         International Class 009: _____ {specify whether downloadable or recorded} Computer programs, computer software and associated instruction manuals sold as a unit for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images

 

·         International Class 035: marketing consulting services, namely, evaluation of current marketing programs in the field of dental practice management; customer relationship management services in the field of dental practice management; appointment scheduling services in the field of dental practice management; promoting and marketing the goods and services of others by distributing advertising material, discount offers, appointment reminders, targeted messages, appointment confirmations, customer reviews, and appointment inquiries via text messages, e-mail, telephone, and online in the field of dental practice management; dental practice management for others; consulting services in the field of dental practice management

 

·         International Class 042: graphic Design of advertising materials for others in the field of dental practice management; graphic design of online advertising materials for others in the field of dental practice management; Software as a service services, namely, hosting software for use by others, and application service provider services, featuring software and electronic instruction manuals provided online via a global computer network for use in the fields of dental practice management and dental office management, namely, for use in managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images; computer software programming services, computer software development services, computer software set up services, computer software data transfer services, computer software modification services, computer software upgrade services, computer software technical support services, namely, ______ {specify the tech support service, e.g., troubleshooting of computer software problems}, computer software maintenance services, and computer software consulting services, all in the fields of dental practice management and dental office management, namely, managing dental practices, managing dental offices, patient scheduling, patient appointment management, patient contact, patient management, patient care management, patient benefits management, patient treatment planning, patient clinical charting, patient reporting, preparing patient notices, personnel scheduling, personnel management, personnel reporting, personnel compensation management, personnel records management, accounting management, finance management, tracking financial data, financial reporting, preparing financial reports, patient billing, third party billing, tracking accounts receivable, managing revenues, expenses, costs, profitability, budgets, equipment, supplies and purchases, claims management, claims management, claim processing, insurance processing, tracking insurance payments, tracking patient payments, collections, performance analysis, performance reporting, comparison analysis, comparison reporting, entering, displaying, printing, tracking, analyzing, organizing, retrieving, transacting, modifying, managing, backing up, storing, security protecting and reporting data and information with respect to dental practices, dental offices, patients, personnel, patient files, patient records, personnel records, dental exams, images, graphics, charts, dental treatment, dental services, dental recare, demographics, finances, insurance and claims, providing online training and assistance regarding management of dental practices and dental offices, providing online patient education and training, and providing educational patient videos and images

 

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.

 

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).

 

Response Guidelines

If applicant does not respond to this Office action within the six-month period for response, International Class 009 will be deleted from the application.  Additionally the following clauses in International Class 035 and 042 will be deleted from the application: “Design of advertising materials for others in the field of dental practice management; design of online advertising materials for others in the field of dental practice management” in International Class 035, and “computer software technical support services” in International Class 042. The application will then proceed with the remaining services International Classes 035 and 042 only.  See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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.    

 

 

Bechhofer, Yocheved

/Yocheved Bechhofer/

Examining Attorney

Law Office 114

571-272-9329

Yocheved.Bechhofer@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 December 07, 2020 for

U.S. Trademark Application Serial No. 90097787

 

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. 

 

 

Bechhofer, Yocheved

/Yocheved Bechhofer/

Examining Attorney

Law Office 114

571-272-9329

Yocheved.Bechhofer@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 December 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.”