NOTE TO THE FILE
Sent to TICRS as Serial Number: 90188764SERIAL NUMBER: 90134941
DATE: 11/21/2020
NAME: jdixon1
NOTE:
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantFrom: Dixon, Jennifer
Sent: Friday, November 20, 2020 2:45 PM
To: Rhynhart, Erich <Erich.Rhynhart@CVSHealth.com>; IPLegal <IP_Legal@CVSHealth.com>
Subject: RE: TM Apps SN 90134945 and others - AETNA applications - Examiner's Amendments Requested
I wanted to circle back to say that I probably won’t be writing any of these until tomorrow so if you are able to get an answer by the end of today, that would be fine. But if you know you won’t get an answer and want to let me know, then I may end up writing them later tonight.
Thanks and have a great weekend.
Jennifer H. Dixon
Trademark Attorney, Law Office 110
Phone: 571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)PLEASE NOTE: All informal e-mail communications relevant to a trademark application will be placed in the official application record.
From: Dixon, Jennifer
Sent: Thursday, November 19, 2020 3:25 PM
To: Rhynhart, Erich <Erich.Rhynhart@CVSHealth.com>; IPLegal <IP_Legal@CVSHealth.com>
Subject: RE: TM Apps SN 90134945 and others - AETNA applications - Examiner's Amendments Requested
Okay. I also have two HEALTHAGEN marks, one with the design that will require an amended mark description to be more complete, but I am waiting on a few questions I had about the identifications of services to be sure those are all acceptable. So I may be sending one more email regarding potential Examiner’s amendments once I get a response on that.
Jennifer H. Dixon
Trademark Attorney, Law Office 110
Phone: 571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)PLEASE NOTE: All informal e-mail communications relevant to a trademark application will be placed in the official application record.
From: Rhynhart, Erich <Erich.Rhynhart@CVSHealth.com>
Sent: Thursday, November 19, 2020 3:20 PM
To: Dixon, Jennifer <Jennifer.Dixon@USPTO.GOV>; IPLegal <IP_Legal@CVSHealth.com>
Subject: RE: TM Apps SN 90134945 and others - AETNA applications - Examiner's Amendments Requested
We are waiting to hear back from the business.
Erich G. Rhynhart │Senior Legal Counsel, Intellectual Property
p 401-770-4897 │ f 401-765-7887
│One CVS Drive, Woonsocket, RI 02895 │ Mail Code 1160
From: Dixon, Jennifer <Jennifer.Dixon@USPTO.GOV>
Sent: Thursday, November 19, 2020 3:17 PM
To: Rhynhart, Erich <Erich.Rhynhart@CVSHealth.com>; IPLegal <IP_Legal@CVSHealth.com>
Subject: [EXTERNAL] RE: TM Apps SN 90134945 and others - AETNA applications - Examiner's Amendments Requested
**** External Email - Use Caution ****
Jennifer H. Dixon
Trademark Attorney, Law Office 110
Phone: 571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)PLEASE NOTE: All informal e-mail communications relevant to a trademark application will be placed in the official application record.
From: Dixon, Jennifer
Sent: Wednesday, November 18, 2020 4:13 PM
To: Erich.Rhynhart@CVSHealth.com; IPLegal@CVSCaremark.com
Subject: TM Apps SN 90134945 and others - AETNA applications - Examiner's Amendments Requested
This email is intended for Erich Rhynhart and/or any authorized party that can legally bind the applicant
Application Serial No.: 90134945 and others
Mark: AETNA applications
Good afternoon Mr. Rhynhart:
I am the trademark examining attorney with the USPTO assigned to the above-referenced application(s). There are some issue(s) that must be addressed, as set forth below, before the application can be approved to proceed to publication.
SN 90078190 AETNA HOME HEART CARE
(1) DISCLAIMER – The wording “HOME HEART CARE” is merely descriptive of a feature or characteristic of the applicant’s services, namely, that they are medical services, i.e., heart care provided to patients at home, as recited in the identification of services. Therefore, this wording must be disclaimed. The following statement is proposed:
No claim is made to the exclusive right to use “HOME HEART CARE” apart from the mark as shown.
(2) IDENTIFICATION OF SERVICES – The wording “at-home and remote monitoring of patients…” is indefinite because the applicant must clearly specify the nature of the services being medical services. In addition, the wording “and services” is indefinite – the applicant must either delete this wording or specify the exact services in Class 44. The following amended identification of services is suggested, if accurate (changes underlined):
Class 44
Home healthcare and medical care services; medical services, namely, at-home and remote monitoring of patients; medical services, namely, at-home and remote monitoring of patients with congenital heart issues; providing wellness and disease management programs
and services; providing information in the field of congenital heart issues; medical services, namely, at-home patient heart monitoring services
SN 90134941 THINK AGENT
(1) IDENTIFICATION OF GOODS/SERVICES – The wording “software and a mobile application” is indefinite in Class 9 because it is not clear whether the applicant is offering Class 9 goods (“downloadable software” or “recorded mobile application”) or computer services in Class 42 (“computer software development in the field of mobile applications”). Therefore, the applicant must specify the format of the mobile application for Class 9, or clearly indicate a Class 42 service and add that class to the application. The recitations for Class 42 are misclassified because these services are classified by subject matter. Also, some of the wording needs additional clarification, as indicated below. The following amended identifications of goods and services are suggested, if accurate (changes underlined):
Class 9
{SPECIFY format, e.g., downloadable, recorded} software and a {SPECIFY format, e.g., downloadable, recorded} mobile application that provides insurance agents with access to insurance information and sales data; {SPECIFY format, e.g., downloadable, recorded} software and a {SPECIFY format, e.g., downloadable, recorded} mobile application for insurance agents; {SPECIFY format, e.g., downloadable, recorded} software and a {SPECIFY format, e.g., downloadable, recorded} mobile application featuring information about insurance; {SPECIFY format, e.g., downloadable, recorded} software and a {SPECIFY format, e.g., downloadable, recorded} mobile application containing information about health care products and services, insurance products and services, sales data, and related events; {SPECIFY format, e.g., downloadable, recorded} software and a {SPECIFY format, e.g., downloadable, recorded} mobile application to serve as a virtual office for insurance agents
Class 35
Providing a website that provides insurance agents with
access to{SPECIFY function more clearly, e.g., links to websites of others featuring sales data
Class 36
(ACCEPTABLE AS FILED) Administration and underwriting of insurance; administration and underwriting of medical, dental, pharmacy, vision and behavioral health insurance services; administration of Medicare benefit plans; providing insurance information to insurance agents
(MOVED FROM CL42) Providing a website that provides insurance agents with
access to{SPECIFY function more clearly, e.g., links to websites of others featuring insurance information
(MOVED FROM CL42) Providing an interactive computer database, website and portal for insurance agents featuring {INDICATE subject matter of portal and classify accordingly, e.g., insurance information}
(MOVED FROM CL42) Providing a website featuring information about insurance
(MOVED FROM CL42) Providing a website containing information about
health care products and services,insuranceproducts andservices, sales data, and related events
Class 42
Providing a website that provides insurance agents with access to insurance information and sales data{MOVED TO CL36}; providing an interactive computer database, website and portal for insurance agents featuring {INDICATE subject matter of portal in CL42 or DELETE};providing a website featuring information about insurance{MOVED TO CL36};providing a website containing information about health care products and services{MOVE TO CL44 & CLARIFY}, insurance products and services{MOVE TO CL36 & CLARIFY}, sales data{MOVE TO CL35 & CLARIFY}, and related events; Providing a website that serves as a virtual office for insurance agents by providing virtual computer systems and virtual computer environments through cloud computing
Class 44
(MOVED FROM CL42) Providing a website containing information about health care
products andservices
SN 90134945 AETNA ON CAMPUS
(2) DISCLAIMER – The wording “ON CAMPUS” is merely descriptive of a feature or characteristic of the applicant’s services, namely, that they are provided to students on a college campus. “ON CAMPUS” means “on the area of land that contains the main buildings of a university or college.” http://www.collinsdictionary.com/us/dictionary/english/on-campus. This phrase is commonly used to refer to such students, which would be the intended customers of the services, and therefore, must be disclaimed. The following statement is proposed:
No claim is made to the exclusive right to use “ON CAMPUS” apart from the mark as shown.
(3) IDENTIFICATION OF SERVICES – The wording “software and a mobile application…” is indefinite because it is not clear whether the applicant is offering Class 9 goods (“downloadable mobile application” or “recorded mobile application”) or computer services in Class 42 (“providing temporary use of non-downloadable software mobile applications”). Therefore, the applicant must clarify whether these are Class 9 goods or Class 42 services. In addition, The wording “at-home and remote monitoring of patients…” is indefinite because the applicant must clearly specify the nature of the services being medical services. In addition, the wording “and services” is indefinite – the applicant must either delete this wording or specify the exact services in Class 44. The following amended identification of services is suggested, if accurate (changes underlined):
Class 9
{SPECIFY format, e.g., downloadable, recorded}
Providing amobile application for students to access health and insurance information; {SPECIFY format, e.g., downloadable, recorded}Providing amobile application featuring technology that enables a virtual assistant or chatbot to provide information to student health plan participants; {SPECIFY format, e.g., downloadable, recorded}Providing amobile application featuring voice command technology that enables a virtual assistant or chatbot to provide information to student health plan participants; {SPECIFY format, e.g., downloadable, recorded}Providing amobile application featuring technology that enables the provision of personalized information to student health plan participants about insurance and health care services; {SPECIFY format, e.g., downloadable, recorded}providing aninteractive mobile application in the field of insurance and health care services, health care information, and health care products that enables students to obtain information regarding health care, health care coverage and benefits, health claims status, health fund transactions, health care providers and facilities, preferred drug list, estimated health care costs, appointment scheduling, and on campus health center resources; downloadable computer software for providing health, wellness, healthcare and medical information, health plan and health insurance information, health and fitness monitor and sensor data, and health predictive analytics, and providing access to health coaching services and healthcare in the nature of telemedicine services, scheduling medical appointments, providing health care incentives and rewards, and enabling communication with medical service providers, all specifically for students
SN 90188764 AETNA FAMILY OPTION PLAN
(1) DISCLAIMER – The wording “FAMILY OPTION PLAN” is merely descriptive of a feature or characteristic of the applicant’s services, namely, that the insurance services are offered with an choice for a family plan. Therefore, this wording must be disclaimed. The following statement is proposed:
No claim is made to the exclusive right to use “FAMILY OPTION PLAN” apart from the mark as shown.
I can enter the above proposed changes by Examiner’s amendment, with your approval.
However, I need to act on this application by COB FRIDAY. Therefore, please respond with your instructions by 4:00 pm EST on Friday, November 20th. If you are unable to respond by that time, I will send an Office action making this requirement, but am still happy to do an Examiner’s amendment at a later date.
I look forward to your reply to this email or you may telephone me at the number below.
Thank you for your time and consideration.
Jennifer H. Dixon
Trademark Attorney, Law Office 110
Phone: 571-272-9359
jennifer.dixon@uspto.gov (informal inquiries only)PLEASE NOTE: All informal e-mail communications relevant to a trademark application will be placed in the official application record.