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  76/522830

 

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

 

LIKELIHOOD OF CONFUSION

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §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. 1435159 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

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 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq. 

 

The applicant’s proposed mark is ELDERCARE for “providing fall prevention, assessment and treatment services as well as driving safety services to aging adults.”  This mark is highly similar to the registered mark ELDERCARE for “providing consulting and counseling services to aging adults and their families.”  The marks are identical.  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).  Both the applicant and the registrant use the term ELDERCARE in connection with counseling services for the aging.  The marks are the same and the services are related, and therefore, a likelihood of confusion as to the source of the services exists.

 

The applicant should also note the following additional ground for refusal.

 

MARK IS MERELY DESCRIPTIVE

 

The examining attorney refuses registration on the Principal Register because the proposed mark merely describes the services.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).

 

The examining attorney must consider whether a mark is merely descriptive in relation to the identified services, not in the abstract.  In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985); In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).  TMEP §1209.01(b). 

 

The applicant has applied to register the mark ELDERCARE for “providing fall prevention, assessment and treatment services as well as driving safety services to aging adults.”  The mark merely describes the applicant’s services.  An ELDER is “an older person,” and CARE is “to provide needed assistance or watchful supervision.”[1] Together, the term ELDERCARE means to provide needed assistance to an older person and the applicant provides fall prevention and driving services to aging adults.  Therefore, the term ELDERCARE is merely descriptive of the subject matter of the services.

 

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 following issues.

 

INFORMATION REQUEST

 

In order to allow for proper examination of the application, including the final determination as to whether the mark is merely descriptive in relation to the services, the applicant must submit samples of advertisements or promotional materials for the services or, if unavailable, for services of the same type.  If such materials are not available, the applicant must describe the nature, purpose and channels of trade of the services identified in the application.  In addition, the applicant must state whether the mark has any meaning in relation to the services.  37 C.F.R. §2.61(b); TMEP §814.

 

DISCLAIMER

 

The applicant has inserted a disclaimer of the terms ELDER and CARE.  This disclaimer is unacceptable because the entire mark may not be disclaimed.  If a mark is not registrable as a whole, a disclaimer will not make it registrable.  There must be something in the combination of elements in the mark, or something of sufficient substance or distinctiveness over and above the matter being disclaimed, which would make the composite registrable after the import of the disclaimer is taken into account.  See In re Anchor Hocking Corp., 223 USPQ 85 (TTAB 1984); Ex parte Ste. Pierre Smirnoff Fls, Inc., 102 USPQ 415 (Comm’r Pats. 1954).  TMEP section 1213.06.

 

RECITATION OF SERVICES

 

The wording in the recitation of services is too broad because it includes services classified in more than one international class.  The services identified as “providing fall prevention, assessment and treatment services” appear to be “health care” services in International Class 44, while the services identified as “driving safety services” appear to be “vehicle driving instruction services in International Class 41.  Therefore, the examining attorney makes the following suggestions for amendment:

 

Vehicle driving instruction, namely, driving safety services to aging adults, in International Class 41;

 

Health care, namely, fall prevention, assessment and treatment services, in International Class 44.

 

TMEP §1402.11.

 

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.

 

If the applicant adopts the suggested amendment to the identification of services, the applicant must add one international class and amend the classification to International Classes 41 and 44.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401 et seq.

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for a searchable database of acceptable identifications for goods and services.  The manual is available at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

MULTIPLE CLASSES

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 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. §§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), where such statement was not included for the goods or services in the original application.

 

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

 

NOTE REGARDING STATUS OF APPLICATION

 

Current status and status date information is available on-line at http://tarr.gov.uspto.report/ or, via push button telephone, for all federal trademark registration and application records maintained in the automated Trademark Reporting and Monitoring (TRAM) system.  The information may be accessed by calling (703) 305-8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday, and entering a seven-digit registration number or eight-digit application number, followed by the "#" symbol, after the welcoming message and tone. Callers may request information for up to five registration number or application number records per call.

 

PLEASE NOTE:  Because it delays processing, submission of duplicate papers is discouraged.  Unless specifically requested to do so by the Office, parties should not mail follow up copies of documents transmitted by fax or email.  306; Cf.  ITC Entertainment Group Ltd. V. Nintendo of America Inc. 45 USPQ2d 2021 (TTAB 1998).

 

The following authorities govern the processing of trademark applications:

§         The Trademark Act, 15 U.S.C. Section 1051 et seq.;

§         Trademark Rules of Practice, 37 C.F.R. Part 2;

§         Trademark Manual of Examining Procedure (TMEP).

To access these resources, please see http://www.gov.uspto.report/web/offices/tac/.

 

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

 

/Barbara Brown/

Trademark Attorney, LO 116

TEL (703) 306-7924

FAX (703) 746-8116

barbara.t.brown@uspto.gov (informal)

ecom116@uspto.gov

 

 

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.

 

eld·er1

 
eld·er (èl¹der) adjective

1.    Greater than another in age or seniority.

2.    Superior to another or others, as in rank.

 

noun

1.    An older person.

2.    An older, influential member of a family, tribe, or community.

3.    One of the governing officers of a church, often having pastoral or teaching functions.

4.    Mormon Church. A member of the higher order of priesthood.

 [Middle English eldre, from Old English eldra.]

— el¹der·ship´ noun

 Usage Note: Elder and eldest generally apply to persons, unlike older and oldest, which also apply to things. Elder and eldest are used principally with reference to seniority: elder sister; elder statesman; John the Elder.

 

care

 
care (kâr) noun

1.    A burdened state of mind, as that arising from heavy responsibilities; worry.

2.    Mental suffering; grief.

3.    An object or source of worry, attention, or solicitude: the many cares of a working parent.

4.    Caution in avoiding harm or danger: handled the crystal bowl with care.

5.    a. Close attention; painstaking application: painting the window frames and sashes with care. b. Upkeep; maintenance: a product for the care of fine floors; hair care products.

6.    Watchful oversight; charge or supervision: left the child in the care of a neighbor.

7.    Attentive assistance or treatment to those in need: a hospital that provides emergency care.

 

verb

cared, car·ing, cares verb, intransitive

1.    To be concerned or interested: Once inside, we didn't care whether it rained or not.

2.    To provide needed assistance or watchful supervision: cared for the wounded; caring for an aged relative at home.

3.    To object or mind: If no one cares, I'll smoke.

4.    a. To have a liking or attachment: didn't care for the movie. b. To have a wish; be inclined: Would you care for another helping?

 

verb, transitive

1.    To wish; desire: Would you care to dance?

2.    To be concerned to the degree of: I don't care a bit what critics think.

 [Middle English, from Old English cearu.]

 Synonyms: care, charge, custody, keeping, supervision, trust. The central meaning shared by these nouns is “the function of watching, guarding, or overseeing”: left the house keys in my care; has charge of all rare books in the library; had custody of his friend's car during her absence; left the canary in the neighbors' keeping; assuming supervision of the first-grade pupils; documents that were committed to the bank's trust. See also synonyms at anxiety.

 Usage Note: It is true that a close examination of the syntax of the phrase I could care less reveals that it ought by rights to mean something like “I care more than I might,” rather than “I don't care at all.” But while the illogicality of a phrase may be reason enough for excluding it from formal writing, this illogicality cannot be invoked as grounds for keeping it out of the colloquial language, particularly when the phrase is itself an expression of casual indifference. See Usage Note at cannot.