| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76539892 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
We are writing in response to Office Action No. 3, dated September 28, 2005, which relates to the application filed by Premier Inc. (“Applicant”) for “ADVISOR VIEW” (the “Mark”): Disclaimer Requirement The examining attorney is requiring the disclaimer of the term ADVISOR on the basis that it is generic and not entitled trademark protection. Applicant respectfully disagrees with the determination that ADVISOR is generic. The examining attorney has the burden of proving that a term is generic by clear evidence. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); Trademark Manual of Examination Procedures (“TMEP”) §1209.01(c). However, the examining attorney has provided no evidence that the term “advisor” is generic for providing a database or providing consulting services other than the conclusory statement that “this wording is generic in the context of applicant’s services.” Accordingly, Applicant respectfully requests that the disclaimer requirement be withdrawn. In any event, Applicant submits that the term “ADVISOR” is not generic. The Federal Circuit has established a two part test for determining whether a term is generic. First, what is the class of goods or services at issue and, second, does the relevant public understand the designation primarily to refer to that class of goods or services? The test turns upon the primary significance that the term would have to the relevant public. H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1209.01(c)(i). In the present application, the Applicant’s services are: Providing an on-line computer database in the fields of health care cost, accounting, labor assessment and operational productivity data in International Class 035. Providing an on-line computer database in the fields of health care informatics and clinical and operational comparative patient, syndrome, health systems performance, and patient satisfaction data in International Class 044 The term ADVISOR denotes neither a computer database, consulting services, health care informatics nor supply chain management. Submitted herewith is a print-out of a definition of “adviser” (which also covers the variant form of the term “advisor”) taken from the American Heritage Dictionary of the English Language; Fourth Edition. None of the meanings of the term refer to either database services or consulting services. Accordingly, the pubic would not perceive the term ADVISOR in the mark OPERATIONS ADVISOR as a designation of database services, consulting services, health care informatics or supply chain management. The Federal Circuit has also stated that “[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989-990, 228 USPQ 528, 530 (Fed. Cir. 1986). The Applicant submits that the public does not understand the term ADVISOR to refer to database services, consulting services, health care informatics or supply chain management. Because the application is for registration on the Supplemental Register, we note that even if a consumer immediately associates the mark with a quality or characteristic of the product or service, the mark is still registrable, as such an immediate association only denotes descriptiveness. In re MBNA America Bank, N.A., 340 F. 3d 1328, 1332 (Fed Cir. 2004). We note that when the application was first submitted, the examining attorney’s initial office action included a request for additional information. See Office Action dated March 2, 2004 re: Serial Number 76/539891. At that time the examining attorney stated that the “nature of the services is not clear from the present record.” If the term ADVISOR were in fact generic, the nature of the services would have been immediately obvious to the examining attorney and it would have been unnecessary to submit such additional information, at least with respect to the portion of the mark consisting the term “ADVISOR.” Finally, we note that the Applicant successfully registered the mark PERCEPTION ADVISOR on the Principal Register (Registration No. 3,011,820) and no disclaimer of the separate word “ADVISOR” was required, even though the threshold for requiring a disclaimer for a mark registered on the Principal Register is whether the term in question. A copy of said registration is submitted herewith. The mark PERCEPTION ADVISOR relates to very similar services, namely, “Providing an on-line computer database in the fields of health care informatics and clinical and operational comparative patient, syndrome and patient satisfaction data; consulting services in the field of healthcare informatics in International Class 044.” In fact the PERCEPTION ADVISOR and ADVISOR VIEW services are part of the same suite of services, as indicated in the additional information previously submitted at the request of the examining attorney and incorporated into the record for the application and as indicated in the specimen of use submitted for the application. Conclusion Based on the foregoing, Applicant respectfully request that the Examining Attorney’s requirement for a disclaimer be withdrawn. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\TICRS\EXPORT6\IMAGEOUT6 \765\398\76539892\xml1\RO A0002.JPG |
| EVIDENCE FILE NAME | \\TICRS\EXPORT6\IMAGEOUT6 \765\398\76539892\xml1\RO A0003.JPG |
| DESCRIPTION OF EVIDENCE FILE | Copy of certificate of registration for PERCEPTION ADVISOR; print-out of definition of "adviser." |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /sean fifield/ |
| SIGNATORY NAME | Sean Fifield |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 03/27/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 27 21:41:46 EST 2006 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0060327214146113734-76539 892-320b497d735865f2d91a6 7ac995128e9-N/A-N/A-20060 327213742202910 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
We are writing in response to Office Action No. 3, dated September 28, 2005, which relates to the application filed by Premier Inc. (“Applicant”) for “ADVISOR VIEW” (the “Mark”):
Disclaimer Requirement
The examining attorney is requiring the disclaimer of the term ADVISOR on the basis that it is generic and not entitled trademark protection. Applicant respectfully disagrees with the determination that ADVISOR is generic.
The examining attorney has the burden of proving that a term is generic by clear evidence. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); Trademark Manual of Examination Procedures (“TMEP”) §1209.01(c). However, the examining attorney has provided no evidence that the term “advisor” is generic for providing a database or providing consulting services other than the conclusory statement that “this wording is generic in the context of applicant’s services.” Accordingly, Applicant respectfully requests that the disclaimer requirement be withdrawn.
In any event, Applicant submits that the term “ADVISOR” is not generic. The Federal Circuit has established a two part test for determining whether a term is generic. First, what is the class of goods or services at issue and, second, does the relevant public understand the designation primarily to refer to that class of goods or services? The test turns upon the primary significance that the term would have to the relevant public. H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986); TMEP §1209.01(c)(i).
In the present application, the Applicant’s services are:
Providing an on-line computer database in the fields of health care cost, accounting, labor assessment and operational productivity data in International Class 035.
Providing an on-line computer database in the fields of health care informatics and clinical and operational comparative patient, syndrome, health systems performance, and patient satisfaction data in International Class 044
The term ADVISOR denotes neither a computer database, consulting services, health care informatics nor supply chain management. Submitted herewith is a print-out of a definition of “adviser” (which also covers the variant form of the term “advisor”) taken from the American Heritage Dictionary of the English Language; Fourth Edition. None of the meanings of the term refer to either database services or consulting services. Accordingly, the pubic would not perceive the term ADVISOR in the mark OPERATIONS ADVISOR as a designation of database services, consulting services, health care informatics or supply chain management.
The Federal Circuit has also stated that “[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question.” H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 989-990, 228 USPQ 528, 530 (Fed. Cir. 1986). The Applicant submits that the public does not understand the term ADVISOR to refer to database services, consulting services, health care informatics or supply chain management.
Because the application is for registration on the Supplemental Register, we note that even if a consumer immediately associates the mark with a quality or characteristic of the product or service, the mark is still registrable, as such an immediate association only denotes descriptiveness. In re MBNA America Bank, N.A., 340 F. 3d 1328, 1332 (Fed Cir. 2004).
We note that when the application was first submitted, the examining attorney’s initial office action included a request for additional information. See Office Action dated March 2, 2004 re: Serial Number 76/539891. At that time the examining attorney stated that the “nature of the services is not clear from the present record.” If the term ADVISOR were in fact generic, the nature of the services would have been immediately obvious to the examining attorney and it would have been unnecessary to submit such additional information, at least with respect to the portion of the mark consisting the term “ADVISOR.”
Finally, we note that the Applicant successfully registered the mark PERCEPTION ADVISOR on the Principal Register (Registration No. 3,011,820) and no disclaimer of the separate word “ADVISOR” was required, even though the threshold for requiring a disclaimer for a mark registered on the Principal Register is whether the term in question. A copy of said registration is submitted herewith.
The mark PERCEPTION ADVISOR relates to very similar services, namely, “Providing an on-line computer database in the fields of health care informatics and clinical and operational comparative patient, syndrome and patient satisfaction data; consulting services in the field of healthcare informatics in International Class 044.” In fact the PERCEPTION ADVISOR and ADVISOR VIEW services are part of the same suite of services, as indicated in the additional information previously submitted at the request of the examining attorney and incorporated into the record for the application and as indicated in the specimen of use submitted for the application.
Conclusion
Based on the foregoing, Applicant respectfully request that the Examining Attorney’s requirement for a disclaimer be withdrawn.
