Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

Serial Number  76/348236

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

 

Applicant:	DOCUSYS, INC.	:	BEFORE THE
Trademark:	DOCUVIEW	:	TRADEMARK TRIAL
Serial No:	76/348236	:	AND
Attorney:	Michael D. Braunstein LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK	:	APPEAL BOARD
Address:	600 South Avenue West Westfield, NJ 07090-1497	:	ON APPEAL

EXAMINING ATTORNEY’S APPEAL BRIEF

 

       Applicant has appealed the Trademark Examining Attorney’s final refusal to register the mark

 

DOCUVIEW for “medical system software for controlling the operation and management of

 

medical systems for real time managing and tracking patients and patient information, drug

 

administration information, surgical procedure status information, and hospital staff and medical

 

equipment throughout the perioperative environment, including electronic displays for visually

 

displaying information, devices for reading machine readable information, and data input devices”

 

on the grounds of likelihood of confusion under Trademark Act Section 2(d), 15 U.S.C. Section

 

1052(d).

 

I. FACTS

 

       Applicant applied for registration on the Principal Register for the trademark “DOCUVIEW”

 

in typed form for “medical system software for controlling the operation and management of

 

medical systems for real time managing and tracking patients and patient information, drug

 

administration information, surgical procedure status information, and hospital staff and medical

 

equipment throughout the perioperative environment, including electronic displays for visually

 

displaying information, devices for reading machine readable information, and data input devices”

 

on December, 13, 2001.  Registration was refused under Section 2(d) of the Trademark Act, 15

 

U.S.C. Section 1052(d), because of the likelihood of confusion with Registration No. 2,152,721 for

 

the mark DOCUVIEW in typed form for “computer programs for document management and

 

production.”  This appeal, filed June 9, 2003, follows the Examining Attorney’s final refusal on the

 

issue dated December 10, 2002.

 

II. ARGUMENT

 

THE APPLICANT’S MARK AND THE REGISTRANT’S MARK ARE IDENTICAL AND THE GOODS ARE  RELATED SUCH THAT THERE EXISTS A LIKELIHOOD OF CONFUSION, MISTAKE, OR DECEPTION UNDER SECTION 2(d) OF THE TRADEMARK ACT.

 

        Each case must be analyzed in two steps to determine whether there is a likelihood of

 

confusion.  First, the marks themselves must be compared for similarities in appearance, sound,

 

connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357,

 

177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services must be compared 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); TMEP §§1207.01 et seq. 

 

        Any doubt as to the issue of likelihood of confusion must be resolved  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).

 

                        I. A.    THE MARKS ARE IDENTICAL

 

        In this case, the applicant’s mark and the registrant’s mark are identical.  The

 

applicant’s mark is DOCUVIEW in typed form.  The registrant’s mark is DOCUVIEW in typed

 

form.   Obviously, the marks suggest that the goods are intended to facilitate the viewing of

 

documents.  

 

 

I.  B.   THE REGISTRANT’S IDENTIFICATION OF GOODS IS BROAD ENOUGH TO ENCOMPASS THE APPLICANT’S GOODS AND IS PRESUMED TO DO SO

 

        If the marks of the respective parties are identical, the relationship between the goods or

 

services of the respective parties need not be as close to support a finding of likelihood of

 

confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor

 

Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a). 

 

        The applicant’s goods are “medical system software for controlling the operation and

 

management of medical systems for real time managing and tracking patients and patient

 

information, drug administration information, surgical procedure status information, and hospital

 

staff and medical equipment throughout the perioperative environment, including electronic

 

displays for visually displaying information, devices for reading machine readable information, and

 

data input devices”  The registrant’s goods are “computer programs for document management and

 

production.” 

 

        The  applicant has argued that the refusal in this case should be reversed because its goods

 

are “very different, in both function and application, from what is encompassed by Registrant’s

 

identification.”  Applicant’s Brief at p. 8.  Applicant seeks to support this contention by limiting

 

the scope of the registrant’s goods to “software that deals with conventional documents, not any

 

computer software that produces a viewable image.”  Applicant’s Brief at p. 8.   A “traditional”

 

definition of the term “document” is submitted as the underlying basis for this impermissible

 

limitation of the registrant’s identification of goods.  The definition is taken from a World Book

 

Dictionary published in 1985 and limits a document to something “written or printed.”  Clearly, the

 

meanings of the terms used to identify the registrant’s goods should not be determined by reference

 

to outdated dictionaries.  The examining attorney respectfully requests that the Board take judicial

 

notice of the attached definitions of the term “document” taken from online dictionaries accessed

 

via www.onelook.com.  These definitions clearly show that the term “document” as used in context

 

with the registrant’s goods, refers not only to files produced by a word processor, but any file

 

produced by a software application.  Therefore, the applicant’s claim that the registrant’s

 

identification should be limited to “software that deals with conventional documents” is not

 

persuasive.  The attached definitions also clearly indicate that the applicant’s goods are in fact used

 

for displaying and managing documents.  Applicant’s goods are used for controlling, managing and

 

displaying patient information, drug administration information and surgical procedure status

 

information. 

 

        The attached definitions clearly indicate that it would not be inaccurate to refer to this

 

information which is managed by a software application as patient information documents, drug

 

administration information documents and surgical procedure status information documents.  In

 

fact, the product description information taken from the applicant’s website and entered into the

 

record via the applicant’s request for reconsideration field May 8, 2003 depicts the goods being

 

used to collect and manage information in the form of a document that is labeled “Electronic White

 

Board.”  The definitions and evidence of record in this case contradict the applicant’s assertion that

 

its goods are not used to create or manage documents.  

 

       It is well settled that a determination of whether there is a likelihood of confusion must be

 

made on the basis of the goods/services identified in the application and registration.  If the cited

 

registration describes the goods/services broadly and there are no limitations as to their nature,

 

type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all

 

goods/services of the type described, that they move in all normal channels of trade, and that they

 

are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).  TMEP

 

§1207.01(a)(iii).  Therefore, the evidence made of record in the form of news releases referring to

 

the registrant’s goods is irrelevant to the determination of the scope of the registrant’s

 

identification. 

 

        Nonetheless, the applicant has ignored the established precedent and essentially argued that

 

the registrant’s mark should not be afforded any protection because the Trademark Office’s policy

 

with regard to the acceptability of language used to identify computer software has been changed

 

to require additional specificity as to both the function of the program and the field of use.  This

 

argument is meritless because it is not supported by any statutory law or case law.  In fact, this

 

identical argument has been rejected by the TTAB in numerous decisions upholding the decision

 

rendered in In re Linkvest S.A. 24 USPQ2d 1716 (TTAB 1992).  In Linkvest, the Board ruled that

 

the registrant’s identification of goods, computer programs recorded on magnetic disks, must be

 

assumed to encompass all computer programs, including the applicant’s programs for data

 

integration and transfer.  This decision has not become outdated, nor has it been overruled.  There

 

is simply no legal support for the applicant’s contention that earlier registrations should be

 

devalued or that the scope of the protection afforded them should be greatly diminished because of

 

the Office’s decision to require more specific identifications for software.

 

        The applicant has finally argued confusion is unlikely to result from the use of identical marks

 

on related goods because the prospective purchasers of the applicant’s goods are sophisticated.

 

This argument is also unpersuasive because the fact that purchasers are sophisticated or

 

knowledgeable in a particular field does not necessarily mean that they are sophisticated or

 

knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9

 

USPQ2d 1812 (TTAB 1988); TMEP §1207.01(d)(vii).

 

 

III.  CONCLUSION

 

       For the foregoing reasons, the refusal to register the mark under Section 2(d) of the Trademark

 

Act should be affirmed.

 

 

 

 

 

Respectfully Submitted,

 

 

/Ronald McMorrow/

Trademark Examining Attorney

(703) 308-9105

 

 

Thomas G. Howell

Managing Attorney

Law Office 105