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  76/530052

 

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

 

Refusal Under Section 2(d) 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 marks in U.S. Registration Nos. 2,422,372; 2,596,923; and 2,686,076 as to be likely to cause confusion, to cause mistake, or to deceive.[1]  TMEP §§1207.01 et seq.  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 (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 applicant has applied to register PROACTIVE (Typed) for “Educational services, namely conducting wellness/fitness programs and athletic traning [sic] programs” and for “Rehabilitation services, namely physical therapy services, aquatic therapy services, hand/occupational therapy services, low back care and rehabilitation services, physical fitness consultation in the field of sports performance, and consultation in the field of work-related injury prevention and injury management.”  Registration No. 2,422,372 is PROACTIVE HEALTH (Typed) for “health counseling, namely, health risk assessments, wellness advice, injury prevention, providing assistance to employers in developing programs promoting health; providing health and medical information via telephone, global computer information and videoconferencing networks, and through the distribution of literature.”  Registration No. 2,596,923 is PRO ACTIVE FITNESS (and Design) for “Personal fitness training and instruction services.”  Registration No. 2,686,076 is PROACTIVE FITNESS (Typed), also for “PERSONAL FITNESS TRAINING AND INSTRUCTION SERVICES.”

 

The examining attorney must look at the marks in their entireties under Section 2(d).  Nevertheless, 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 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii).  In this case, the applicant’s mark and the registrants’ marks share the same dominant wording, “PROACTIVE.”  The applicant’s mark consists solely of the word “PROACTIVE.”  The mark in Registration No. 2,422,372 consists of the word “PROACTIVE” followed by the generic word “HEALTH.”  The marks in Registration Nos. 2,596,923 and 2,686,076 consist of the word “PROACTIVE” followed by the descriptive word “FITNESS.”  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). 

 

Moreover, if the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b).  In this case, the applicant’s services and each of the registrants’ services are identical, in part.  The applicant provides “consultation in the field of work-related injury prevention and injury management.”  The owner of Registration No. 2,422,372 provides “health counseling, namely, . . . injury prevention, providing assistance to employers in developing programs promoting health . . .”  The applicant and the owner of Registration Nos. 2,596,923 and 2,686,076 both provide fitness training services.

 

The marks contain the same dominant wording.  The services are identical, in part.  The similarities among the marks and the services are so great as to create a likelihood of confusion among consumers.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).  TMEP §§1207.01(d)(i). 

 

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 informalities:

 

1.            Recitation of Services in International Class 41

 

a.         The wording “wellness/fitness programs” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “wellness/physical fitness programs,” if accurate.  TMEP §1402.11.

 

b.         There is a typographical error in the recitation of services.  The applicant must amend the word “traning” to “training.”

 

c.         The applicant may adopt the following recitation of services in International Class 41, if accurate:  Educational services, namely conducting wellness/physical fitness programs and athletic training programs.

 

d.         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 services that are not within the scope of the services recited in the present identification.

 

2.            Recitation and Classification of Services in International Class 42

 

a.         The applicant has classified the physical rehabilitation services incorrectly.  The applicant must amend the application to classify the services in International Class 44.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

b.         The applicant has classified physical fitness consultation in International Class 42.  The correct classification is International Class 41.  The applicant must either delete “physical fitness consultation” or add the services to its International Class 41 recitation.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).  The applicant may adopt the following wording in Class 41, if accurate:  “physical fitness consultation in the field of sports performance.”

 

c.         The wording “Rehabilitation services” in the recitation of services is unacceptable as indefinite.  The applicant may amend this wording to “Physical rehabilitation services,” if accurate.  TMEP §1402.11.

 

d.         The applicant may adopt the following recitation of services in International Class 44, if accurate:  Physical rehabilitation services, namely, physical therapy services, aquatic therapy services, hand/occupational therapy services, low back care and rehabilitation services, and consultation in the field of work-related injury prevention and injury management.

 

e.         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 services that are not within the scope of the services recited in the present identification.

 

3.         Mark Differs on Drawing and Specimens

 

The drawing displays the mark as PROACTIVE (one word).  However, this differs from the display of the mark on the specimens, where it appears as PRO ACTIVE (two words).  The applicant must either:

 

(1)  submit a new drawing of the mark that agrees with the specimens; or

 

(2)  submit substitute specimens that show use of the mark shown in the drawing. 

 

37 C.F.R. §2.51; TMEP §§807.14 and 807.14(a)(i).  The applicant may not amend the drawing if the amendment would materially alter the character of the mark.  37 C.F.R. §2.72(a); TMEP §807.14(a).  In this case, the applicant would be permitted to amend the drawing of the mark to PRO ACTIVE.

 

If substitute specimens are submitted, the applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimens were in use in commerce at least as early as the filing date of the application.  37 C.F.R. §§2.59(a) and 2.72(a); TMEP §904.09.  The statement supporting use of the substitute specimens must read as follows: 

 

The substitute specimens were in use in commerce at least as early as the filing date of the application.

 

4.            Specimens

 

The specimens are unacceptable as evidence of actual service mark use because they are printer’s proof copies of brochures instead of actual brochures.  Printer’s proofs for advertisements, publicity releases to news media, or printed articles resulting from such releases, are not acceptable service mark specimens because they do not show use of the mark by the applicant in the sale or advertising of the services.  TMEP §1301.04.

 

Accordingly, the applicant must submit one specimen per class of services, showing the mark as it is used in commerce.  37 C.F.R. §2.56.  Examples of acceptable specimens are signs, photographs, brochures or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  37 C.F.R. §2.59(a); TMEP §904.09.  The statement supporting use of the substitute specimen must read as follows: 

 

The substitute specimens were in use in commerce at least as early as the filing date of the application.

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

703-308-9115, ext. 123

ecom115@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.