Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

Serial Number  76/116977

 

Action on this application had been suspended pending the disposition of several applications.  The applications have been abandoned.  The examining attorney raises the identification issue below.  The examining attorney apologizes for any inconvenience that this might cause. 

 

Mark is Likely to Cause Confusion

 

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 Nos. 2322017 and 2371902 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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).

 

Analysis of Applicant’s Mark and Registered Mark

 

First, a comparison of the respective marks show that they are comprised either in whole or significant part of the term “SMARTCARE.”  Accordingly, the applicant’s mark, “SMARTCARE,” is similar in sound, appearance, connotation and commercial impression to Registration No. 2322017’s mark “SMARTCARE” and Registration No. 2371902’s mark “SMARTCARE HEALTH PLAN.”   Similarity in any one of these elements alone is sufficient to find a likelihood of confusion.   In re Mack, 197 USPQ 755 (TTAB 1977).  All the marks share the common term “SMARTCARE.”  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 §1207.01(b).

 

Second, a comparison of the applicant’s services, “case management, health education and compliance support services through a preferred provider organization for patients identified as having or being at risk for a chronic or catastrophic disease,” to the registrants’ services shows the relationship between them.  Registration No. 2322017’s mark is for worker’s compensation managed care insurance services in connection with claims administration.  Registration No. 2371902’s mark is for administration of pre-paid health care maintenance plans. 

 

It should be noted that third party registrations that do no cover a wide variety of goods might have some probative value in establishing a relationship between the goods. In re Parfums Schiaparelli Inc., 37 USPQ2d 1864 (TTAB 1995).  A search of Office records reveals a number or registrations for workers compensation services and pre-paid health care plans and preferred provider services as services being utilized under the same mark (See attached for random examples).  The examining attorney must also consider any goods or services in the registrant's normal fields of expansion to determine whether the registrant's goods or services are related to the applicant's identified goods or services under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  Accordingly, the mark is likely to cause consumer confusion as to source.

 

Other Considerations

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If applicant chooses to respond to the refusal to register, the following issue must also be addressed.

 

Recitation of Services

 

The wording used in the recitation of services is too broad because it could include services classified in different international classes.  The applicant may amend the identification to substitute the following wording, if accurate: 

 

Educational services, namely, conducting _____ (indicate specific form, e.g. classes, seminars, workshops) in the field of healthcare for patients identified as having or being at risk for a chronic or catastrophic disease in Class 41.

-and/or-

Providing health information to, and medical consultation to ensure treatment compliance for, patients identified as having or being at risk for a chronic or catastrophic disease in Class 44.

-and/or-

Case management services, namely, coordination of legal, social and psychological services for patients identified as having or being at risk for a chronic or catastrophic disease in Class 45.  TMEP Section 1402.01 and 1402.03(a). 

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.  The applicant must respond to this issue in order for the application to proceed.  If the applicant fails to respond to this issue the application may proceed with the wording in non-italicized print only.

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)     Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)     Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)     For each additional class of goods and/or services, applicant must submit:

 

(a)     dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)     one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)     a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)     verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification. 

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, applicants may follow either the new standard character drawing rules or the typed drawing rules in force prior to their amendment on November 2, 2003.  TMEP §807.03(i).

 

Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was amended to replace “typed” drawings with “standard character” drawings.  In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font style, size, or color.  A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style.  37 C.F.R. §2.52; Exam Guide 01-03, section I; See TMEP §§807.06 et seq. and TMEP §807.07 et seq.  

 

The following is standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

If the applicant has any questions or needs assistance in responding to this office action, please telephone the assigned examining attorney.

 

 

/Jason F. Turner/

Examining Attorney

Law Office 108

(571) 272-9353

(571) 272-9108 (Fax)

(703) 305-8747 (Status)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.