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  78/873842

 

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

 

Prior Pending Application

Information regarding pending Application Serial No. 78577356 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Section 2(d) - Likelihood of Confusion Refusal

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1998164 and 2787814.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services.  TMEP §1207.01.  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 consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services.  The overriding concern is to prevent buyer confusion as to the source of the goods and/or services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). 

 

Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

 

A likelihood of confusion determination requires 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 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.

 

Applicant’s mark, “FORECAST,” is highly similar to the registrants’ marks, “FORECAST,” (Registration No. 1998164) and “HEALTH FORECAST” (Registration No. 2787814) in appearance, sound and commercial impression.   Applicant’s mark is identical to the mark in the first registration, and only differs from the second registration by omitting the descriptive word “HEALTH.” 

 

If the marks of the respective parties are identical, the relationship between the goods or 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.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

Also, the mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear).  In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

 

The examining attorney also notes that the registrant has disclaimed the wording “HEALTH” apart from the full mark “HEALTH FORECAST.”  Disclaimed matter is typically less significant or less dominant when comparing marks.  Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression.  In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).  See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986).

 

Furthermore, the goods and services are closely related.  The applicant’s goods and services are as follows:

 

“Computer software, prerecorded audiotapes, videotapes, and multimedia programs in the fields of health education, health promotion, disease management and health care; electronic database of medical related information, including symptoms, diagnosis, treatments, home care and preventative care; and software for searching, navigating, displaying and printing the information within the database, for purposes of disease management; Providing a web site of information in the fields of health education, health promotion and health care for purposes of disease management, and disease management services; and disease management services.”

 

The registrants’ services are as follows:

 

(Registration No. 1998164): “Consulting services directed to root-cause, medical condition analyses to determine the reasons, maladies, symptoms, treatments and the like which occurred in the past, and which are the underlying root-cause, or causative factors which led to a present condition.”

 

(Registration No. 2787814): “Providing temporary use of non-downloadable software featuring a health questionnaire for use in assessing and evaluating a person's health by analyzing the answers to a questionnaire; providing personalized health information via a web site whereby a user completes an electronic questionnaire and receives a health evaluation.”

 

The applicant’s goods and services are closely related to both of the registrants’ services because they are all in the field of healthcare.  In particular, applicant’s pre-recorded media, multimedia computer programs, or informational websites in the field of healthcare and health information for the purpose of disease management could easily encompass software that features a health questionnaire whereby consumers are able to assess their health.  Also, applicant’s broad wording “disease management services” could encompass the registrant’s more narrowly defined services of consultation services related to medical condition analyses.  Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

Furthermore, if the goods or services of the respective parties are closely related, as they are here, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).

 

Since applicant’s mark is identical to the mark in Registration No. 1998164 and highly similar to the mark in Registration No. 2787814, and the goods and services are so closely related, there is a likelihood that purchasers would confuse the sources of the goods and services or believe they stemmed from a single source.  Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement:

 

Identification and Classification of Goods and Services

Applicant must correct the classification of the services “providing a web site of information in the field of health education” in the application and amend the application to classify those services in International Class 41, and applicant must correct the classification of the services “providing a web site of information in the fields of health promotion and health care for purposes of disease management, and disease management services” to classify those services in International Class 44.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  The services of “providing information” are classified according to the field or subject matter of the information.  Services relating to education are properly classified in International Class 41, and services related to health care are properly classified in International Class 44.

 

Next, for the wording “computer software,” applicant must indicate the purpose(s) or function(s) of the computer software.  TMEP §1402.03(d).  This additional information is necessary to permit proper examination of the application and to enable the Office to make appropriate decisions concerning possible conflicts between the applicant's mark and other marks.  See In re NA.D. Inc., 57 USPQ2d 1872 (TTAB 2000); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).

 

Last, the wording “electronic database of medical related information, including symptoms, diagnosis, treatments, home care and preventative care” in the identification of goods requires clarification because it is too broad and could describe goods and/or services in more than one international class.  This wording could describe an electronic database that is recorded on computer media in International Class 9, or providing an online computer database in the field of medical related information, including symptoms, diagnosis, treatments, home care and preventative care in International Class 44.  TMEP §§1402.01 and 1402.03.

 

The examining attorney suggests, and applicant may adopt, any or all of the following identification of goods and services, if accurate:

 

“Computer software for [indicate function of the programs, e.g., use as a spreadsheet, database management, etc.], prerecorded audiotapes, videotapes, and multimedia programs in the fields of health education, health promotion, disease management and health care; electronic database of medical related information, including symptoms, diagnosis, treatments, home care and preventative care, recorded on computer media; and software for searching, navigating, displaying and printing the information within the database, for purposes of disease management,” in International Class 9.

 

“Providing a website of information in the field of health education,” in International Class 41.

 

“Disease management services; providing an online computer database in the field of medical related information, including symptoms, diagnosis, treatments, home care and preventative care; providing a web site of information in the fields of disease management services and health promotion and health care for purposes of disease management,” in International Class 44.

 

TMEP §1402.01

 

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

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Response Guidelines

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

The applicant may wish to hire a trademark attorney because of the technicalities involved in the application.  The Patent and Trademark Office cannot aid in the selection of an attorney.

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the assigned examining attorney.

 

 

 

 

 

/Allison P. Schrody/

Examining Attorney

Law Office 115

(571) 272-5893

(571) 273-9115 (fax)

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.