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:  March 24, 2021

 

 The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Section 2(d) Refusal – Likelihood of Confusion – Classes 10, 42
• Advisory – Ownership of Cited Registrations
• Foreign Registration Required
• Filing Date of Foreign Application Required for Priority
• Identification of Goods
• Identification of Services
• Clarification of Mark Description and Color Claim Required
• New Drawing Required

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CLASSES 10, 42

**THIS REFUSAL ONLY APPLIES TO THE GOODS  AND SERVICES SPECIFIED HEREIN**

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2115253; 3101068; 4071260; 5024418; 5388814; 4897177; 5010766; 5010767; 5827470; 3580869.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is QUANTA (in special character form) for, in relevant part, goods and services currently identified as:

 

-          International Class 10:            Surgical and medical apparatus and instruments; orthopedic articles; suture materials; medical instruments and apparatus; medical apparatus for renal dialysis; dialysis machines for medical use; dialysis membranes; hypodermic needles for use in renal dialysis; hose systems for peritoneal dialysis

 

-          International Class 42:            scientific investigations for medical purposes; analysis services for the purposes of medical research; providing scientific information in the field of medical disorders and their treatment; provision of information relating to medical research; provision of information relating to medical apparatus, instruments, preparations, products, and research

 

Registrants’ marks are:

 

1. QUANTA LITE (Reg. No. 2115253) for, in relevant part, “kits and components for medical diagnostics use, namely, microwells and reagent vials” in International Class 10;

 

2. QUANTASURE (Reg. No. 3101068) for “Scientific research; medical research; health care laboratories; and medical laboratories” in International Class 42;

 

3. QUANTA FLASH (Reg. No. 4071260) for “Reagent vials for clinical medical diagnostic use” in International Class 10;

 

4. QUANTAMATRIX (Reg. No. 5024418) for “Medical research; Blood analysis services; Basic and clinical research in the field of respiratory science and medicine; Biotechnology research; Chemical research; Design and development of computer software related to measuring machines and instruments; Design and development of computer hardware related to measuring machines and instruments; Biochemical research and development; Pharmaceutical research and development; Laboratory analysis in the field of bacteriology, chemistry, medicine, biotechnology, pharmaceuticals; Laboratory research in the field of bacteriology, chemistry, medicine, biotechnology, pharmaceuticals; Bacteriological consultation and research; Bacteriological research and testing; Biomedical research services; Body composition analysis services; Blood analysis services; Biotechnology research; scientific research in the field of developing medical products; scientific research in the field of medical prediction of treating diseases; Scientific research in the fields of biomedicine; medical research in the field of biopsies used in medical research, treatment, and diagnosis; medical research in the field of blood testing used in medical research, treatment, and diagnosis; scientific research consultation and providing scientific research information in the fields of medicine, health, and pharmacology; scientific research advisory services; scientific research advisory services relating to technological research; Providing scientific research information” in International Class 42;

 

5. QUANTA SYSTEM Q1 LASER IN OUR DNA (Reg. No. 5388814) for, in relevant part, “Lasers for medical purposes; solid state lasers for medical purposes; medical apparatus and instruments for diagnostic medical purposes, namely, optical systems comprised of articulated arms with 7 mirrors for beam displacement, fiber optics, including sterile fiber optics for treating patients and hand pieces including optics for beam interactions with the patients” in International Class 10;

 

6. Q QUANTA (Reg. No. 4897177) for “surgical, medical, dental and veterinary apparatus and instruments, specifically, hemodialysis apparatus, disposable tubing and cartridges for blood purification, dialyzers, and hemofilters; artificial limbs, eyes and teeth; orthopedic articles, specifically, orthopedic supports; suture materials; medical instruments and apparatus for dialysis treatment; medical apparatus for renal dialysis; dialysis machines for medical use; dialysis membrane tubing for medical purposes; hypodermic needles for use in renal dialysis; hose systems for peritoneal dialysis apparatus, composed primarily of connection hoses and stoppers to drain the dialysis waste line” in International Class 10;

 

7. QUANTA DIALYSIS TECHNOLOGIES (Reg. No. 5010766) for “Surgical, medical, dental and veterinary apparatus and instruments, specifically, haemodialysis apparatus, disposable tubing and cartridges for blood purification, dialysers and hemofilters; artificial limbs, eyes and teeth; orthopaedic articles, specifically orthopaedic supports; suture materials; medical instruments and apparatus for dialysis treatment; medical apparatus for renal dialysis; dialysis machines for medical use; dialysis membrane tubing for medical purposes; hypodermic needles for use in renal dialysis; apparatus, composed primarily of connection hoses and stoppers to drain the dialysis waste line” in International Class 10;

 

8. QUANTA FLUID SOLUTIONS (Reg. No. 5010767) for “Surgical, medical, dental and veterinary apparatus and instruments, specifically, haemodialysis apparatus, disposable tubing and cartridges for blood purification, dialysers and hemofilters; artificial limbs, eyes and teeth; orthopaedic articles, specifically orthopaedic supports; suture materials; medical instruments and apparatus for dialysis treatment; medical apparatus for renal dialysis; dialysis machines for medical use; dialysis membrane tubing for medical purposes; hypodermic needles for use in renal dialysis; apparatus, composed primarily of connection hoses and stoppers to drain the dialysis waste line” in International Class 10;

 

9. QUANTAFLO (Reg. No. 5827470) for “MEDICAL APPARATUS AND INSTRUMENTS, NAMELY, A NONINVASIVE SYSTEM FOR MEASURING PERIPHERAL BLOOD CIRCULATION, NAMELY, A BLOOD FLOW SENSOR AND ASSOCIATED COMPUTER HARDWARE AND SOFTWARE, ALL SOLD AS A UNIT” in International Class 10; and

 

10. QUANTA-LYSER (Reg. No. 3580869) for “Medical apparatus and instruments for laboratory analysis and clinical diagnosis of human diseases, specifically immunoassay analyzers” in International Class 10.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

Comparison of Marks:

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Here, applicant’s and registrants’ marks are similar because they share the identical dominant first term, QUANTA.

 

Applicant’s deletion of LITE, SURE, FLASH, MATRIX, SYSTEM Q1 LASER IN OUR DNA, Q, DIALYSIS TECHNOLOGIES, FLUID SOLUTIONS, FLO and LYSER from the registered marks fails to obviate the overall similarity of the marks because, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Further, applicant’s addition or deletion of design elements fails to obviate the overall similarity of the marks because, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Given the shared dominant first term, QUANTA, the marks at issue create a highly similar overall commercial impression which is sufficient for finding a likelihood of confusion.

 

Relatedness of Goods and Services:

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Relatedness as to Reg. Nos. 2115253; 4071260; 5388814; 5827470; 3580869

 

Here, applicant’s surgical and medical apparatus and instruments, orthopedic articles and medical instruments and apparatus are closely related to registrants’ kits for medical diagnostic use, reagents for medical diagnostic use, lasers for medical purposes, system for measuring peripheral blood circulation and immunoassay analysers because applicant’s goods are broadly written so as to encompass registrants’ goods.

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the application uses broad wording to describe the goods, which presumably encompasses all goods of the type described, including registrants’ more narrow goods.  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Thus, applicant’s and registrant’s goods are related.

 

Relatedness as to Reg. Nos. 4897177; 5010766; 5010767

 

Similarly, here, applicant’s entire identification in Class 10 is encompassed in registrant’s identifications in Class 10. As such, the goods are considered closely related for Section 2(d) analysis purposes. As discussed below, it appears applicant may own these registrations. In response, applicant may claim ownership of the registrations to obviate the refusal as to these registrations.

 

Relatedness as to Reg. Nos. 3101068; 5024418

 

Once more, applicant’s services are closely related to registrants’ services because applicant’s services are encompassed in and identical to registrants’ services. As such, the services are considered closely related for Section 2(d) analysis purposes.

 

Given the foregoing, registration is refused under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

ADVISORY – OWNERSHIP OF CITED REGISTRATIONS

 

If the marks in the cited registrations are owned by applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)        Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)        Submit copies of documents evidencing the chain of title; or

 

(3)        Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 4897177; 5010766; 5010767.”  To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing.  The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

FOREIGN REGISTRATION REQUIRED

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and a claim of priority under Section 44(d) based on a foreign application.  See 15 U.S.C. §§1051(b), 1126(d); 37 C.F.R. §2.34(a)(2), (a)(4).  However, no copy of a foreign registration has been provided even though the application indicates applicant’s intent to rely on Section 44(e) as an additional basis for registration.  See 15 U.S.C. §1126(e).

 

An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016.  In addition, an applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  15 U.S.C. §1126(b); TMEP §§1002.01, 1004.

 

Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available.  TMEP §1003.04(a).  A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin.  TMEP §1004.01.  If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.  In addition, applicant must also provide an English translation if the foreign registration is not written in English.  37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b).  The translation should be signed by the translator.  TMEP §1004.01(b).

 

If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available.  TMEP §§716.02(b), 1003.04(b).

 

If applicant cannot satisfy the requirements of a Section 44(e) basis, applicant may request that the mark be approved for publication based solely on the Section 1(b) basis.  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.35(b)(1); TMEP §§806.02(f), 806.04(b), 1003.04(b).  Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed.  See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.  Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration.  See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.04(b). 

 

Alternatively, applicant has the option to amend the application to rely solely on the Section 44(e) basis and request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04.  The foreign registration alone may serve as the basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).

 

FILING DATE OF FOREIGN APPLICATION REQUIRED FOR PRIORITY

 

Applicant must provide the filing date of the foreign application that supports the filing basis under Trademark Act Section 44(d).  37 C.F.R. §2.34(a)(4)(i)(A); TMEP §§1003, 1003.02; see 15 U.S.C. §1126(d).

 

IDENTIFICATION OF GOODS

 

Class 9

 

The wording “Magnetic data carriers relating to the medical and healthcare sector” is unacceptable as indefinite because applicant must specify if the goods are blank or prerecorded.  

 

The wording “data processing equipment relating to the medical and healthcare sector” is unacceptable as indefinite because applicant must specify the nature of the equipment.

 

The wording “electronic data processing equipment relating to the medical and healthcare sector” is unacceptable as indefinite because applicant must specify the nature of the equipment.

 

The wording “computer software and publication in electronic form supplied on line from databases, from the Internet (including web sites) or from facilities provided on the Internet all relating to the medical and healthcare sector; platform software relating to the medical and healthcare fields; downloadable computer software relating to the medical and healthcare field; Computer software relating to the medical and healthcare sectors; smartphone software applications; medical and healthcare software for mobile telephones; software relating to the medical and healthcare fields for portable electronic devices; software for scheduling medical appointments; software for audio and video communication between patients and medical professionals; software for recording audio and video data relating to the healthcare and medical sector; instant messaging software which enables direct communication between patients and medical professionals; software enabling direct communication between patients and medical professionals; software and apparatus for the transmission of medical data and information; software for recording medical data; software for monitoring medical data and vital statistics; software for diagnosing medical conditions; software enabling the request and issue of medical prescriptions; real time collaborative editing (RTCE) software and platforms relating to the healthcare and medical sector” is unacceptable as indefinite and overly broad because applicant must specify if the software is downloadable (Class 9) or non-downloadable (Class 42). Further, while some of the entries include the use/function of the software, many of the entries do not include the function/use for the software, which is required. 

 

Moreover, applicant must delete the parenthetical language “including websites” and incorporate the wording into the identification. In addition, applicant must specify that nature of the publications, i.e. e-books and must specify the nature of the apparatus for the transmission of medical data and information.

 

Class 10

 

The wording “medical apparatus and instruments” is unacceptable as indefinite because applicant must specify the nature of the goods.

 

The wording “orthopedic articles” is unacceptable as indefinite because applicant must specify the nature of the goods.

 

The wording “dialysis membranes” is unacceptable as indefinite because applicant must further specify the nature of the goods.

 

Applicant may adopt any or all of the following suggested amendment to the identification of goods:

 

-          International Class 9:              {blank or prerecorded} Magnetic data carriers relating to the medical and healthcare sector; data processing equipment relating to the medical and healthcare sector, namely, {specify nature, i.e. memories, couplers}; electronic data processing equipment relating to the medical and healthcare sector, namely, {specify nature, i.e. memories, couplers}; downloadable computer software and publication in electronic form supplied on line from databases, from the Internet including web sites or from facilities provided on the Internet all relating to the medical and healthcare sector, namely, software for {specify use} and electronic publications being {specify nature, i.e. e-books}; downloadable platform software relating to the medical and healthcare fields for {specify use}; downloadable computer software relating to the medical and healthcare field for {specify use}; downloadable computer software relating to the medical and healthcare sectors for {specify use}; smartphone software applications, downloadable for data management, monitoring and tracking health and medical information; Downloadable computer software and downloadable mobile application software for data management, monitoring and tracking health and medical information, organizing, viewing and sharing data; Downloadable medical and healthcare software for mobile telephones for {specify use}; Downloadable software relating to the medical and healthcare fields for portable electronic devices for {specify use}; Downloadable software for scheduling medical appointments; Downloadable software for audio and video communication between patients and medical professionals; Downloadable software for recording audio and video data relating to the healthcare and medical sector; Downloadable instant messaging software which enables direct communication between patients and medical professionals; Downloadable software enabling direct communication between patients and medical professionals; Downloadable software for the transmission of medical data and information; apparatus for the transmission of medical data and information, namely, {specify nature of goods}; Downloadable software for recording medical data; Downloadable software for monitoring medical data and vital statistics; Downloadable software for diagnosing medical conditions; Downloadable software enabling the request and issue of medical prescriptions; Downloadable real time collaborative editing (RTCE) software and software platforms relating to the healthcare and medical sector for {specify use}

 

-          International Class 10:            Surgical apparatus and instruments; medical apparatus and instruments, namely, {specify nature, i.e. orthopedic apparatus and instruments}; orthopedic articles, namely, {specify type, i.e. walkers}; suture materials; medical instruments and apparatus, namely, {specify nature, i.e. orthopedic apparatus and instruments}; medical apparatus for renal dialysis; dialysis machines for medical use; dialysis membranes for use with dialysis machines; hypodermic needles for use in renal dialysis; hose systems for peritoneal dialysis

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

IDENTIFICATION OF SERVICES

 

The wording “Information technology services for the healthcare industry” is unacceptable as indefinite because applicant must clarify the function of the services.

 

The wording “providing temporary use of online non-downloadable software relating to the healthcare and medical field” is unacceptable as indefinite because applicant must specify the function of the software.

 

The wording “writing of computer programmes for medical applications” is unacceptable as indefinite because applicant must specify the nature of the programmes.

 

The wording “software as a service (SAAS) services relating to the healthcare and medical field” is unacceptable as indefinite because applicant must specify the function of the software and must specify that the services feature software.

 

The wording “computer software (Updating of -) relating to the healthcare and medical field” is unacceptable as indefinite because applicant must delete the parenthetical language and incorporate the wording into the identification.

 

The wording “provision of information relating to medical apparatus, instruments, preparations, products, and research” is unacceptable as indefinite because applicant must further specify the Class 42 subject matter of the information services.

 

The wording “hosting computer application software in the field of knowledge management for creating searchable databases of information and data relating to the healthcare and medical field; hosting medical or healthcare websites; hosting of mobile applications relating to the healthcare and medical field” is unacceptable as indefinite because applicant must specify that the services are performed for others.

 

The wording “Platform as a Service (PaaS) relating to the healthcare and medical field” is unacceptable as indefinite because applicant must specify the function of the software and must specify that the PAAS services feature computer software platforms.

 

The wording “hosting of databases relating to the healthcare and medical field; hosting of web portals relating to the healthcare and medical field” is unacceptable as indefinite because applicant must specify the type of databases hosted and must specify that the services are performed for others.

 

The wording “Hosting web portals” is unacceptable as indefinite because applicant must specify that the services are performed for others.

 

Applicant may adopt any or all of the following suggested amendment, if accurate:

 

-          International Class 42:            Information technology consulting services for the healthcare industry; scientific investigations for medical purposes; analysis services for the purposes of medical research; computer programming in the medical field; electronic storage of medical records; providing scientific information in the field of medical disorders and their treatment; providing temporary use of online non-downloadable software relating to the healthcare and medical field for {specify use}; Providing use of non-downloadable software for data management, monitoring and tracking health and medical information, organizing, viewing data and sharing data; writing of computer software programmes for medical applications; software as a service (SAAS) services featuring software relating to the healthcare and medical field for {specify use}; services for designing computer software relating to the healthcare and medical field; services for updating computer software relating to the healthcare and medical field; computer software development relating to the healthcare and medical field; design and development of computer hardware and software relating to the healthcare and medical field; development and creation of computer programmes for data processing relating to the healthcare and medical field; updating of computer software relating to the healthcare and medical field; Computer system design relating to the healthcare and medical field; provision of information relating to medical research; provision of information relating to the design and development of medical apparatus, instruments, preparations, products, and medical research; conversion of data or documents from physical to electronic media relating to the healthcare and medical field; hosting computer application software for others in the field of knowledge management for creating searchable databases of information and data relating to the healthcare and medical field; hosting medical or healthcare websites; hosting of mobile applications for others relating to the healthcare and medical field; development of computer platforms relating to the healthcare and medical field; Platform as a Service (PaaS) featuring computer software platforms relating to the healthcare and medical field for {specify use}; hosting of {specify type, i.e. software for, websites featuring, on-line web facilities for} databases relating to the healthcare and medical field for others; hosting of web portals for others relating to the healthcare and medical field; cloud hosting provider services relating to the healthcare and medical field; consultancy and development of software, including provision of such services via the Internet relating to the healthcare and medical field

 

Applicant may amend the identification 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.  Generally, any deleted 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.

 

CLARIFICATION OF MARK DESCRIPTION AND COLOR CLAIM REQUIRED

 

The drawing shows the applied-for mark in various colors, including white; however, the color claim and description of the mark do not reference the color white.  The color claim and description must be complete and reference all the colors in the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  Therefore, applicant must clarify whether white is used as a color in the mark or to indicate background, outlining, shading, and/or transparent areas.  TMEP §807.07(d); see 37 C.F.R. §2.61(b).

 

To clarify how black, white and/or gray are being used in the mark, applicant may satisfy one of the following:

 

(1)        If white is a feature of the mark, applicant must amend the color claim to include them and amend the description to identify where white appears in the literal and/or design elements of the mark.  The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors blue, green and white are claimed as a feature of the mark.”

 

Description:  “The mark consists of the literal element QUANTA in blue and green stylized font on a white background.”

 

(2)        If white is not a feature of the mark, applicant must amend the description to state that white represents background, outlining, shading and/or transparent areas and are not part of the mark.  The following description is suggested, if accurate:

 

“The mark consists of the literal element QUANTA in blue and green stylized font; the color white represents background and is not claimed as a feature of the mark.”

 

TMEP §807.07(d).

 

NEW DRAWING REQUIRED

 

Applicant must submit a new drawing showing the horizontal line below the mark deleted from the mark because it appears to not be part of the mark and was unintentionally included in the drawing.  See 37 C.F.R. §2.72; TMEP §§807.02, 807.14(a). 

 

Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the applied-for mark on the drawing.  See 37 C.F.R. §2.72; TMEP §§807.14 et seq.  For more information about changes to the mark in the drawing after the application filing date, see the Drawing webpage.

 

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.    

 

 

/Tara L. Bhupathi/

Examining Attorney

Law Office 124

(571) 272-5557

tara.bhupathi@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 March 24, 2021 for

U.S. Trademark Application Serial No. 90269984

 

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. 

 

 

/Tara L. Bhupathi/

Examining Attorney

Law Office 124

(571) 272-5557

tara.bhupathi@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 March 24, 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.”