Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/510098

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

REFUSAL - LIKELIHOOD OF 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 No. 2334061 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 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 particular, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  Moreover, although 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).

Thus, 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).

Additionally, 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).

 The applicant has requested registration of the mark MEDSOURCE, for “Consulting services to the legal profession in the nature of: i) locating experts in the fields of medicine, nursing and allied health fields to review medical records, render oral and/or written opinions and testimony; ii) the review of medical records; iii) indexing of medical records; iv) summarization of medical records; and v) medical information research.semiconductor and integrated circuit units; electronic data carriers; microcomputer and microprocessors.” The registrant’s mark is MEDSOURCE, for “directories listing area physicians, health services and local businesses”; “advertising services, namely, providing advertising space in a periodical publication.” 

The parties’ marks are identical, namely, MEDSOURCE. 

Moreover, the applicant’s services are closely related to the registrant’s services because the applicant’s services involving locating experts could encompass the registrant’s directory services. 

Thus, in view of the relatedness of the marks and services, there is a strong likelihood that consumers would perceive that the services emanate from a common source. 

 In view of the above circumstances, the examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against 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). 

 Thus, the mark is refused registration on the Principal Register under Section 2(d).

 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 the applicant chooses to respond to the refusal to register, the applicant must also respond to the below listed informalities.

 INFORMALITIES

1.   RECITATION OF SERVICES-UNACCEPTABLE:

The  recitation of services is indefinite because the applicant does not clearly specify the nature of the services that it is providing.  The recitation of services must be specific. The applicant must amend the recitation to specify the common commercial name of the services or to indicate their nature.  The recitation must be all‑inclusive. The applicant should amend the recitation to replace this wording with "namely." Also, the recitation of services is too broad because it could include services classified in other classes. The applicant may amend the identification to substitute the following wording, if accurate:  “Referrals in the fields of Medicine, Nursing, and Allied Health, namely, locating experts in the fields of medicine, nursing and allied health fields to review medical records, render oral and/or written opinions and testimony; records management services, namely, document indexing for others,” in International Class 035;

 

“Maintaining files and records concerning the medical condition of individuals,” in International Class 044;

 

“Maintaining personal medical history records and files,” in International Class 044;

 

“Consulting services in the medical field, namely, reviewing medical records, and  providing medical information research services,” in International Class 044;

 

“Medical claims investigation services,” in International Class 045.   37 C.F.R. Section 2.71(a); TMEP sections 804, 804.08(c) and 1301.05. [1]

 

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. Section 2.71(a); TMEP section 804.09.  Therefore, the applicant may not amend to include any services that are not within the scope of services recited in the present identification.

 

Additionally note that, depending on the decision of the identification of services the classification of the services may change.

 

2.   REQUIREMENTS FOR COMBINED APPLICATION:

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the services in each class and list the services by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

 

(2)  The applicant must submit a filing fee for each international class of services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  Effective January 10, 2000, the fee for filing a trademark application is $325 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date. 

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application.  37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b).

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above.  37 C.F.R. Sections 2.59(a) and 2.71(c).

 

3.  POTENTIAL CITATION OF PRIOR-FILED APPLICATIONS:

The examining attorney encloses information regarding pending Application Serial Nos. 76/346657 and 78/200680.   The filing date of the referenced application precedes the applicant's filing date.  There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. Section 2.83; TMEP section 1208.01.

 

 

 

 

*

 

 

 

 

 

Darryl M. Spruill

Trademark Attorney

Law Office 112

(703) 308-9112, Ext. 203

darryl.spruill@uspto.gov

/Darryl M. Spruill/

 

 

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.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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