| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp 09/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77006503 |
| LAW OFFICE ASSIGNED | LAW OFFICE 106 |
| DATE OF NOTICE OF ABANDONMENT | 04/28/2008 |
| PETITION | |
| PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
| RESPONSE TO OFFICE ACTION | |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
To the Commissioner for Trademarks:
In response to the substantive refusal, please note the following:
The Examiner refused registration under Section 2(d), citing likelihood of confusion between Applicant’s mark and the mark in Registration No. 1,838,935 (the “Cited Registration”). Applicant respectfully requests reconsideration of the refusal.
Applicant’s services are dissimilar from the services offered by the owner of the Cited Registration (the “Owner”). Applicant respectfully submits that the Examiner may have been unintentionally misled in this regard. Applicant provides consulting services, as well as courier and security services, to airports, warehouses, and other business in commercial buildings. Only approximately 33% of Applicant’s customers are in the health care industry. To Applicant’s knowledge, the Owner does not offer any of these services in any industry. (Please see Applicant’s attached evidence, including a screenshot of Applicant’s web page and a screenshot of Owner’s web page.)
Furthermore, to the extent Applicant’s customers are in the health care industry, there are significant differences between Applicant’s services and those of the Owner. Applicant offers consulting services for hospital management and staff, consisting primarily of human resources and outsourcing of hospital management needs, including hospital security and courier services. Applicant does not offer any medical services. Owner offers medical services, specializing in surgery services. Because the services offered by Applicant and the services offered by the Owner are markedly different, Applicant respectfully requests Examiner to reconsider the refusal.
Finally, the parties to whom Applicant markets these services (strictly business management and administrative staff) are not the same as those to whom a health care provider would market its services (patients in need of medical services and doctors rendering those services). Not only is Applicant’s relevant market completely different from those of the Owner, but Applicant’s potential customers are very sophisticated business people who will be unlikely to confuse Applicant’s services with the services marketed by the Owner, and who certainly would not confuse Applicant with a hospital. They will have the experience and knowledge to distinguish between Applicant and the Owner, their respective marks, and their respective services. Because the relevant markets are different, and because Applicant’s market is a highly sophisticated group of individuals, confusion is unlikely between the Applicant’s mark and the Cited Registration. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS\EXPORT2\IMAGEOUT2 \770\065\77006503\xml1\PO A0002.JPG |
| \\TICRS\EXPORT2\IMAGEOUT2 \770\065\77006503\xml1\PO A0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | A screenshot of Applicant's website showing the services offered by Applicant; and A screenshot of Owner's website showing the services offered by Owner. |
| PAYMENT SECTION | |
| TOTAL AMOUNT | 100 |
| TOTAL FEES DUE | 100 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /AnaLisa Valle/ |
| SIGNATORY'S NAME | AnaLisa Valle |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 06/27/2008 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jun 27 18:29:39 EDT 2008 |
| TEAS STAMP | USPTO/POA-XX.XXX.XXX.XXX- 20080627182939349034-7700 6503-4204c4233f26e1eddcb7 976a90d7a818ad-DA-3735-20 080627182254818474 |
| PTO Form 2194 (Rev 9/2005) |
| OMB No. 0651-0054 (Exp 09/30/2011) |
To the Commissioner for Trademarks:
In response to the substantive refusal, please note the following:
The Examiner refused registration under Section 2(d), citing likelihood of confusion between Applicant’s mark and the mark in Registration No. 1,838,935 (the “Cited Registration”). Applicant respectfully requests reconsideration of the refusal.
Applicant’s services are dissimilar from the services offered by the owner of the Cited Registration (the “Owner”). Applicant respectfully submits that the Examiner may have been unintentionally misled in this regard. Applicant provides consulting services, as well as courier and security services, to airports, warehouses, and other business in commercial buildings. Only approximately 33% of Applicant’s customers are in the health care industry. To Applicant’s knowledge, the Owner does not offer any of these services in any industry. (Please see Applicant’s attached evidence, including a screenshot of Applicant’s web page and a screenshot of Owner’s web page.)
Furthermore, to the extent Applicant’s customers are in the health care industry, there are significant differences between Applicant’s services and those of the Owner. Applicant offers consulting services for hospital management and staff, consisting primarily of human resources and outsourcing of hospital management needs, including hospital security and courier services. Applicant does not offer any medical services. Owner offers medical services, specializing in surgery services. Because the services offered by Applicant and the services offered by the Owner are markedly different, Applicant respectfully requests Examiner to reconsider the refusal.
Finally, the parties to whom Applicant markets these services (strictly business management and administrative staff) are not the same as those to whom a health care provider would market its services (patients in need of medical services and doctors rendering those services). Not only is Applicant’s relevant market completely different from those of the Owner, but Applicant’s potential customers are very sophisticated business people who will be unlikely to confuse Applicant’s services with the services marketed by the Owner, and who certainly would not confuse Applicant with a hospital. They will have the experience and knowledge to distinguish between Applicant and the Owner, their respective marks, and their respective services.
Because the relevant markets are different, and because Applicant’s market is a highly sophisticated group of individuals, confusion is unlikely between the Applicant’s mark and the Cited Registration.
