Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  78/432652

 

This letter is intended to supersede the office action dated 10/01/2005 because the examining attorney detected an error in the office action that needs to be corrected.  Please note, however, that the evidence that was previously attached is still valid and it will be kept as part of the record so that the examining attorney does not need to reattach it.

 

This letter responds to applicant’s communication dated 07/28/2005.  Applicant’s amended identification of goods is acceptable and has been entered accordingly.  The prior pending application serial no. 76506118 has abandoned and it’s no longer in consideration.  Please note that the examining attorney has reconsidered the 2(d) refusal pertaining to U.S. Registration No. 1985915 and that refusal is hereby withdrawn.  Please note however that for the reasons listed below the 2(d) refusal pertaining to U.S. Registration Nos. 2678058 and 2270068 are now continued and made FINAL.

 

SECTION 2(d) FINAL REFUSAL

 

The 2(d) refusal dated 01/28/2005 remains unchanged regardless of the fact that the applicant amended the identification of goods since the goods and services remain related and are likely to travel through the same channels of trade.  

 

SECTION 2(d) LIKELIHOOD OF CONFUSION

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2678058 and 2270068 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

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).

 

Applicant’s mark is “PERADIGM”, for computer software provided through an open source model community or license fee model for use in operations and management of health care business, clinical and administrative workflows, and instructional manuals and documentation distributed therewith.  Registrants’ marks are “PARADIGMHEALTH”, Registration No. 2678058, for medical case management services and for medical consultation services, “PARADIGM”, Registration No. 2270068, for computer programs.

The goods of the applicant and the goods and services of the registrants’ are highly related in that they are all used in connection with health care organizations.   

The goods and services of the applicant and of the registrants are likely to travel through the same channels of trade and are likely to be encountered by the same consumers.  The average consumer when encountering applicant’s and registrant’s marks on the goods is likely to believe that the goods and services derive from the same source and is not likely to realize that the goods come from two separate sources.  Therefore, likelihood of confusion may occur.

The examining attorney attaches evidence which clearly indicates that the fields that applicant’s software pertain to are also services that are rendered in the medical field, that providers of software also offer medical case management services and medical consultations and evidence that show that healthcare management and medical case management are related.  The Trademark Trial and Appeal Board has held that materials obtained through computerized text searching are competent evidence to show the descriptive use of terms under Trademark Act Section 2(e)(1), 15 U.S.C. Section 1052(e)(1).  In re National Data Corp., 222 USPQ 515, 517 n.3 (TTAB 1984).

 

The applicant argues that the marks are phonetically different.  Please note that this argument is not persuasive.  Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).

The marks are essentially phonetic equivalents and are thus similar sounding.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).

 

The applicant also argues that goods should not be cited against services.  That argument is also unpersuasive for the following reasons.  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 busses is likely to cause confusion).

 

Next, the applicant argues that the goods and services of the applicant and the registrant will not travel through the same channels of trade because the applicant markets and sells it services specifically to Perot Systems Corporation customers and not to the general consumer.  The examining attorney is unpersuaded by this argument for the following reasons.  The applicant did not limit its channels of trade in any way and even if the channels of trade of the applicant would have been limited those of the registrants are not.  It is very likely for users of Perrot Systems goods to come across the registrants’ goods and services and to believe that they come from the same source and not different sources.

 

The applicant goes on to say that it provides software to very sophisticated buyers.  That argument is also unpersuasive for the following reason.  The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).

 

For all the reasons outlined above, and based on the evidence of record, the refusal to register under TMEP Section 1207 and under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), TMEP Section 1402.01 of the Trademark Act is continued and made FINAL.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

 

 

 

 

Florentina Blandu, Esq.

/FBLANDU/

l.o.112

tel. (571) 272-9128

fax (571) 273-9128

e-mail florentina.blandu@uspto.gov (for informal communications)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.