UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

ISSUE/MAILING DATE: 8/29/2008

 

OFFICE ACTION

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must submit a timely and complete response to the issues described below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

REFUSAL TO REGISTER – LIKELIHOOD OF CONFUSION

 

Registration of the pending mark is refused because it is likely to be confused with the mark in U.S. Registration No. 3401282.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act 2(d) bars registration of a pending mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the services of applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under §2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

The following factors are the most relevant:  similarity of the marks, similarity of the services, and similarity of trade channels of the services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

In this case the marks are identical, and both identify services pertaining to health care.  Therefore, consumers are likely to assume that the marks are owned by the same entity.

 

The services of the parties need not be identical or directly competitive in order to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that they come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

If the marks of the respective parties are identical, the relationship between the 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.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

If applicant chooses to respond to this communication, the following issue must also be addressed:

 

IDENTIFICATION AND CLASSIFICATION OF SERVICES

 

The application identifies services that are classified in two classes; however, the fees submitted are sufficient for one class only.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to one class, or (2) submit the fees for the additional class.

 

Following are acceptable identifications, by class:

 

Class 42 – Quality assurance services in the field of health care insurance.

 

Class 45 – Fraud detection services in the field of health care insurance; investigation services related to insurance claims. 

 

Identifications of goods and services can be amended only to clarify or limit the goods and services; adding to or broadening the scope of the goods or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For assistance with identifying and classifying goods and services in trademark applications, applicant is urged to consult the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

If Class 42 is added, applicant must comply with each of the requirements listed below for those services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)        List the services by international class;

 

(2)        Submit a filing fee for each international class of services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and

 

(3)        For each additional international class of 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 the services in Class 42; the specimen must have been in use in commerce at least as early as the filing date of the application. 

 

c.   The following statement: “The Class 42 specimen was in use in commerce in connection with the 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) (above) in an affidavit or a signed declaration under 37 C.F.R. §§2.20, 2.33.  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, and (2) the original specimens are acceptable for the added class (not applicable in this case).

 

See 37 C.F.R. §§2.34(a)(1), 2.71(c), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

The specimen of record is acceptable for International Class 45 only.

 

DECLARATION

 

Following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. §2.33(a).

 

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 the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

_____________________________

                (Signature)

_____________________________

(Print or Type Name and Position)

_____________________________

                  (Date)

 

 

 

 

 

/Sue Carruthers/

Trademark Attorney, Law Office 108

Phone:  571-272-9139

Fax: 571-273-9108 (formal responses only)

 

 

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 office’s Response to Office Action 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; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information:  application serial number, the mark, 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.

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 8/29/2008 FOR

APPLICATION SERIAL NO. 77472846

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77472846&doc_type=OOA&mail_date=20080829 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 8/29/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.