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:  January 07, 2021

 

 

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

 

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 and Classification of Goods/Services

 

The identification of goods/services is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Please see below for detailed explanations.

 

International Class 10

The wording “Diagnostic or measurement apparatus for medical and wellness purposes” is vague and too broad.  Applicant must specify particular use or purpose of the apparatus such as “heartbeat measuring apparatus” or “diagnostic apparatus for the detection of cancer.”  Moreover, the word “or” should be replaced with the word “and” because the identification should be all-inclusive.

 

Similarly, the wording “analytical apparatus for detection and warning of onset of a chronic disease episode or other health condition” also needs clarification.  This wording may include analytical apparatus for scientific purposes in International Class 9 and analytical apparatus for medical purposes in International Class 10.  Clarification is require for proper classification.  In addition, the open-ended wording “or other health condition” is vague and too broad.  Applicant must specify particular health condition.

 

International Class 44

The wording “medical information services provided via the Internet, namely digital format, website or application featuring medical information from remote locations for medical professionals, patients, caregivers or others, via electronic devices that feed information that can be accessed in real time or retrospectively” needs clarification.  It is unclear whether applicant is providing medical information or providing computer services in the nature of digital format, website or application.  Clarification is required.

 

 

Applicant may adopt the following identification, if accurate: 

 

 

INTERNATIONAL CLASS 010:  Diagnostic and measurement apparatus for medical and wellness purposes, namely, ________ [specify items individually by their common commercial name, e.g., medical diagnostic apparatus for detecting cancer]; analytical apparatus for detection and warning of onset of a chronic disease episode and _______ [specify particular health condition]; Medical measurement, monitoring and diagnostic device, namely, apparatus for measuring or monitoring respiratory, cardiac or other physical conditions of a person; Medical measurement, monitoring and diagnostic device for planned, intermittent or continuous monitoring of persons or patients in homes, hospitals or other settings or environments, namely, an medical apparatus for contact-free measurement of respiration rate and rhythm, heart rate and rhythm, auscultations of lungs and heart and other biometric parameters.

 

 

INTERNATIONAL CLASS 044: Medical services and medical analysis services for diagnostic and treatment purposes; Medical testing for diagnostic or treatment purposes; medical testing services relating to the diagnosis and treatment of disease; Medical analysis services relating to the diagnosis and treatment of patients, namely monitoring, tracking, data-analytic, detection and warning of onset of a chronic disease episode or other clinical conditions; Medical analysis services relating to the diagnosis and treatment of patients, namely monitoring of respiratory, cardiac, biometric parameters or other physical conditions of a person; Medical analysis services relating to the diagnosis and treatment of patients, namely monitoring, tracking, reporting and alert services based on planned, intermittent or continuous monitoring of persons or patients in homes, hospitals or other settings or environments; Medical information services; medical information services featuring medical information from remote locations for medical professionals, patients, caregivers or others, via electronic devices that feed information that can be accessed in real time or retrospectively provided via the Internet in the nature of digital format, website and application.

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and 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 services may not later be reinserted.  See 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.

 

 

Translation of Foreign Wording

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested: 

 

The English translation of “DONISI” in the mark is “VIBRATION”. 

 

TMEP §809.03.  See attached translation evidence.

 

 

 

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

 

 

/Sally Shih/

Trademark Examining Attorney

Law Office 106

United States Patent & Trademark Office

sally.shih@uspto.gov

571-272-9712

 

 

 

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 January 07, 2021 for

U.S. Trademark Application Serial No. 90150983

 

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. 

 

 

/Sally Shih/

Trademark Examining Attorney

Law Office 106

United States Patent & Trademark Office

sally.shih@uspto.gov

571-272-9712

 

 

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 January 07, 2021, 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.”