Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

OFFICE ACTION

 

INTERNATIONAL REGISTRATION NO. 1453348

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

 

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  To do so, enter the U.S. application serial number for this application and then select “Documents.”  The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

 

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

 

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

 

SUMMARY OF ISSUES

 

• Section 2(d) Refusal – Likelihood of Confusion
• Certain Wording in Identification of Goods Indefinite

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5434889.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is ACTIVHEAL for “Medical and surgical dressings; dressings for wounds; wound dressing substances; adhesive dressings; self-adhesive dressings; plasters (dressings); adhesives for medical purposes; liquid adhesives for binding and protecting the skin, for medical use; skin coating pharmaceutical preparations and adhesive skin patches, tapes, dressings for medical use; medicinal gels for the treatment of wounds; surgical cloths, tissues and wadding; parts and fittings for all the aforesaid goods.” in International Class 5. Registrant’s mark is ACTIVHEALTH for “probiotic supplements and dietary supplements,” also in International Class 5.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Applicant’s mark is ACTIVHEAL. Registrant’s mark is ACTIVHEALTH. Applicant’s mark is completely incorporated in registrant’s mark. Furthermore, while each mark is unitary, the first syllable of each mark is identical. The only difference between the marks is the additional “TH” in registrant’s mark.

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Here, the first syllable in both applicant’s and registrant’s mark is “ACTIV.” Because consumers are more likely to focus on the first syllable of a mark, the marks here are considered similar for likelihood of confusion purposes.

 

In addition, slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Here, the only difference between the two marks is the additional “TH” in registrant’s mark (HEAL v. HEALTH). The slight difference created by the addition of “TH” in registrant’s mark will not avoid a likelihood of confusion. Because the marks are so similar and the additional “TH” merely creates a slight difference in sound of the marks, the marks are considered similar for likelihood of confusion purposes. Furthermore, the wording HEAL and HEALTH when combined with the wording ACTIV or ACTIVE have very similar commercial impressions of functioning medicinal products.

 

Because applicant’s mark is completely incorporated in registrant’s mark and the additional “TH” in registrant’s mark results in only a slight difference in sound of the marks, the marks are considered similar for likelihood of confusion purposes.

 

Comparison of the Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Applicant’s goods are “medical and surgical dressings; dressings for wounds; wound dressing substances; adhesive dressings; self-adhesive dressings; plasters (dressings); adhesives for medical purposes; liquid adhesives for binding and protecting the skin, for medical use; skin coating pharmaceutical preparations and adhesive skin patches, tapes, dressings for medical use; medicinal gels for the treatment of wounds; surgical cloths, tissues and wadding; parts and fittings for all the aforesaid goods.” in International Class 5. Registrant’s goods are “probiotic supplements and dietary supplements,” also in International Class 5.

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The Trademark Trial and Appeal Board and its primary reviewing court have used a stricter standard to determine likelihood of confusion for pharmaceuticals or medicinal products due to the potential harm or serious consequences that could be caused if the public confused one drug or medicinal product for another.  See Glenwood Labs., Inc. v. Am. Home Prods. Corp., 455 F.2d 1384, 1386-87, 173 USPQ 19, 21-22 (C.C.P.A. 1972); Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB 1980); Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (TTAB 1976); TMEP §1207.01(d)(xii).  Although physicians and pharmacists are no doubt carefully trained to recognize differences in the characteristics of pharmaceuticals or medicinal products, they are not immune from mistaking similar trademarks used on these goods.  See Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1305-06 (TTAB 2004); Blansett Pharmacal Co. v. Carmrick Labs., Inc., 25 USPQ2d 1473, 1477 (TTAB 1992); Schering Corp., 207 USPQ at 509.  Thus, in this case where confusion could result in harm or other serious consequences to consumers, this potential harm is considered an additional relevant factor and a lesser degree of proof may be sufficient to establish a likelihood of confusion.  See Glenwood Labs., Inc., 455 F.2d at 1386-87, 173 USPQ at 21-22; Schering Corp., 207 USPQ at 509; Ethicon, Inc., 192 USPQ at 651-52; TMEP §1207.01(d)(xii).

 

The attached Internet evidence, consisting of screenshots of websites from CVS®, Walgreens®, and Rite Aid®, establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark. For example, CVS® manufactures and sells bandages, wound closures (adhesive surgical tape strips), liquid bandage, and probiotic supplements under the CVS® mark. Thus, as it is common in applicant’s and registrant’s industry to provide applicant’s and registrant’s goods under the same mark, the goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Response Options

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

CERTAIN WORDING IN IDENTIFICATION OF GOODS INDEFINITE

 

Particular wording in the identification of goods in International Class 5 is indefinite and too broad.  This wording must be clarified because it is not clear what the goods are and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  For example, the wording “parts and fittings for all the aforesaid goods” is essentially limitless and could identify a large swath of goods across many international classes.

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Therefore, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Class 5 only, the class specified in the application for these goods.  See TMEP §1904.02(c), (c)(ii).

 

The following table addresses the issues in applicant’s identification:

 

ID	Class	Issue	Suggestion
Wound dressing substances	5	The ID is indefinite. Applicant must specify the substances it produces.	wound dressing substances, namely, _____ {specify the substances, e.g., liquid bandage sprays, anti-inflammatory ointments, and anti-itch ointment}
Plasters (dressings)	5	The ID is indefinite. Applicant must remove the parentheses and clarify the type of dressings it provides.	medical dressings, namely plasters
Surgical cloths, tissues and wadding	5	The term “tissue,” in particular, is indefinite (per the Trademark ID manual). Applicant must remove this term and/or replace it with definite wording.	surgical cloths, pre-moistened medicated tissues, and wadding
Parts and fittings for all the aforesaid goods	5	The ID is indefinite. “Parts and fittings” could cover innumerable goods in multiple international classes. Applicant must specify the parts and fittings within International Class 5.	Parts and fittings for all the aforesaid goods, namely, _____, _____, and _____ {specify the parts and fittings, e.g., gauze, adhesive bandages, and sterilized dressing}

 

 

Applicant may adopt the following wording in International Class 5, if accurate:

 

Class 5:          Medical and surgical dressings; dressings for wounds; wound dressing substances, namely, _____ {specify the substances, e.g., liquid bandage sprays, anti-inflammatory ointments, and anti-itch ointment}; adhesive dressings; self-adhesive dressings; medical dressings, namely plasters; adhesives for medical purposes; liquid adhesives for binding and protecting the skin, for medical use; Skin coating pharmaceutical preparations and adhesive skin patches, tapes, dressings for medical use; medicinal gels for the treatment of wounds; surgical cloths, pre-moistened medicated tissues, and wadding; parts and fittings for all the aforesaid goods, namely, _____, _____, and _____ {specify the parts and fittings, e.g., gauze, adhesive bandages, and sterilized dressing}.

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice.  Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06. 

 

For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help or an online directory of legal professionals, such as FindLaw®.  The USPTO, however, may not assist an applicant in the selection of a private attorney.  37 C.F.R. §2.11.

 

Please note that foreign attorneys, other than duly authorized Canadian attorneys, are not permitted to represent applicants before the USPTO.  See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).  The only attorneys who may practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths/territories; and (2) duly authorized Canadian agents/attorneys.  See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602.

 

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

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. 

 

 

/Nathan C. Ranns/

Trademark Examining Attorney

Law Office 128

(571) 270-3776

nathan.ranns@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.