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. 

 

 

Serial Number  78/572476

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registered Marks

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2749006 and 2319016.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or 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 Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.

 

Taking into account the relevant DuPont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

For Registration No. 2749006, Registrant’s services, “Arrangement of health care services,” are similar to Applicant’s “health care services.”  The two services are complimentary.  While Applicant provides health care services, Registrant arranges health care services.  Further, the marks are also similar. 

 

The only difference between the two marks is the inclusion of the word “Health” in Registrant’s mark.  The word “Health” in the context of health care is inherently descriptive and weak.  Thus, the main thrust of Registrant’s mark is the word “Advocate.”  This word is the whole of Applicant’s mark.  Thus, because the services and the marks are similar, there is a strong likelihood of confusion between the two marks.

 

For Registration No. 2319016, Registrant’s services, “health care consulting services” are similar to Applicant’s “health care services.”  The Registrant is providing consulting for the very service offered by the Applicant.  These services are closely related and would be offered to consumers in the same markets.  Further, the marks are also similar. 

 

The only difference between the two marks is the inclusion of the words “Health,” “Care,” and “Inc.” in Registrant’s mark, and the fact that Registrant uses the plural “Advocates” while Applicant’s mark is the singular “Advocate.”  The words “Health,” “Care,” and “Inc.” are inherently descriptive and weak in the context of health care consulting services.  Further, Registrant disclaimed these three words in his application.  Thus, the main thrust of Registrant’s mark is the word “Advocates.”  The lack of an “s” on the end of Applicant’s mark is insufficient to distinguish the two marks.  This word is the whole of Applicant’s mark.  Thus, because the services and the marks are similar, there is a strong likelihood of confusion between the two marks.

 

Pending Applications

In addition to the above-cited marks, the examining attorney encloses information regarding pending Application Serial Nos. 78251169 and 78246036.  The filing dates of the referenced applications precede the applicant’s filing date.  There may be a likelihood of confusion between the applicant’s mark and the referenced marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If one or more of the referenced applications matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

As to Serial No. 78251169, Registrant’s service, “providing medical treatment,” is similar to Applicant’s “health care services” and “hospital services.”  Both services provide medical services to patients.  See attached definition-1, definition-2, definition-3.  Further, the marks are also similar.  The only difference between the marks is the inclusion of the word “Healthcare” in Registrant’s mark, and the addition of an “s” on the end of the word “Advocate.”  The word “Healthcare” in the context of medical treatment is inherently descriptive and weak.  Thus, the main thrust of Registrant’s mark is the word “Advocates.”  The lack of an “s” on the end of Applicant’s mark is insufficient to distinguish the two marks.  Thus, because the services and the marks are similar, there is a strong likelihood of confusion between the two marks.

 

As to Serial No. 78246036, Registrant defines his services as, “Providing information at the specific request of end-users by means of telephone or a computer network, including the use of email and web pages, for the purpose of patient advocacy; Medical research for end users as it relates to selecting a physician, facility and/or treatment plan for the purpose of quality assurance in the field of medicine.”  These services are essentially aspects of the services offered by the applicant: “health care services.” See attached definition-1, definition-2, definition-3.  Further, the marks are also similar.  The only difference between the marks is the inclusion of the word “Healthcare” in Registrant’s mark, and the addition of an “s” on the end of the word “Advocate.”  The word “Healthcare” in the context of medical treatment is inherently descriptive and weak.  Thus, the main thrust of Registrant’s mark is the word “Advocates.”  The lack of an “s” on the end of Applicant’s mark is insufficient to distinguish the two marks.  Thus, because the services and the marks are similar, there is a strong likelihood of confusion between the two marks.

 

 

Classification

Beyond the substantive problems detailed above, Applicant must correct the classification of the services in the application and amend the application to classify them in International Class 44.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

 

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/S.DavidSterkin/

Trademark Examining Attorney

Law Office 110

 

 

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 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.