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:  September 09, 2021

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue 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 registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark in a prior-filed pending application may present a bar to registration of applicant’s mark.

 

SUMMARY OF ISSUES:

• Potential Section 2(D) Refusal – One Pending Application
• Identification Of Services Unacceptable – Amendment Required

 

POTENTIAL SECTION 2(d) REFUSAL – ONE PENDING APPLICATION

 

The filing date of pending U.S. Application Serial No. 90355023 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

While applicant is not required to respond to the issue of the pending application, applicant must respond to the requirements below within six months of the mailing date of this Office action to avoid abandonment.

 

IDENTIFICATION OF SERVICES UNACCEPTABLE – AMENDMENT REQUIRED

 

The services “Consulting in the field of life sciences research, namely supporting custom observational evidence generation, and providing end-to-end services including: scoping support to understand research objectives and how to leverage real world data, identification of targeted patient cohorts, derivation of variables (including outcomes, events, treatments, disease/patient characteristics, procedures), curation of custom data and analytic deliverables, and organizational support related to postdelivery publication and communication of findings” are classified incorrectly.  Applicant must amend the application to classify the services in International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

Additionally, the wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including” and “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Moreover, applicant has included a forward slash in the identification of services.  However, this term is generally not accepted in identifications when (1) it is unclear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services; (2) the nature of the goods and services is unclear; or (3) classification cannot be determined from such wording.  See TMEP §1402.03(a).  In this case, it is unclear whether the phrasing “derivation of variables” applies to “disease characteristics”, “patient characteristics”, or both.

 

An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce.  See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Therefore, applicant should replace the forward slash in the identification of services, if appropriate, or rewrite the identification with the forward slash deleted and services specified using definite and unambiguous language. 

 

Finally, the identification of services contains parentheses. Generally, an applicant should not use parentheses and brackets, including curly brackets, in identifications in order to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate (1) goods and/or services that have been deleted from registrations, (2) goods and/or services not claimed in an affidavit of incontestability, or (3) guidance to users of the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to draft an acceptable identification.  See TMEP §§1402.04, 1402.12.  The only exception for including parenthetical information in identifications is if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).”  See TMEP §1402.12.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the services.

Applicant may substitute the following wording, if accurate (amendments emphasized):

Class 35: Consulting in the field of life sciences research, namely supporting custom observational evidence generation, and providing end-to-end services including: scoping support to understand research objectives and how to leverage real world data, identification of targeted patient cohorts, derivation of variables (including outcomes, events, treatments, disease/patient characteristics, procedures), curation of custom data and analytic deliverables, and organizational support related to postdelivery publication and communication of findings

Class 42: Consulting in the field of life sciences research, namely supporting custom observational evidence generation, and providing end-to-end services, namely including: scoping support to understand research objectives and how to leverage real world data, identification of targeted patient cohorts, derivation of variables, namely, (including outcomes, events, treatments, disease and /patient characteristics, procedures), curation of custom data and analytic deliverables, and organizational support related to postdelivery publication and communication of findings

TMEP §1402.01

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.

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each requirement in this Office action.  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.

 

If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.

 

 

 

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

 

 

/Elena Kravtsoff/

Elena Kravtsoff

Trademark Examining Attorney

Law Office 113, USPTO

(571) 272-3233

 elena.kravtsoff@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 September 09, 2021 for

U.S. Trademark Application Serial No. 90527537

 

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. 

 

 

/Elena Kravtsoff/

Elena Kravtsoff

Trademark Examining Attorney

Law Office 113, USPTO

(571) 272-3233

 elena.kravtsoff@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 September 09, 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.”