Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 3/13/2008

 

THIS IS A FINAL ACTION.

 

 

This letter responds to the applicant’s communication filed on January 29^th, 2008.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1,507,528 as to be likely, when used on the identified goods/services, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

The marks of both parties are virtually identical.  Again, it is well established that where  the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a). 

 

Moreover, the goods of applicant are health care or health care related goods, the very field in which registrant offers its services.  Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and buses is likely to cause confusion).

 

For applicant’s information, attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely goods in the classes applicant uses its mark, are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

Mark
        AICR
Pseudo Mark
        AMERICAN INSTITUTE FOR CANCER RESEARCH
Goods and Services
        IC 016. US 002 005 022 023 029 037 038 050. G & S: PUBLICATIONS AND PRINTED MATTER, NAMELY, NEWSLETTERS, BROCHURES, BOOKLETS, REPORTS, CALENDARS IN THE FIELD OF HEALTH, DIET, NUTRITION, CANCER AND CANCER PREVENTION. FIRST USE: 19980121. FIRST USE IN COMMERCE: 19980121

        IC 035. US 100 101 102. G & S: Promoting public awareness of the need for cancer prevention and the need for healthy diets; administration of the research of others in the field of health, diet, nutrition, cancer and cancer prevention. FIRST USE: 19980121. FIRST USE IN COMMERCE: 19980121

        IC 036. US 100 101 102. G & S: CHARITABLE FUND RAISING SERVICES; FUNDING OF RESEARCH IN THE FIELD OF HEALTH, DIET, NUTRITION, CANCER AND CANCER PREVENTION. FIRST USE: 19980305. FIRST USE IN COMMERCE: 19980305

        IC 041. US 100 101 107. G & S: Educational services, namely, conducting and developing classes and seminars in the field of health, diet, nutrition, cancer and cancer prevention and disseminating educational course materials in connection therewith. FIRST USE: 19980116. FIRST USE IN COMMERCE: 19980116
Standard Characters Claimed
        STANDARD CHARACTERS CLAIMED
Mark Drawing Code
        (4) STANDARD CHARACTER MARK
Serial Number
        78687977
Filing Date
        August 8, 2005
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        November 7, 2006
Registration Number
        3200809
Registration Date
        January 23, 2007
Owner Name and Address
        (REGISTRANT) American Institute for Cancer Research NON-PROFIT CORPORATION D.C. 1759 R Street, N.W. Washington D.C. 20009
Prior Registration(s)
        2354785
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Stephanie Morris Carmody

Mark
        IOWA HEALTH
Goods and Services
        IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed matter and publications, namely, booklets, books, brochures, bulletins, magazines, pamphlets, and newsletters in the field of healthcare, medical care, wellness, exercise, health services, hospital information, information about physicians, and patient information. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 025. US 022 039. G & S: Clothing; namely, sweat shirts, jackets, shirts, t-shirts; footwear; headgear, namely hats, caps. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 035. US 100 101 102. G & S: Direct mail advertising; advertising through all public communication means; business management; business administration; office functions in the field of healthcare, medical care, wellness, exercise, health services, hospitals, physicians, clinics, and allied goods and services; medical and physician referrals; ordering and procuring medical goods for healthcare entities; group purchasing services for others; retail stores featuring durable medical equipment and medical supplies; providing information on the topic of promoting patient and physician satisfaction via a global computer network; philanthropic services, namely, coordination of the procurement and distribution of food and clothing donations from manufacturers, wholesalers, retailers, and government agencies to organizations providing free food and clothing to needy people; retail store services featuring medical equipment and supplies; mail order services featuring medical equipment and supplies; on-line retail store services featuring medical equipment and supplies; promoting public awareness of the need for health care via support groups and initiatives. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 036. US 100 101 102. G & S: Establishment and administration of employee healthcare and benefits programs and medical insurance programs; charitable health foundation services, namely, providing funding in the field of health care; leasing and management of real estate. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 037. US 100 103 106. G & S: Building repair, installation services, namely, installation of computer systems; maintenance of buildings and offices. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 039. US 100 105. G & S: Transport of passengers and goods; packaging and warehouse storage of goods; biomedical services, namely, the storage and transport of medical and healthcare related supplies and materials; transportation of medical waste and special waste; charitable services, namely, providing transportation to the elderly or handicapped persons. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 041. US 100 101 107. G & S: Education, services, namely, conducting classes, workshops, seminars in the field of health; training services in the field of health; and distribution of course materials in connection therewith; educational services for corporations and communities, namely, conducting classes, workshops, seminars in the field of health awareness, educational services, namely, providing educational speakers. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 042. US 100 101. G & S: Medical and scientific research; medical laboratories; installation services, namely, installation of computer software. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122

        IC 044. US 100 101. G & S: Hospital; medical and healthcare services; managed healthcare services; healthcare services provided through an integrated delivery system of hospitals, physicians, clinics, outpatient centers, home health agencies, nursing homes, and other allied healthcare providers and service organizations providing medical, healthcare, and health and wellness information; providing healthcare information by telephone; providing a web site featuring information regarding healthcare, wellness, health services; charitable services, namely, providing medical services to low income or needy person; philanthropic services in the area of donations of healthcare and/or medicine; social and support services an community wellness services, namely, providing free health screenings at health fairs; children's medical clinics; leasing and rental of medical equipment and supplies and consultation and advice in connection therewith. FIRST USE: 19931122. FIRST USE IN COMMERCE: 19931122
Standard Characters Claimed
        STANDARD CHARACTERS CLAIMED
Mark Drawing Code
        (4) STANDARD CHARACTER MARK
Serial Number
        78497119
Filing Date
        October 8, 2004
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        January 31, 2006
Registration Number
        3084644
Registration Date
        April 25, 2006
Owner Name and Address
        (REGISTRANT) Iowa Health System CORPORATION IOWA 1200 Pleasant Street Des Moines IOWA 50309
Prior Registration(s)
        2033327
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "HEALTH" APART FROM THE MARK AS SHOWN
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL-2(F)
Live Dead Indicator
        LIVE
Attorney of Record
        Mark D. Hansing

Mark
        BETTER BONES BETTER BODY
Goods and Services
        IC 005. US 006 018 044 046 051 052. G & S: DIETARY SUPPLEMENTS. FIRST USE: 19990900. FIRST USE IN COMMERCE: 19990900

        IC 041. US 100 101 107. G & S: CONDUCTING CLASSES AND SEMINARS IN THE FIELD OF HEALTH AND NUTRITION. FIRST USE: 19950100. FIRST USE IN COMMERCE: 19950100
Mark Drawing Code
        (5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
Serial Number
        76070109
Filing Date
        June 6, 2000
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        December 11, 2001
Registration Number
        2544256
Registration Date
        March 5, 2002
Owner Name and Address
        (REGISTRANT) Brown, Susan INDIVIDUAL UNITED STATES 605 Franklin Park Drive East Syracuse NEW YORK 13057
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Affidavit Text
        SECT 8 (6-YR).
Live Dead Indicator
        LIVE

Mark
        DIETS END. WEIGHT LOSS BEGINS
Pseudo Mark
        DIETS END WEIGHT LOSS BEGINS
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Prerecorded video and audiotapes in the fields of health, fitness and weight loss and management. FIRST USE: 20030500. FIRST USE IN COMMERCE: 20030500

        IC 016. US 002 005 022 023 029 037 038 050. G & S: Print publications, namely books, booklets, newsletters, pamphlets and forms in the fields of health, fitness and weight loss and management. FIRST USE: 20031100. FIRST USE IN COMMERCE: 20031100

        IC 042. US 100 101. G & S: Educational services, namely conducting classes, workshops, courses of instruction and seminars in the field of health, fitness and weight loss and management and distributing printed course materials in the form of related articles and newsletters on health, fitness and weight loss and management in connection therewith. FIRST USE: 20031100. FIRST USE IN COMMERCE: 20031100
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        76515156
Filing Date
        May 19, 2003
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        February 17, 2004
Registration Number
        2917819
Registration Date
        January 11, 2005
Owner Name and Address
        (REGISTRANT) Lighten Up America, Inc. CORPORATION ILLINOIS Box 180182 Chicago ILLINOIS 60618
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Mark A. Nieds

Mark
        THINTUITION
Pseudo Mark
        THIN TUITION
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Prerecorded video and audiotapes in the fields of health, fitness and weight loss and management. FIRST USE: 20030500. FIRST USE IN COMMERCE: 20030500

        IC 016. US 002 005 022 023 029 037 038 050. G & S: Print publications, namely books, booklets, newsletters, pamphlets and forms in the fields of health, fitness and weight loss and management. FIRST USE: 20031100. FIRST USE IN COMMERCE: 20031100

        IC 042. US 100 101. G & S: Educational services, namely conducting classes, workshops, courses of instruction and seminars in the field of health, fitness and weight loss and management and distributing printed course materials in the form of related articles and newsletters on health, fitness and weight loss and management in connection therewith. FIRST USE: 20031100. FIRST USE IN COMMERCE: 20031100
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        76515155
Filing Date
        May 19, 2003
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        February 17, 2004
Registration Number
        2917818
Registration Date
        January 11, 2005
Owner Name and Address
        (REGISTRANT) Lighten Up America, Inc. CORPORATION ILLINOIS 4638 North Greenview Chicago ILLINOIS 60640
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        Mark A. Nieds

Mark
        HEALTHGROOVE
Goods and Services
        IC 009. US 021 023 026 036 038. G & S: Prerecorded video and audiotapes in the field of health, fitness and diet. FIRST USE: 20021000. FIRST USE IN COMMERCE: 20021000

        IC 016. US 002 005 022 023 029 037 038 050. G & S: PRINTED BOOKS, NEWSLETTERS, MAGAZINES, BOOKLETS AND FORMS IN THE FIELD OF HEALTH, FITNESS AND DIET. FIRST USE: 20010400. FIRST USE IN COMMERCE: 20010400

        IC 041. US 100 101 107. G & S: Educational services, namely conducting classes, workshops, courses of instruction and seminars in the field of health, fitness and diet and distributing printed course materials in the form of related articles and newsletters on health, fitness and diet in connection therewith. FIRST USE: 20010400. FIRST USE IN COMMERCE: 20010400

        IC 042. US 100 101. G & S: Medical, nutrition, behavioral and fitness counseling services in the field of health, fitness and diet and distributing printed course materials in the form of related articles and newsletters on health, fitness, and diet in connection therewith and providing instruction in the field of health, fitness, and diet on-line via a globally accessible network. FIRST USE: 20010400. FIRST USE IN COMMERCE: 20010400
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        76013821
Filing Date
        March 30, 2000
Current Filing Basis
        1A
Original Filing Basis
        1B
Publication for Opposition Date
        February 12, 2002
Registration Number
        2702930
Registration Date
        April 1, 2003
Owner Name and Address
        (REGISTRANT) Healthgroove, Inc. CORPORATION FLORIDA 333 NW 70TH Avenue, Suite 103 Plantation FLORIDA 33317
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE
Attorney of Record
        David P. Lhota

Mark
        ANACARDIUM
Goods and Services
        IC 005. US 006 018 044 046 051 052. G & S: Dietary Supplement

        IC 029. US 046. G & S: Seafood and Fish

        IC 030. US 046. G & S: Processed popcorn, rice, coffee, tea, flour

        IC 031. US 001 046. G & S: Raw cashew nuts and unprocessed cereals

        IC 041. US 100 101 107. G & S: Publishing services, namely, publication of books, methodology instruction books and magazines; educational services, namely, conducting seminars in the field of health

        IC 042. US 100 101. G & S: Computer software development

        IC 044. US 100 101. G & S: Health care services
Mark Drawing Code
        (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Code
        05.15.02 - Laurel leaves or branches (borders or frames); Wreaths
Serial Number
        76387251
Filing Date
        March 26, 2002
Current Filing Basis
        44E
Original Filing Basis
        1A;44D
Publication for Opposition Date
        September 21, 2004
Registration Number
        2909477
Registration Date
        December 14, 2004
Owner Name and Address
        (REGISTRANT) Anacardium LLC NACARDIUM L.L.C DELAWARE One Commerce Center 1201 North Orange Street Suite 762 Wilmington DELAWARE 19801
Priority Date
        January 31, 2002
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Live Dead Indicator
        LIVE

 

 

 

 

 

USPTO

/Dominick J. Salemi/

Trademark Attorney

Law Office 106

Phone:  571 272 9330

Fax:  571 273 9106 (formal responses)

 

 

 

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.