UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/616989
APPLICANT: HEALTH CARE AND RETIREMENT CORPORATION O ETC.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: HCR MANOR CARE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 02-378-US
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/616989
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. Section 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. 0914464, 2144065, 2145785 and 2141949 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion between the applicant’s mark and the registered marks. 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 (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).
The applicant has applied to register the mark HCR MANOR CARE. The registered marks are MANOR CARE, MANOR CARE HEALTH SERVICES and design, MANOR CARE HEALTH SERVICES and MANOR CARE HEALTH SERVICES. Each mark contains the wording MANOR CARE. In this respect, the literal portions of the applicant’s mark and that of the registrants are nearly identical in appearance, sound, connotation and commercial impression, and therefore, are likely to cause confusion as to the origin of the services.
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’s services are identified as “health care; physical and occupational rehabilitation; transitional health care; nursing home care; home health and hospice care.” The services named in each of the registrations include “nursing services.” The same consumers will be exposed to the services identified with both marks. The similarities among the marks and the services of the parties are so great as to create a likelihood of confusion.
Accordingly, in view of the highly similar nature of the services of the parties and the strong similarity of the marks and their commercial impressions, confusion as to the source of the services is likely under Section 2(d) of the Trademark Act.
If the marks in the cited registrations have been assigned to applicant, then applicant must prove ownership of those marks. TMEP §812.01. Applicant may record the assignment with the Assignment Services Division of the Office. Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq. Applicant should then notify the trademark examining attorney when the assignment has been recorded.
In the alternative, applicant may submit evidence of the assignment of the marks to the applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or signed declaration under 37 C.F.R. §2.20. 37 C.F.R. §3.73; TMEP §502.02(a).
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.
The applicant must disclaim the descriptive wording "CARE" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a). The wording is merely descriptive because it identifies applicant’s health care services.
The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer. TMEP section 1213.09(a)(i). A properly worded disclaimer should read as follows:
No claim is made to the exclusive right to use “CARE” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).
Applicant’s claim of ownership of U.S. Registration No. 1222842 will not be printed on any registration which may issue from this application because Office records show that the claimed registration is cancelled. Only claims of ownership of live registrations are printed. 37 C.F.R. §2.36; TMEP §812.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. Thank you.
/Michael Webster/
Michael Webster
Examining Attorney
USPTO Law Office 102
(571) 272-9266
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.