| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77930633 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Examining Attorney: Rebecca Smith Law Office: 110 Serial No.: 77/930,633 Mark: HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK Mark Type: Trademark and Service Mark (Int. Classes 9, 36, 42, 45) Filed: February 8, 2010 Applicant/Owner: Clearwave Corporation
Docket No.: CLW-10-1041 Date: Jun. 2, 2010
RESPONSE
Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
Sir:
In response to the Official Action dated May 10, 2010, the Applicant provides the following remarks and amendments:
Please amend the recitation of goods and services as follows:
International Class 9: "Transponders, transceivers, and computer software, all for use in the capture, organization, analysis, management,
display, and transmission of data and transactions among and between originating users, intermediary users, and end users;
International Class 42: "consultation in the field of information technology; integration of computer systems and networks; computer
systems analysis; computer programming for others; computer software and web portal design for others; maintenance of computer software; technical computer support, namely, consultation in connection
with the operation and maintenance of computer software; leasing and rental of computer programs; database development services;
REMARKS
The Examining Attorney has refused registration based on an alleged improper goods and services identification, and based on an alleged descriptiveness of the mark. Reconsideration of these grounds of refusal and further examination is respectfully requested in view of the following remarks.
REFUSAL - DESCRIPTIVENESS - SECTION § 2(e)(1)
The Applicant respectfully traverses the Examining Attorney's refusal based on the alleged descriptiveness of the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK.
A mark is considered "merely descriptive" if it immediately imparts information concerning the goods or services to an ordinary prospective purchaser of the goods or services. In re Intelligent Medical Systems, Inc. 5 U.S.P.Q.2d 1674 (TTAB 1987). Alternatively, a mark is considered "suggestive" if "imagination, thought and perception" is required to reach a conclusion as to the nature of the goods or services. Maidenform, Inc. v. Munsingwear, Inc., 195 U.S.P.Q. 297 (S.D.N.Y. 1977) (mark UNDERNEATH IT ALL for ladies undergarments is suggestive). Because there is often times a "thin line" between 'descriptive' and 'suggestive' marks (and reasonable men can differ in opinion), the Trademark Trial and Appeal Board resolves all doubts in the applicant's favor by publishing the mark for opposition. In re Intelligent Medical Systems, 5 U.S.P.Q.2d at 1676.
The "imagination" test, was originally formulated by Judge Weinfeld in the Stix Products case, and is widely invoked to determine the difference between marks which are 'descriptive' and marks which are 'suggestive.' See, Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F.Supp. 479 (S.D.N.Y. 1968).
For example, the following marks were all held to be suggestive (i.e., not descriptive) of the associated goods or services: DIAL-A-MATTRESS for mattress sales, GLASS DOCTOR for glass repair services, and ROACH MOTEL for insect traps. See, Dial-A-Mattress Operating Corp. v. Mattress Madness, 841 F.Supp. 1339, recons. den. , 847 F.Supp. 18, ops. combined at 33 U.S.P.Q.2d 1961, 1966 (E.D.N.Y. 1994); Synergisitc International, Inc. v. Windshield Doctor Inc., 66 U.S.P.Q.2d 1936 (C.D.Cal. 2003); American Home Products Corp. v. Johnson Chemical Co., 589 F.2d 103 (2nd Cir. 1978).
From the perspective of potential ordinary customers of Applicant's goods and services, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK does not immediately describe the goods and services provided, because it does not immediately impart information which describes the goods as "transponders," "transceivers" and computerized "point-of-service terminals," and the services as "electronic payment processing" services, "identification verification services" and "consultation in the field of information technology." At best, the mark conveys the industry of healthcare, and the concept of authentication using a kiosk, but nothing more. There are various goods and services which involve the concept of authentication in the healthcare industry. For example, authentication may be used in the health care industry for patient admission and discharge, to verify visitors to a patent, or to verify a health care worker's credentials (i.e., hospital security). Furthermore, the term "kiosk" does not automatically convey a transceiver or computerized point-of-service terminal. In fact, many kiosks are not computerized, or even electronic. In short, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK does not immediately convey a transceiver or electronic point-of-service terminal for verifying a patient's identity and insurance information in order to process payment of health care bills. In any event, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK is no more descriptive of Applicant's goods and services than marks DIAL-A-MATTRESS, GLASS DOCTOR, and ROACH MOTEL are of the associated goods and services referenced above (i.e., mattresses, glass repair services and insect traps).
The mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK describes, if anything, a kiosk for use in authenticating something in the health care industry. The mark does not convey that the kiosk is electronic or computer-based (i.e., a transceiver), and does not describe what is being authenticated, or why. In other words, 'imagination' is required to get from the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK to a transceiver-based system for authenticating health care patients and their insurance in order to process payment of health care bills. Moreover, as noted above, any doubt in this analysis should be resolved in favor of the Applicant.
The potential ordinary customer of Applicant's goods and services is more likely to consider the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK a suggestive term. Particularly, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK does not automatically describe goods or services; that is, thought and 'mental gymnastics' are necessary to connect the mark with Applicant's goods and services. See, In re Application of Quik-Print Copy Shops, Inc., 616 F.2d 523 (CCPA 1980); BigStar Entertainment, Inc. v. Next Big Star, Inc., 105 F.Supp.2d 185, 199 (S.D.N.Y. 2000) (no "mental detour" or "thought gymnastics" are demanded for 'descriptive' marks). Therefore, mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK is at least suggestive of Applicant's goods and services.
An alternative test for determining the difference between 'descriptive' and 'suggestive' marks is the 'competitor's need' test. See, Sperry Rand Corp. v. Sunbeam Corp., 442 F.2d 979 (CCPA 1971). Under this test, if registration of the mark would prevent competitors from accurately describing their products and/or services, then the mark is arguably 'descriptive.' Id.
The opinion of the Court in In re Reynolds is instructive. In re Reynolds Metals Co., 178 U.S.P.Q. 296 (CCPA 1973). In that case, the applicant sought to register the mark BROWN-IN-BAG for transparent film bags. The Court reversed a U.S. Trademark Office refusal to register, and stated:
Competitors are deprived only of the use of the three words in such format as would be likely to confuse. Competitors remain perfectly free to inform purchasers that foods may be browned in their bags and to use "brown," "in" and "bag" in whatever non-trademark manner they choose.
Id. at 297 (citations omitted).
Similarly, in the present case, registration of the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK would only deprive competitors in the health care industry from using the composite term "Healthcare's Authentication Network and Kiosk"; it would not prevent competitors from using the terms "healthcare," "authentication," or "kiosk" apart from the mark. That is, registration of the mark would not prevent competitors from using the terms in whatever non-trademark manner they choose.
Accordingly, Applicant submits that its mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK for goods such as "transponders" and "transceivers," and services such as "electronic payment processing" services, "identification verification services" and "consultation in the field of information technology," is not 'merely descriptive', but is at least 'suggestive.' Therefore, reconsideration and withdrawal of the present refusal under § 2(e)(1) is respectfully requested.
AMENDMENT TO ALLEGE USE UNDER 37 C.F.R. § 2.76
Concurrently with this Response, the Applicant has submitted an Amendment to Allege Use Under 37 C.F.R. 2.76, which indicates that the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK has been in use in both intrastate and interstate commerce since at least as early as March 1, 2010.
CONCLUSION
Accordingly, we respectfully request that the present application be passed to publication.
Respectfully submitted,
Darius C. Gambino Reg. No. 41,472 Attorney for Applicant darius.gambino@dlapiper.com
DLA Piper LLP One Liberty Place 1650 Market Street, Suite 4900 Philadelphia, PA 19103 215.656.3300 Phone 215.656.3301 Fax
|
|
| GOODS AND/OR SERVICES SECTION (009)(current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Transponders, transceivers, and computer software, all for use in the capture, organization, analysis, management, display, and transmission of data and transactions among and between originating users, intermediary users, and end users; computer hardware, namely, point-of-service terminals, wall-mounted point-of-service terminals, personal digital assistants, tablet personal computers, and other handheld devices, scanning and input devices, readers, printers, encoders, and related electronic devices capable of reading radio frequency identification | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (009)(proposed) | |
| INTERNATIONAL CLASS | 009 |
| TRACKED TEXT DESCRIPTION | |
| Transponders, transceivers, and computer software, all for use in the capture, organization, analysis, management,
display, and transmission of data and transactions among and between originating users, intermediary users, and end users; |
|
| FINAL DESCRIPTION | |
| Transponders, transceivers, and computer software, all for use in the capture, organization, analysis, management, display, and transmission of data and transactions among and between originating users, intermediary users, and end users; computer hardware, namely, point-of-service terminals, wall-mounted point-of-service terminals, personal digital assistants, tablet personal computers, computer printers, canners, encoders, RFID readers, and portable digital electronic devices for recording, organizing, transmitting, manipulating and reviewing text, data, image and audio files | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (036)(no change) | |
| GOODS AND/OR SERVICES SECTION (042)(current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| consultation in the field of information technology; integration of computer systems and networks; computer systems analysis; computer programming for others; computer software and web portal design for others; maintenance of computer software; technical computer support, namely, consultation in connection with the operation and maintenance of computer software; leasing and rental of computer programs; database development services; updating of computer software and Internet portals; consultation and computer software development for others;integration of computer systems; installation of computer software for others; maintenance of computer software services | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (042)(proposed) | |
| INTERNATIONAL CLASS | 042 |
| TRACKED TEXT DESCRIPTION | |
| consultation in the field of information technology; integration of computer systems and
networks; computer systems analysis; computer programming for others; computer software and web portal design for
others; maintenance of computer software; technical computer support, namely, consultation in connection with the operation and maintenance of
computer software; leasing and rental of computer programs; database development services; |
|
| FINAL DESCRIPTION | |
| consultation in the field of information technology; integration of computer systems and networks; computer systems analysis; computer programming for others; computer software and web portal design for others; maintenance of computer software; technical computer support, namely, consultation in connection with the operation and maintenance of computer software; leasing and rental of computer programs; database development services; updating of computer software and Internet portals for others; computer consultation and computer software development for others;integration of computer systems; installation of computer software for others; maintenance of computer software services | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (045)(no change) | |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /dcg/ |
| SIGNATORY'S NAME | Darius C. Gambino |
| SIGNATORY'S POSITION | Attorney of Record, PA 83496 |
| DATE SIGNED | 06/02/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jun 02 11:18:02 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20100602111802661095-7793 0633-4604fde80d19647f3255 adc877bbbea4cc-N/A-N/A-20 100602111223686108 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Examining Attorney: Rebecca Smith
Law Office: 110
Serial No.: 77/930,633
Mark: HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK
Mark Type: Trademark and Service Mark (Int. Classes 9, 36, 42, 45)
Filed: February 8, 2010
Applicant/Owner: Clearwave Corporation
Docket No.: CLW-10-1041
Date: Jun. 2, 2010
RESPONSE
Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514
Sir:
In response to the Official Action dated May 10, 2010, the Applicant provides the following remarks and amendments:
Please amend the recitation of goods and services as follows:
International Class 9: "Transponders, transceivers, and computer software, all for use in the capture, organization, analysis, management,
display, and transmission of data and transactions among and between originating users, intermediary users, and end users; computer hardware, namely, point-of-service terminals, wall-mounted
point-of-service terminals, personal digital assistants, tablet personal computers, and other handheld devices, scanning and input devices, readers, printers, encoders, and related electronic devices
capable of reading radio frequency identification; computer hardware, namely, point-of-service terminals, wall-mounted point-of-service terminals, personal digital assistants, tablet personal
computers, computer printers, scanners, encoders, RFID readers, and portable digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, image and
audio files."
International Class 42: "consultation in the field of information technology; integration of computer systems and networks; computer
systems analysis; computer programming for others; computer software and web portal design for others; maintenance of computer software; technical computer support, namely, consultation in connection
with the operation and maintenance of computer software; leasing and rental of computer programs; database development services; updating of computer software and Internet portals; updating
of computer software and Internet portals for others; consultation and computer software development for others; computer consultation and computer software development for others;
integration of computer systems; installation of computer software for others; maintenance of computer software services."
REMARKS
The Examining Attorney has refused registration based on an alleged improper goods and services identification, and based on an alleged descriptiveness of the mark. Reconsideration of these grounds of refusal and further examination is respectfully requested in view of the following remarks.
REFUSAL - DESCRIPTIVENESS - SECTION § 2(e)(1)
The Applicant respectfully traverses the Examining Attorney's refusal based on the alleged descriptiveness of the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK.
A mark is considered "merely descriptive" if it immediately imparts information concerning the goods or services to an ordinary prospective purchaser of the goods or services. In re Intelligent Medical Systems, Inc. 5 U.S.P.Q.2d 1674 (TTAB 1987). Alternatively, a mark is considered "suggestive" if "imagination, thought and perception" is required to reach a conclusion as to the nature of the goods or services. Maidenform, Inc. v. Munsingwear, Inc., 195 U.S.P.Q. 297 (S.D.N.Y. 1977) (mark UNDERNEATH IT ALL for ladies undergarments is suggestive). Because there is often times a "thin line" between 'descriptive' and 'suggestive' marks (and reasonable men can differ in opinion), the Trademark Trial and Appeal Board resolves all doubts in the applicant's favor by publishing the mark for opposition. In re Intelligent Medical Systems, 5 U.S.P.Q.2d at 1676.
The "imagination" test, was originally formulated by Judge Weinfeld in the Stix Products case, and is widely invoked to determine the difference between marks which are 'descriptive' and marks which are 'suggestive.' See, Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F.Supp. 479 (S.D.N.Y. 1968).
For example, the following marks were all held to be suggestive (i.e., not descriptive) of the associated goods or services: DIAL-A-MATTRESS for mattress sales, GLASS DOCTOR for glass repair services, and ROACH MOTEL for insect traps. See, Dial-A-Mattress Operating Corp. v. Mattress Madness, 841 F.Supp. 1339, recons. den. , 847 F.Supp. 18, ops. combined at 33 U.S.P.Q.2d 1961, 1966 (E.D.N.Y. 1994); Synergisitc International, Inc. v. Windshield Doctor Inc., 66 U.S.P.Q.2d 1936 (C.D.Cal. 2003); American Home Products Corp. v. Johnson Chemical Co., 589 F.2d 103 (2nd Cir. 1978).
From the perspective of potential ordinary customers of Applicant's goods and services, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK does not immediately describe the goods and services provided, because it does not immediately impart information which describes the goods as "transponders," "transceivers" and computerized "point-of-service terminals," and the services as "electronic payment processing" services, "identification verification services" and "consultation in the field of information technology." At best, the mark conveys the industry of healthcare, and the concept of authentication using a kiosk, but nothing more. There are various goods and services which involve the concept of authentication in the healthcare industry. For example, authentication may be used in the health care industry for patient admission and discharge, to verify visitors to a patent, or to verify a health care worker's credentials (i.e., hospital security). Furthermore, the term "kiosk" does not automatically convey a transceiver or computerized point-of-service terminal. In fact, many kiosks are not computerized, or even electronic. In short, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK does not immediately convey a transceiver or electronic point-of-service terminal for verifying a patient's identity and insurance information in order to process payment of health care bills. In any event, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK is no more descriptive of Applicant's goods and services than marks DIAL-A-MATTRESS, GLASS DOCTOR, and ROACH MOTEL are of the associated goods and services referenced above (i.e., mattresses, glass repair services and insect traps).
The mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK describes, if anything, a kiosk for use in authenticating something in the health care industry. The mark does not convey that the kiosk is electronic or computer-based (i.e., a transceiver), and does not describe what is being authenticated, or why. In other words, 'imagination' is required to get from the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK to a transceiver-based system for authenticating health care patients and their insurance in order to process payment of health care bills. Moreover, as noted above, any doubt in this analysis should be resolved in favor of the Applicant.
The potential ordinary customer of Applicant's goods and services is more likely to consider the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK a suggestive term. Particularly, the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK does not automatically describe goods or services; that is, thought and 'mental gymnastics' are necessary to connect the mark with Applicant's goods and services. See, In re Application of Quik-Print Copy Shops, Inc., 616 F.2d 523 (CCPA 1980); BigStar Entertainment, Inc. v. Next Big Star, Inc., 105 F.Supp.2d 185, 199 (S.D.N.Y. 2000) (no "mental detour" or "thought gymnastics" are demanded for 'descriptive' marks). Therefore, mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK is at least suggestive of Applicant's goods and services.
An alternative test for determining the difference between 'descriptive' and 'suggestive' marks is the 'competitor's need' test. See, Sperry Rand Corp. v. Sunbeam Corp., 442 F.2d 979 (CCPA 1971). Under this test, if registration of the mark would prevent competitors from accurately describing their products and/or services, then the mark is arguably 'descriptive.' Id.
The opinion of the Court in In re Reynolds is instructive. In re Reynolds Metals Co., 178 U.S.P.Q. 296 (CCPA 1973). In that case, the applicant sought to register the mark BROWN-IN-BAG for transparent film bags. The Court reversed a U.S. Trademark Office refusal to register, and stated:
Competitors are deprived only of the use of the three words in such format as would be likely to confuse. Competitors remain perfectly free to inform purchasers that foods may be browned in their bags and to use "brown," "in" and "bag" in whatever non-trademark manner they choose.
Id. at 297 (citations omitted).
Similarly, in the present case, registration of the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK would only deprive competitors in the health care industry from using the composite term "Healthcare's Authentication Network and Kiosk"; it would not prevent competitors from using the terms "healthcare," "authentication," or "kiosk" apart from the mark. That is, registration of the mark would not prevent competitors from using the terms in whatever non-trademark manner they choose.
Accordingly, Applicant submits that its mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK for goods such as "transponders" and "transceivers," and services such as "electronic payment processing" services, "identification verification services" and "consultation in the field of information technology," is not 'merely descriptive', but is at least 'suggestive.' Therefore, reconsideration and withdrawal of the present refusal under § 2(e)(1) is respectfully requested.
AMENDMENT TO ALLEGE USE UNDER 37 C.F.R. § 2.76
Concurrently with this Response, the Applicant has submitted an Amendment to Allege Use Under 37 C.F.R. 2.76, which indicates that the mark HEALTHCARE'S AUTHENTICATION NETWORK AND KIOSK has been in use in both intrastate and interstate commerce since at least as early as March 1, 2010.
CONCLUSION
Accordingly, we respectfully request that the present application be passed to publication.
Respectfully submitted,
Darius C. Gambino
Reg. No. 41,472
Attorney for Applicant
darius.gambino@dlapiper.com
DLA Piper LLP
One Liberty Place
1650 Market Street, Suite 4900
Philadelphia, PA 19103
215.656.3300 Phone
215.656.3301 Fax