Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 85684982 ONTRACK ANALYTICS(Standard Characters, see http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85684982) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION

            In response to the Official Action issued October 11, 2012, please amend the above-captioned trademark application as follows:

 

            Please delete the services in Class 35 and insert in its place a new description of services in Class 35, as follows:

-- Business consulting and management in the field of healthcare; marketing services to obtain consumer insights and develop branding strategies; providing online proprietary physician referral services used to help primary care physicians refer to the practice; administration of patient reimbursement programs, in International Class 35.

 

            Please delete the services in Class 36 and insert in its place a new description of services in Class 36, as follows:

-- Financial consultancy services in the field of healthcare; providing counseling and consulting in the field of healthcare benefits, insurance information relating to healthcare coverage, and medical coding information in relation to healthcare benefits, in International Class 36.

 

            Please enter into the application the following disclaimer:

-- No claim is made to the exclusive right to use "ANALYTICS" apart from the mark as shown. --

REMARKS

 

            Applicant has amended the recitation of services in Classes 35 and 36 substantially as suggested by the Examining Attorney in the Action.  Applicant wishes to thank the Examining Attorney for his insightful suggestions.  Applicant respectfully submits that such modifications address the allegedly broad and/or indefinite wording in Classes 35 and 36, as set forth in the Action.  Applicant also inserted a disclaimer of the term "Analytics" apart from the mark as shown, in accordance with that requested by the Examining Attorney in the Action.

            Turning to the rejections in the Action, Applicant addresses the following:

I.  § 2(d) Rejection

            Registration of the applied-for mark was refused because of an alleged likelihood of confusion with the marks of U.S. Reg. Nos. 2,499,555 for ONTRAC and 3,345,030 for ONTRACK.  Indeed, among other things, in the Action it was asserted, "[a]pplicant's mark is similar in appearance and sound to registrant's mark in that they both share the common letter or the entire term(s). . . . In this case, the mere addition of the descriptive term ANALYTICS to the registered marks does not obviate the similarity of the identical or phonetically equivalent terms ONTRACK and ONTRAC."  (The Action p.3). 

            Applicant notes that, in conducting a likelihood of confusion analysis between marks, it is axiomatic that the marks must be compared in their entireties.  Indeed, it has long been held that "[t]he use of identical, even dominant, words in common does not automatically mean that two marks are similar."  See General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 627, 3 U.S.P.Q.2d 1442, 1445 (8th Cir. 1987).  Rather, the ultimate determination of similarity or dissimilarity of the marks must rest on consideration of the marks in their entirety.  Packard Press Inc. v. Hewlett-Packard Co., 56 U.S.P.Q.2d 1351, 1354 (Fed. Cir. 2000).  Under this well established "anti-dissection rule," conflicting marks are not to be compared by breaking them up into their component parts, 3 J. Thomas McCarthy, McCarthy on Trademark and Unfair Competition, 4th ed. 2005, § 23:41; TMEP § 1207.01(b) et seq.  Thus, in the present case, all marks must be compared as they would appear to a consumer, in their entireties, i.e., as ONTRAC, ONTRACK, and ONTRACK ANALYTICS, respectively.

            It is also notable that third-party registrations may be relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services.  TMEP 1207.01(d)(iii).  Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods."  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it "is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection."  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).

            Here, as cited by the Examining Attorney (and in other instances), various versions of the term ONTRACK, or its phonetic equivalent, are found in third-party registrations for similar goods (i.e., computer software in the medical field).  This indicates that consumers would look to other elements to distinguish the source of the goods.  As an example, the ONTRACK mark is utilized in respect of a "computer software monitoring system for graphically monitoring physician practice performance and dentist practice performance," while the ONTRAC mark is utilized in respect of "computer software for use in business consulting services and financial consulting services for healthcare providers, namely, decision support and daily work planning software for use with patient registration, records, financial information and insurance information, and provider customer service information."  Likewise, a prior-pending application, which has now matured into a registration (Reg. No. 4,318,416) for the mark ONTRAQ, was granted in respect of "computer software for organizing medical and dental compliance, including OSHA training, waste management, quality plan principles, and expiring medications, into easy-to-manage modules to better track regulatory and compliance obligations."  Thus, within the broad designation of goods as computer software in the medical field, many different versions of the term ONTRACK are utilized, thusly indicating that such term is "so commonly used that the public will look to other elements to distinguish the source of the goods or services."  TMEP 1207.01(d)(iii).  The public may look to, for instance, the particular software being offered as an indication of a different source, or to other terms utilized with ONTRACK as a distinguishing feature of the mark.

            Applicant respectfully submits that, when viewed as a whole and in light of the foregoing third-party registrations, its ONTRACK ANALYTICS mark is sufficiently distinguished from the marks ONTRAC and ONTRACK to warrant protection.  Indeed, when considering the similarity of the marks "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar."  Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000); In re du Pont, 476 F.2d 1357 (C.C.P.A. 1973).  Here, as viewed in whole, Applicant's ONTRACK ANALYTICS mark is different in sound and appearance from the marks ONTRAC and ONTRACK, and given the third-party registrations noted previously, such differences would be significant to a consumer when viewing the marks.  In other words, Applicant respectfully submits that the foregoing differences would mitigate likelihood of confusion.

            It is also the case that Applicant's software is distinguishable from the software offered under the ONTRAC and ONTRACK marks, which further lessens the prospect of likelihood of confusion.  Indeed, Applicant's software is for, inter alia, "tracking analyzing, and assessing risk mitigation, operating room efficiency, clinical results, future standards of care, patient education, pain management, value-based purchasing, practice management, and market economies in the healthcare field," while the software for ONTRAC is in respect of business and financial consulting services, and the software for ONTRACK is in respect of a monitoring system for graphically monitoring physician performance.  It is submitted that these goods are unrelated in that they are software for different purposes within the medical field; and, in light of the various third-party registrations for software within the medical field that use the term ONTRACK, or its phonetic equivalent, these differences would be significant to consumers. 

            Lastly, Applicant notes that prospective purchasers in the field of medicine and software for medical purposes are highly educated and are likely to make careful purchasing decisions, as opposed to impulse purchases.  This factor weighs against a finding of likelihood of confusion as well.  TMEP 1207.01 et seq.

II.  Prior-Pending Applications

            Applicant declines to comment on the prior-pending applications noted by the Examining Attorney in the Action, in terms of likelihood of confusion, but reserves the right to do so at a later date, if necessary.

CONCLUSION

            In light of the preceding, Applicant respectfully submits that there is no likelihood of confusion between Registrants' and Applicant's marks.  As such, Applicant respectfully requests withdrawal of the likelihood of confusion rejections in the Action accordingly.  Applicant believes that the mark is therefore now in condition for publication.

            No fee is deemed necessary for this response.  However, if the Examining Attorney believes a fee is appropriate, he is authorized to charge Deposit Account No. 12‑1095.

            If the Examining Attorney has any questions concerning this matter, the Examining Attorney is encouraged to contact Applicant's counsel by telephone at (908) 654-5000.

 

 

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for BUSINESS CONSULTING AND MANAGEMENT IN THE FIELD OF HEALTHCARE; MARKETING SERVICES TO OBTAIN CONSUMER INSIGHTS AND DEVELOP BRANDING STRATEGIES; WEB-BASED PROPRIETARY PHYSICIAN REFERRAL SYSTEM USED TO HELP PRIMARY CARE PHYSICIANS REFER TO THE PRACTICE
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: BUSINESS CONSULTING AND MANAGEMENT IN THE FIELD OF HEALTHCARE; MARKETING SERVICES TO OBTAIN CONSUMER INSIGHTS AND DEVELOP BRANDING STRATEGIES; WEB-BASED PROPRIETARY PHYSICIAN REFERRAL SYSTEM USED TO HELP PRIMARY CARE PHYSICIANS REFER TO THE PRACTICE; PROVIDING ONLINE PROPRIETARY PHYSICIAN REFERRAL SERVICES USED TO HELP PRIMARY CARE PHYSICIANS REFER TO THE PRACTICE; ADMINISTRATION OF PATIENT REIMBURSEMENT PROGRAMSClass 035 for BUSINESS CONSULTING AND MANAGEMENT IN THE FIELD OF HEALTHCARE; MARKETING SERVICES TO OBTAIN CONSUMER INSIGHTS AND DEVELOP BRANDING STRATEGIES; PROVIDING ONLINE PROPRIETARY PHYSICIAN REFERRAL SERVICES USED TO HELP PRIMARY CARE PHYSICIANS REFER TO THE PRACTICE; ADMINISTRATION OF PATIENT REIMBURSEMENT PROGRAMS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for FINANCIAL CONSULTANCY SERVICES IN THE FIELD OF HEALTHCARE; PROVIDING COUNSELING AND CONSULTING IN THE FIELD OF HEALTHCARE BENEFITS, COVERAGE, CODING, AND REIMBURSEMENT
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: FINANCIAL CONSULTANCY SERVICES IN THE FIELD OF HEALTHCARE; PROVIDING COUNSELING AND CONSULTING IN THE FIELD OF HEALTHCARE BENEFITS, COVERAGE, CODING, AND REIMBURSEMENT; PROVIDING COUNSELING AND CONSULTING IN THE FIELD OF HEALTHCARE BENEFITS, INSURANCE INFORMATION RELATING TO HEALTHCARE COVERAGE, AND MEDICAL CODING INFORMATION IN RELATION TO HEALTHCARE BENEFITSClass 036 for FINANCIAL CONSULTANCY SERVICES IN THE FIELD OF HEALTHCARE; PROVIDING COUNSELING AND CONSULTING IN THE FIELD OF HEALTHCARE BENEFITS, INSURANCE INFORMATION RELATING TO HEALTHCARE COVERAGE, AND MEDICAL CODING INFORMATION IN RELATION TO HEALTHCARE BENEFITS
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use ANALYTICS apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /BRENT L. FARESE/     Date: 04/11/2013
Signatory's Name: BRENT L. FARESE
Signatory's Position: ATTORNEY OF RECORD, NJ BAR MEMBER

Signatory's Phone Number: 908-654-5000

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 85684982
Internet Transmission Date: Thu Apr 11 17:35:04 EDT 2013
TEAS Stamp: USPTO/ROA-XXX.XX.X.X-2013041117350468584
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e61baf8e17223582575b49254b3df2f2d84-N/A-
N/A-20130411171436386787