| To: | MedVirginia, LLC (trademarks@troutmansanders.com) |
| Subject: | TRADEMARK APPLICATION NO. 77303918 - SOLUTION - N/A |
| Sent: | 1/29/2008 3:12:35 PM |
| Sent As: | ECOM103@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/303918
MARK: SOLUTION
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: MedVirginia, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 1/29/2008
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 applicant's mark, when used in connection with the identified services, so resembles the mark in U.S. Registration No. 2309323 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. 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 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).
Applicant’s mark, SOLUTION, is identical to the cited registered mark, SOLUTIONS, except that the registered mark is in the plural form. The marks are highly similar in meaning, sound, appearance and commercial impression. The lack of pluralization does not obviate the likelihood of confusion. The cited registered mark is used in connection with “healthcare information services, namely, providing information in the area of wound and skin care management; and distribution informational materials in connection therewith, namely videos, clinical papers, case studies, patient support materials, foot care patient guides and multilingual patient guides”. Applicant uses its mark in connection with “Providing on-line computer databases in the fields of medicine and healthcare, namely an informational database in the field of medicine and healthcare, and a database integrating clinical and related data from the community into one patient-centric electronic chart per subject over the global computer information network”. Both applicant and registrant provide healthcare information, and, moreover, applicant’s type of information is not limited by subject matter and encompasses information in the area of wound and skin care management. Therefore, the services are highly related and move in the same channels of trade. Due to the close relation between both the marks and the services, consumers are likely to be confused as to the source of the services.
Although the examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Recitation of Services
The recitation of services is unacceptable as indefinite and overly broad. The applicant must state the common commercial name of the service, or, if there is no common commercial name, the applicant must state the exact nature of the service and the field of use. Databases of information are classified according to the type of informational content. Note that medical information is in class 44 whereas scientific research information would be in class 42. The applicant may adopt the following recitation if accurate:
[clarify the type of informational content and classify accordingly, eg:
Providing an online computer database featuring scientific research information in the field of medicine which integrates clinical and related data from the community into one patient-centric electronic chart per subject over the global computer information network, in class 42.
Providing on-line computer databases in the fields of medicine and healthcare featuring medical and healthcare information, in class 44
Providing an online computer database featuring medical information which integrates clinical and related data from the community into one patient-centric electronic chart per subject over the global computer information network, in class 44.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(b); TMEP section 1402.06. Therefore, the applicant may not amend to include any services that are not within the scope of the services recited in the present identification.
The Trademark Acceptable Identification of Goods and Services Manual can be found on the world wide web at: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/
If the applicant adopts the suggested amendment to the identification of goods and/or services, the applicant must amend the classification to the International Class noted. 37 C.F.R. Sections 2.33(a)(1)(vi) and 2.85; TMEP sections 1401.
Additional Classes-note that applicant has paid for only 1 class of services, therefore, must pay for each additional class or delete all but one class
If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class with the classes listed in ascending numerical order;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional class of goods and/or services, applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;
(b) one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;
(c) a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and
(d) verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20. (NOTE: Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)
37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).
Please note that the specimen(s) of record are acceptable for class(es) 42 and 44 as described above.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney. If the applicant has questions regarding the status of the application, the applicant should check the uspto.gov website.
Rebecca L. Gilbert
/Rebecca L. Gilbert/
Law Office 103
571-272-9431
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.
