United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 79291768
Mark: VITALCARE
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Correspondence Address: WeWork 11F #127, 428, Seolle; Gangnam-gu
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Applicant: AItrics Co., Ltd.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1545862
Notice of Provisional Full Refusal
Deadline for responding. The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
Summary of Issues that Applicant Must Address
1. Trademark Act Section 2(d) Refusal - Likelihood of Confusion
· ADVISORY - Application Not Entitled to Register - One Pending Application with Earlier Filing Date
2. Requirement that Applicant be Represented by a U.S.-Licensed Attorney
3. Requirement to Provide an Email Address for Applicant
4. Requirement to Clarify the Identification of Goods
5. Requirement to Clarify the Mark Description
Trademark Act 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. 5866169. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the enclosed registration at Attachment 1. Registrant’s mark is VITALCARE for “Wearable optical and electrical sensing apparatus, namely, sensors for scientific use to gather human biometric data; wearable optical and electrical sensing apparatus, namely, sensors for scientific use to be worn by a human to gather human biometric data and containing software for measuring, processing, and transmitting biometric data” in International Class 9 and “Wearable optical and electrical sensing apparatus, namely, sensors for medical use to gather human biometric data for medical purposes” in International Class 10.
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 and differences in the marks.”); TMEP §1207.01.
Similarity 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The abstract “VC” design, although it appears in a large size in the mark, is less likely to be used by consumers in calling for the services than the bold wording “VITALCARE.” When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Even if consumers recognize the letters “VC” in the design, they will understand these letters to abbreviate the term “VITALCARE” that applicant’s mark shares with the registered mark. They are thus likely to perceive applicant’s mark as a composite mark variation of the registered mark that identifies the same source.
For these reasons, the marks convey a highly similar overall commercial impression.
Relatedness 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).
In this case, the application uses broad wording to describe “computer software, recorded,” “downloadable software,” “medical software,” and “interactive computer software,” which presumably encompasses all goods of the types described, including registrant’s more narrowly identified “software for measuring, processing, and transmitting biometric data.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical in part. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to channels of trade or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Registrant’s goods include “Wearable optical and electrical sensing apparatus, namely, sensors for medical use to gather human biometric data for medical purposes.” Applicant’s goods include “medical software” that may utilize human biometric data for medical purposes. Indeed, according to applicant’s website, applicant’s software “acquir[es] bio sensor data” from health records and “calculates and delivers valuable risk scores for diseases,” as shown by a screen shot from applicant’s website at Attachment 3. Thus, applicant’s goods may be used by the same consumers, e.g., hospital and medical providers, as the types of medical sensors identified in the registration.
Because applicant’s mark is very similar to registrant’s mark, and because applicant’s goods are legally identical or closely related to registrant’s goods, there is a likelihood of confusion as to the source of the goods.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
ADVISORY - Application Not Entitled to Register – One Pending Application with Earlier Filing Date
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Requirement that Applicant be Represented by a U.S.-Licensed Attorney
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R. §2.11(a). See Hiring a U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R. §2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R. §2.17(b)(1)(ii).
Requirement to Provide an Email Address for Applicant
Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
Requirement to Clarify the Identification of Goods
THIS REQUIREMENT APPLIES ONLY TO THE PARTICULAR GOODS INDICATED BELOW.
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). Where indicated below, applicant must further clarify the function and/or field of use of the software.
The international classification of goods in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau assigned to the goods in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §1401.03(d). Therefore, although software may be classified in international classes other than International Class 9, any modification to the identification must identify goods in International Class 9 only, the class specified in the application for such goods. See TMEP §1904.02(c)(ii).
Applicant must also amend the wording “[IoT]” by replacing the brackets with parentheses. See TMEP §1402.12.
Scope Advisory
Suggested Amendments
Applicant should note that any wording in bold or in bold italics below offers guidance and/or shows the changes being proposed for the identification of
goods and/or services. If there is wording in applicant’s version of the identification of goods and/or services that should be removed, it will be shown in bold with a line through it such as
this: strikethrough. Applicant should enter its amendments in standard font. If applicant wishes to accept the suggested deletions, applicant
must manually delete the struck through wording in any USPTO response form. Copying and pasting the language below will not result in deletion of the
struck through wording, which will remain within the identification.
Applicant may adopt the following identification of goods, if accurate:
International Class 9: Downloadable and recorded medical software for {specify function of the
software, e.g., analyzing human biometric data for medical diagnosis and treatment purposes}; downloadable and recorded computer software for {clarify function with respect to electronic charts, e.g., managing} electronic charts for medical purposes; downloadable
and recorded computer software for diagnosing diseases for medical purposes; computer software, recorded, for {specify function of the software, e.g.,
analyzing human biometric data for medical diagnosis and treatment purposes}; downloadable and recorded virtual reality software for
{specify function of the software, e.g., medical teaching}; downloadable and recorded computer software for personal information management in connection with {clarify purposes, e.g., medical recordkeeping}; downloadable software for {specify function of the software, e.g., analyzing human biometric data for medical diagnosis and treatment purposes}; downloadable artificial intelligence application software program, downloadable for {clarify function with respect to wireless terminals, e.g., operating} wireless terminals; downloadable software for
electronic money payment; downloadable and recorded interactive computer software for {specify function of the software, e.g., analyzing
human biometric data for medical diagnosis and treatment purposes}; downloadable and recorded computer software for data and document capture, transmission, storage and
indexing; downloadable and recorded data communications software for {specify function, e.g., connecting users to a global computer
network}; downloadable and recorded computer software for database {clarify function, e.g., management}; downloadable and recorded software for processing digital images; monitors [computer programs] downloadable and recorded computer programs
for monitoring {specify function, e.g., human biometric data for medical diagnosis and treatment purposes}; downloadable and recorded computer software
for wireless content delivery; downloadable and recorded computer software for biometric systems for the identification and authentication of persons; downloadable and recorded computer application software for use in implementing the internet of things [IoT] (IoT) by {specify function,
e.g., connecting medical devices to a global computer network}; downloadable and recorded application software for smart phones for
{specify function, e.g., wireless content delivery}; downloadable and recorded software for online messaging
For assistance with identifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Requirement to Clarify the Mark Description
A complete description must identify all the literal and design elements in the mark and specify where the colors appear in those elements. See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq. If white is not being claimed as a color feature of the mark, applicant must exclude it from the color claim and include in the description a statement that white represents background, outlining, shading, and/or transparent areas and is not part of the mark. See TMEP §807.07(d).>
The following description is suggested, if accurate:
The mark consists of a design at the top of the mark comprising the highly stylized letters “VC”, which are formed by five interconnected squares and two interconnected quadrilateral shapes. The two quadrilaterals and one of the squares, representing the letter “V”, are black and the remaining squares, representing the letter “C”, are blue. Below is the wording “VITALCARE” in black. The color white represents background and/or transparent areas only and is not part of the mark.
How to respond. Click to file a response to this nonfinal Office action.
If applicant has any questions about this Office action, please contact the undersigned examining attorney.
/Linda Lavache/
Trademark Examining Attorney
Law Office 106
p. 571.272.7187
linda.lavache@uspto.gov
RESPONSE GUIDANCE