Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 77303918 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

           

          The United States Patent and Trademark Office (the “PTO”) has initially refused registration of Application Serial No. 77/303918 for SOLUTION (the “Applicant’s Mark” or “Mark”) based upon the belief that, pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), there is a likelihood of confusion with Registration 2309323 for the mark SOLUTIONS (the “Cited Mark”).  Applicant explains below that its Mark is not confusingly similar to the Cited Mark.  Applicant agrees to adopt the second option proffered by the Examining Attorney as the Recitation of Services to eliminate the cited objections.

 

Legal Arguments

 

            As the PTO is aware, the modern factors for determining whether a likelihood of confusion exists between two marks were articulated in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (BNA) 563 (C.C.P.A. 1973).  In particular, the following factors are of primary concern in the instant matter:

(1)   The similarity or dissimilarity and nature of the services as described in an application or registration or in connection with which a prior mark is in use;

(2)   The similarity or dissimilarity in the channels of trade through which the services identified by the respective marks travel;

            Applicant respectfully submits that an analysis of these Du Pont factors confirms that no likelihood of confusion exists between its Mark and the Cited Mark.

 

            I.  Likelihood of Confusion:

 

a.  Services.  The Mark will not be confused with the Cited Mark because the marks identify different, non-competing services.  Applicant's service is an on-line database which houses copies of individual patient charts and allows the users the functionality to access and share these records.  Registrant's services are providing healthcare information services specific to wound and skin care management, and advocating a specific regime of treatment, although not concerning any particular individual.

 

            Applicant's database could contain a patient chart describing a patient with a wound.  This fact alone would not cause a likelihood of confusion with the Cited Mark because this specific patient chart is not being marketed under the Mark.  Instead, Applicant’s on-line database is marketed under the Mark. 

 

            In support of the foregoing position, See In re Fesco, Inc., 219 U.S.P.Q. 437 (BNA) (T.T.A.B. 1983) (allowing use of the same mark by two parties where the goods were different).  “Numerous cases . . . illustrate that even when two products or services fall within the same general field, it does not mean that the two products or services are sufficiently similar to create a likelihood of confusion.”  Id.; see also Borg-Warner Chems., Inc. v. Helena Chem. Co., 225 U.S.P.Q. (BNA) 222, 224 (T.T.A.B. 1983) (“The Board. . . has found no likelihood of confusion with respect to identical marks applied to goods and/or services used in a common industry[,] where such goods and/or services are clearly different from one another.”).

 

            Accordingly, Applicant respectfully requests that the PTO withdraw its refusal to register Applicant’s Mark based on the existence of the Cited Mark and allow Applicant’s Mark to proceed to publication and registration on the PTO’s Principal Register.

 

b.  Channels of Trade.  Another important factor in determining likelihood of confusion is whether the marks travel in different channels of trade.  Applicant’s database, identified by the Mark, is available to individuals who have applied to use the database, been accepted as users by Applicant and obtained a password that allows them to access the database.  This service is not available to the general public.  This security is a requirement for housing patient charts containing highly confidential health records.  In contrast, the Cited Mark is used to market services to and the services are available to the general public.

 

Applicant submits that the services identified by the Cited Mark will not travel in the same trade channels as Applicant’s services identified by the Mark.  Thus, there is no likelihood that consumers will encounter the services identified by Applicant’s Mark and the Cited Mark and be confused as to the source or origin of Applicant’s services and the services offered under the Cited Mark because the trade channels do not overlap.

 

In support of the foregoing position, See Du Pont 476 F.2d at 1361; see also Giorgio Beverly Hills, Inc. v. Revlon Consumer Prods. Corp., 33 U.S.P.Q.2d (BNA)  (S.D.N.Y. 1994) (“no proximity found where one fragrance sells in a mass department store outlet while the other [fragrance] sells in more exclusive stores”) (citing Elizabeth Taylor Cosmetics Co. v. Annick Goutal, S.A.R.L., 673 F.Supp. 1238, 1246, 5 U.S.P.Q.2d (BNA) 1305 (S.D.N.Y. 1987)); In re Fesco, Inc., supra (allowing two parties to concurrently use an identical mark where their goods were different and there was insufficient evidence to establish that the goods would be encountered by the same purchasers).  The TTAB has rejected any assumption that goods identified in an application or registration travel in the same channels of trade.  In re Digirad Corp., 45 U.S.P.Q.2d (BNA) 1841, 1845 (T.T.A.B. 1998).

 

                        The TTAB has also found that contemporaneous use of marks is not likely to cause confusion.  For example, in Dynacolor Corp. v. Beckman & Whitley, Inc., 134 U.S.P.Q. (BNA) 410 (T.T.A.B. 1962), the Board held that the marks DYNAFIX and DYNAFAX were not confusingly similar because sales to photo finishers were in a different trade channel than the sale of expensive cameras to the public, even though the goods were arguably related.  See also In re Shipp, 4 U.S.P.Q.2d (BNA) 1174 (T.T.A.B. 1987) (laundry and cleaning services offered to the public under the PURITAN & Design mark were not confusingly similar to dry-cleaning machine parts or cleaning preparations, including dry cleaning preparations, sold under the PURITAN mark both to laundromats and dry-cleaning establishments); Telex Corp. v. Sound Ear, Inc., 169 U.S.P.Q. (BNA) 255 (T.T.A.B. 1971) (identical marks identifying hearing aids and listening devices for television were not confusingly similar although both goods were used by people who are hard-of- hearing). 

 

            Accordingly, Applicant respectfully submits that there no likelihood of confusion between Applicant’s Mark and the Cited Mark because the respective services are different and are marketed in disparate channels of trade. 

 

c.  Connotation.  The Mark and the Cited Mark have different connotations or meanings, and are, therefore, not identical.  The Mark refers primarily to a method of solving the issues related to sharing access to patient charts between healthcare providers.  The Cited Mark, by contrast, has a double meaning.  It refers to: (i) the recommended treatments for wound and skin care, and (ii) the purchasing of an actual liquid solution for wound and skin care. 

 

d.  Summary.  These services are truly different, as they describe different services and will not lead to confusion on the part of consumers. The Mark provides a means to house copies of individual patient charts and the functionality to access and share these records.   The Cited Mark serves to market a specific regime of treatment for a malady, although not concerning any particular individual.  The markets for these services are not the same, with the Applicant's service only available to user members who have passwords to access the database and the ability to only access records for specific individuals.  On the other hand, the Cited Mark markets services applicable to and available to anyone. Additionally, the meanings of these marks is different, with the Cited Mark suggesting both answers to treat disease and liquids to do the same, and the Mark suggesting the answer to sharing access to patient records.  These differences in services ensure that conditions surrounding their marketing are such that would not be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the services come from a common source. Based upon the foregoing, Applicant respectfully submits that there is no likelihood of confusion between the Mark and the Cited Mark.

 

II.  Recitation of Services:

 

            Applicant hereby withdraws its identification of services and inserts in lieu thereof the following option provided by the Examining Attorney:  Providing on-line computer databases in the fields of medicine and healthcare featuring medical and healthcare information, in class 44.

 

 

 

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant hereby deletes the following class of goods/services from the application.
Class 042 for 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

Applicant hereby adds the following class of goods/services to the application:
New: Class 044 (Original Class: 042 ) for Providing on-line computer databases in the fields of medicine and healthcare featuring medical and healthcare information, in class 44
Filing Basis: Section 1(a), Use in Commerce: The mark was first used at least as early as 01/01/2006 and first used in commerce at least as early as 01/01/2006, and is now in use in such commerce.

SIGNATURE(S)
Declaration Signature
If the applicant is seeking registration under Section 1(b) and/or Section 44 of the Trademark Act, the applicant had a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. 37 C.F.R. Secs. 2.34(a)(2)(i); 2.34 (a)(3)(i); and 2.34(a)(4)(ii). If the applicant is seeking registration under Section 1(a) of the Trademark Act, the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. Secs. 2.34(a)(1)(i). The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. §1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; that if the original application was submitted unsigned, that all statements in the original application and this submission made of the declaration signer's knowledge are true; and all statements in the original application and this submission made on information and belief are believed to be true.

Signature: /Nancyellen Keane/      Date: 07/24/2008
Signatory's Name: Nancyellen Keane, Esquire
Signatory's Position: Attorney of Record

Response Signature
Signature: /Nancyellen Keane/     Date: 07/24/2008
Signatory's Name: Nancyellen Keane, Esquire
Signatory's Position: Attorney of Record

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 77303918
Internet Transmission Date: Thu Jul 24 22:25:36 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XX.XX.X-2008072422253636457
1-77303918-4207c750baf9e0a248c88cb43a3aa
d366-N/A-N/A-20080724220352926884