UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/081960
APPLICANT: Ringminder, Inc.
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CORRESPONDENT ADDRESS: ARTHUR G YEAGER 112 W ADAMS ST STE 1305 JACKSONVILLE FL 32202-3853
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom113@uspto.gov
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MARK: MEDMINDER
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/081960
Please note, the application was previously suspended pending the disposition of U.S. Application Serial Nos. 75686904, 75853483 (which has been abandoned) and 76032158 (which remains suspended). Please note that U.S. Application Serial No. 75686904 has now been registered (U.S. Registration No. 2547841). As such, a likelihood of confusion refusal is being issued below.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified services, so resembles the mark in U.S. Registration No. 2547841 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
In this case, the applicant has applied to register the mark “MEDMINDER” for the following:
“customized automated voice messaging services, namely, the recording of messages, by patients, doctors, dentists, or pharmacists, storage and subsequent transmission of voice messages by telephone to a selected telephone number, to the patient, for notification of appointments and taking of medications once or several times a day” in International Class 38.
The registered mark is “MEDREMINDER” and design for the following:
“providing notification services to individuals, namely, informing them to take medications at predetermined times and providing them with dosage and usage information, all by means of electronic wireless devices” in International Class 42.
With regard to the first step in the likelihood of confusion analysis, the marks are similar in nature. The applicant’s mark and registered mark consists of the highly similar dominant and literal portions “MEDMINDER” versus “MEDREMINDER” respectively, thus creating a strong likelihood of confusion. The registered mark contains the additional terminology “RE,” which does not obviate the marks to a degree that removes the likelihood of confusion. The literal portions of the marks remain substantially similar in appearance, pronunciation and commercial to a degree that creates a likelihood of confusion.
Moreover, the fact that the registrant’s mark contains a design element and some additional wording (“RE”) does not remove the similarity of the marks. While the examining attorney must look at the marks in their entireties under Section 2(d), one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988). When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).
When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). TMEP §1207.01(b).
In this regard, the examining attorney notes that the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).
With regard to the second step in the analysis, the examining attorney must determine whether there is a likelihood of confusion on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973).
In this instance, the applicant’s services and registered services identically entail the notification/messaging of individuals to remind them to take medication, essentially rendering the services as identical (despite the differing international class placement) and creating an extremely strong likelihood of confusion as to source of services in the minds of purchasing consumer. Furthermore, the applicant’s and registrant’s services are seemingly performed in all normal and identical channels of trade and are made available for all potential customers.
The services of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In this case, the literal portion of the marks are highly similar and the services are highly similar (and potentially identical). Accordingly, it is the examining attorney’s conclusion that the similarities between the marks and the services of the parties are so great as to create a likelihood of confusion among consumers.
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant, who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
No set form is required for response to this Office action. The applicant must respond to each point raised. The applicant should simply set forth the required changes or statements and request that the Office enter them. The applicant must sign the response. In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.
Christopher Scott Adkins
/Christopher S. Adkins/
Christopher Adkins
Examining Attorney
Law Office 113
(703) 308-9113 xt. 437
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.