| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76616989 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
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Dear Sir: REMARKS Applicant's attorney wishes to thank the Trademark Examining Attorney for the careful consideration given this case. Applicant has carefully reviewed the outstanding Office Action dated May 27, 2005, and, based upon the following remarks, respectfully requests that the Trademark Examining Attorney pass the subject application for registration of the mark "HCR MANOR CARE" for "educational services; namely, conducting classes, seminars, and workshops for health care training", in International Class 41; and "health care; physical and occupational rehabilitation; transitional health care; nursing home care; home health and hospice care", in International Class 44 on the Principal Register. LIKELIHOOD OF CONFUSION Registration on the Principal Register has been refused allegedly because the mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration Nos. 914,464, 2,144,065, 2,145,785 and 2,141,949 as to be likely to cause confusion, or to cause mistake, or to deceive. Applicant respectfully traverses the Trademark Examining Attorney's refusal. The owner of cited Registration No. 914,464 is Manor Care, Inc., a Delaware corporation. Manor Care, Inc. is the parent company of the Applicant in the instant application; Applicant is a wholly-owned subsidiary of Manor Care, Inc. The Applicant and the Registrant, though separate legal entities, by the fact that one is a wholly-owned subsidiary of the other, constitute a single source. Thus, in accordance with TMEP 1201.07(b)(i),the Trademark Examining Attorney should conclude that there is unity of control, a single source and therefore no likelihood of confusion. The owner of cited Registration Nos. 2,141,949, 2,144,065, and 2,145,785 is Manor Care of America, Inc., a Delaware corporation. Manor Care, Inc. is also the parent company of Manor Care of America, Inc.; Manor Care of America, Inc. is a wholly-owned subsidiary of Manor Care, Inc. Thus, Applicant and the owner of cited registrations share the same parent company and, though separate legal entities, constitute a single source. Thus, in accordance with TMEP 1201.07(b)(i),the Trademark Examining Attorney should conclude that there is unity of control, a single source and therefore no likelihood of confusion. Reconsideration and withdrawal of the refusal to register under Section 2(d) in view of the cited registrations are respectfully requested. DISCLAIMER The Examining Attorney has also requested that Applicant disclaim the term "CARE" apart from the mark as shown because it is merely descriptive of Applicant's health care services. Applicant respectfully declines to do so, however, as the term "CARE" is not merely descriptive of the health care services provided by Applicant, but rather identifies the services originating from a single source. Applicant submits that the term "CARE" is an integral component of the composite mark "MANOR CARE", the registration of which is owned by Applicant's parent company, Manor Care, Inc. (Registration No. 914,464) which, through its long and continued use (since at least as early as on or about January 5, 1969), has acquired substantial secondary meaning. As set forth above, Applicant is a wholly-owned subsidiary of Manor Care, Inc. Through this substantially exclusive and continuous use for over 35 years, the composite mark "MANOR CARE" has become distinctive of the services provided by Applicant's parent company. As such, the portion of Applicant's mark that includes "CARE" should not need to be disclaimed. CONCLUSION Based on the foregoing, Applicant now believes it has completely responded to the outstanding Official Action dated May 27, 2005, and respectfully requests that the Trademark Examining Attorney indicate the registrability of the mark "HCR MANOR CARE" for "educational services; namely, conducting classes, seminars, and workshops for health care training", in International Class 41; and "health care; physical and occupational rehabilitation; transitional health care; nursing home care; home health and hospice care", in International Class 44 on the Principal Register and pass the application for publication for opposition in accordance with Section 12(a) of the Trademark Act.
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| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Joshua S. Bish/ |
| SIGNATORY NAME | Joshua S. Bish |
| SIGNATORY POSITION | Attorney for Applicant |
| SIGNATURE DATE | 11/23/2005 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Nov 23 12:32:19 EST 2005 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20051123123219400413-7661 6989-32073625410a66e2b887 b909217ef2a92-N/A-N/A-200 51123115712831661 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Dear Sir:
The Office Action dated May 27, 2005, which issued in connection with the above-referenced service mark application, has been received, and the following is in response
thereto.
REMARKS
Applicant's attorney wishes to thank the Trademark Examining Attorney for the careful consideration given this case. Applicant has carefully reviewed the outstanding Office Action dated May 27, 2005, and, based upon the following remarks, respectfully requests that the Trademark Examining Attorney pass the subject application for registration of the mark "HCR MANOR CARE" for "educational services; namely, conducting classes, seminars, and workshops for health care training", in International Class 41; and "health care; physical and occupational rehabilitation; transitional health care; nursing home care; home health and hospice care", in International Class 44 on the Principal Register.
LIKELIHOOD OF CONFUSION
Registration on the Principal Register has been refused allegedly because the mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration Nos. 914,464, 2,144,065, 2,145,785 and 2,141,949 as to be likely to cause confusion, or to cause mistake, or to deceive. Applicant respectfully traverses the Trademark Examining Attorney's refusal.
The owner of cited Registration No. 914,464 is Manor Care, Inc., a Delaware corporation. Manor Care, Inc. is the parent company of the Applicant in the instant application; Applicant is a wholly-owned subsidiary of Manor Care, Inc. The Applicant and the Registrant, though separate legal entities, by the fact that one is a wholly-owned subsidiary of the other, constitute a single source. Thus, in accordance with TMEP 1201.07(b)(i),the Trademark Examining Attorney should conclude that there is unity of control, a single source and therefore no likelihood of confusion.
The owner of cited Registration Nos. 2,141,949, 2,144,065, and 2,145,785 is Manor Care of America, Inc., a Delaware corporation. Manor Care, Inc. is also the parent company of Manor Care of America, Inc.; Manor Care of America, Inc. is a wholly-owned subsidiary of Manor Care, Inc. Thus, Applicant and the owner of cited registrations share the same parent company and, though separate legal entities, constitute a single source. Thus, in accordance with TMEP 1201.07(b)(i),the Trademark Examining Attorney should conclude that there is unity of control, a single source and therefore no likelihood of confusion.
Reconsideration and withdrawal of the refusal to register under Section 2(d) in view of the cited registrations are respectfully requested.
DISCLAIMER
The Examining Attorney has also requested that Applicant disclaim the term "CARE" apart from the mark as shown because it is merely descriptive of Applicant's health care services. Applicant respectfully declines to do so, however, as the term "CARE" is not merely descriptive of the health care services provided by Applicant, but rather identifies the services originating from a single source. Applicant submits that the term "CARE" is an integral component of the composite mark "MANOR CARE", the registration of which is owned by Applicant's parent company, Manor Care, Inc. (Registration No. 914,464) which, through its long and continued use (since at least as early as on or about January 5, 1969), has acquired substantial secondary meaning. As set forth above, Applicant is a wholly-owned subsidiary of Manor Care, Inc. Through this substantially exclusive and continuous use for over 35 years, the composite mark "MANOR CARE" has become distinctive of the services provided by Applicant's parent company. As such, the portion of Applicant's mark that includes "CARE" should not need to be disclaimed.
CONCLUSION
Based on the foregoing, Applicant now believes it has completely responded to the outstanding Official Action dated May 27, 2005, and respectfully requests that the Trademark Examining Attorney indicate the registrability of the mark "HCR MANOR CARE" for "educational services; namely, conducting classes, seminars, and workshops for health care training", in International Class 41; and "health care; physical and occupational rehabilitation; transitional health care; nursing home care; home health and hospice care", in International Class 44 on the Principal Register and pass the application for publication for opposition in accordance with Section 12(a) of the Trademark Act.