United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 14, 2020

 

 

PRIORITY ACTION

 

USPTO database searched; 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.

 

 

Applicant must address issues shown below.  On December 14, 2020, the examining attorney and Troy Larson discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.

 

 

IDENTIFICATION OF SERVICES – AMENDMENT REQUIRED

 

The wording “clinical services, namely, care management services for the health care benefit plans of others, cost management services for the prescription drug benefit plans of others” in the identification of services in International Class 35 is indefinite and must be clarified because this wording is overly vague and the nature of the services has not been adequately defined.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Likewise, the wording “disease management services,” “providing information and analysis regarding health risks and treatments,” “administration of pharmaceutical preparations to medical patients used in the treatment of chronic diseases and administration of pharmaceutical preparations to medical patients used in the treatment of chronic and rare conditions” and “administration of pharmaceutical preparations to medical patients used in the treatment of chronic diseases and rare conditions” in the identification of services in International Class 44 is indefinite and must be clarified because this wording is overly vague and the nature of the services has not been adequately defined.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

In addition, the wording “support groups and social work support services for patients and family, namely, providing personal support services for families of patients with PAH disease, namely, counseling and emotional support,” “organizing and providing community based caregiver support, namely, helping to build relationships among caregivers, and between caregivers and community resources,” “providing personal support services for caregivers to the elderly, infirm, and individuals with life threatening disorders or debilitating illnesses or injuries, namely, help with medical forms, family mediation, counseling, and emotional support,” and “social work support services for patients and family, namely, providing personal support services for families of patients with PAH, namely, counseling and emotional support” in the identification of services in International Class 45 is indefinite and must be clarified because this wording is overly vague and the nature of the services has not been adequately defined.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Next, applicant has classified “consulting services regarding healthcare and pharmacy benefits” in International Class 35; however, the proper classification is International Class 36.  Therefore, applicant may respond by (1) adding International Class 36 to the application and reclassifying these services in the proper international class, (2) deleting “consulting services regarding healthcare and pharmacy benefits” from the application, or (3) deleting the remainder of the items in at least one class currently in the identification and reclassifying the specified services in the proper international class.  See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq.  If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.

 

Finally, applicant is advised to delete or modify the duplicate entries in the identification of services in International Class 44 for “disease management services” and “behavioral health services.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the services, but not to broaden or expand the services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted services may not later be reinserted.  TMEP §1402.07(e).

 

Applicant may substitute the following identification of services, with acceptable amendments in bold, if accurate:

 

Class 35:         Retail specialized pharmacy services focusing on specific diseases, conditions and therapies, namely, serving groups of patients with common medical conditions and medication needs; Cost management for the health and prescription drug plans of others in the field of pharmaceuticals, clinical care and health care treatment; business services, namely, prescription drug formulary cost management services; consulting services regarding healthcare costs and pharmacy services; Care cost management for the health and prescription drug plans of others in the field of pharmaceuticals, clinical care and health care treatment, all to achieve cost savings and improved health outcomes; care cost management for the health and prescription drug plans of others, to achieve cost savings and improved health outcomes and cost management services for the prescription drug benefit plans of others

 

Class 36:         Consulting services regarding healthcare plan benefits and pharmacy benefits

 

Class 44:         Medical services, namely, health and medication support services for groups of patients with common medical conditions and medication needs; Providing medication information to health care providers that prescribe pulmonary arterial hypertension (PAH) medications, and other medications for chronic and rare conditions; providing personal health information through a global computer network; health information services; health care services; behavioral health services; Advisory services and consultancy regarding healthcare; healthcare services, namely, wellness and disease management programs; providing health consultation services to patients with chronic conditions regarding medication compliance, and providing information regarding health and safety issues regarding chronic conditions; providing medical information and analysis in the fields of healthcare, pharmaceuticals; Health and wellness consultation and advisory services; disease management programs; providing information regarding health, health care, and mental health management; care management services, namely, providing disease state management programs; health care consulting and information services in the fields of preventative health care and total health management; providing health information and analysis regarding health risks and treatments; Healthcare, namely, disease management services, managed health care services, mental health services, behavioral health services, medical assistance services, namely, disease management assistance services, medical assistance wellness programs, mental health medical assistance services, and behavioral health medical assistance services, providing medical assistance to individuals to help them make health, wellness and nutritional changes in their daily living to improve health; and medical screenings, namely, medical screenings for disease management, medical screenings as part of wellness programs, mental health medical screening services, and behavioral health medical screening services; disease management services, namely, {applicant must either delete this duplicative entry or modify it so that it is no longer duplicative}; health care services, namely, managed health care services; mental health services; behavioral health services, namely, {applicant must either delete this duplicative entry or modify it so that it is no longer duplicative}; In-home nursing care; health care and in-home medical care specializing in the treatment, prevention and control of chronic diseases involving administration of specialty medications; medical support services for the treatment, and control of chronic and rare conditions; dispensing of pharmaceutical preparations to medical patients used in the treatment of chronic diseases and administration of pharmaceutical preparations to medical patients used in the treatment of chronic and rare conditions; dispensing of pharmaceutical preparations to medical patients used in the treatment of chronic diseases and rare conditions; providing information concerning medical care and treatment; disease management services, namely, {applicant must either delete this duplicative entry or modify it so that it is no longer duplicative}; healthcare services consisting of providing medical guidance and consultation to chronically ill patients; pharmacy consultation services, namely, specialized pharmaceutical advice, patient support programs in the nature of providing information on medications and prescriptions

 

Class 45:         Case management services, namely, coordinating patient, medical, pharmaceutical, physical, social, personal and behavioral care services to improve health, affordability and patient experience for health plan members; Support groups and social work support services for patients and family, namely, providing personal support services for families of patients with pulmonary arterial hypertension (PAH) disease, namely, emotional counseling and emotional support; Caregiver support and counseling, namely, organizing and conducting support groups in the field of family care; Social introduction services in the nature of organizing and providing community based caregiver support, namely, helping to build relationships among caregivers, and between caregivers and community resources; Providing personal support services for caregivers to the elderly, infirm, and individuals with life threatening disorders or debilitating illnesses or injuries, namely, help with medical forms, family mediation, emotional counseling, and emotional support; providing information in the field of parenting concerning intra-family relationships; coordination of daily activities in the nature of providing non-medical assisted living services for personal purposes in the nature of scheduling appointments; caregiver support in the nature of personal concierge services for others comprising making requested personal arrangements and reservations, and providing customer specific information to meet individual needs; Social work support services for patients and family, namely, providing personal support services for families of patients with pulmonary arterial hypertension (PAH), namely, emotional counseling and emotional support

 

Applicant’s 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 services or add 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 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 services will further limit scope, and once 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.

 

 

MULTIPLE-CLASS APPLICATION REQUIREMENTS – ADVISORY

 

The application identifies services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule).  The application identifies services that are classified in at least four (4) classes; however, applicant submitted fees sufficient for only three (3) classes.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

The fee for adding classes to a TEAS Standard application is $275 per class.  See 37 C.F.R. §2.6(a)(1)(iii).  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

 

 

EXAMINER’S AMENDMENT

 

Application has been amended as shown below.  As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below.  Please notify the examining attorney immediately of any objections.  TMEP §707.  In addition, applicant is advised that amendments to the services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the services are not permitted.  37 C.F.R. §2.71(a).

 

 

DISCLAIMER ADDED

 

The following disclaimer statement is added to the record:

 

No claim is made to the exclusive right to use “WELLBEING” apart from the mark as shown.

 

See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(c), 1213.08(a)(i).

 

 

RESPONSE GUIDELINES

 

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.

 

 

/Timothy J. Callery/

Timothy J. Callery

Examining Attorney

Law Office 121

(571) 270-1987

tim.callery@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS 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 14, 2020 for

U.S. Trademark Application Serial No. 90159832

 

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. 

 

 

/Timothy J. Callery/

Timothy J. Callery

Examining Attorney

Law Office 121

(571) 270-1987

tim.callery@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 14, 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.”