UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 7/7/2015

 

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant's communication filed on June 3, 2015.

 

In a previous Office action dated December 11, 2014, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark In addition, applicant was required to satisfy the following requirements:  amend the identification and classification of goods in Classes 9 and 10 and respond to a significance inquiry.

 

In response, applicant deleted classes 9 and 10. Accordingly, this requirement is withdrawn. In addition, applicant responded to the significance inquiry. Accordingly, this requirement is withdrawn.

 

However, with respect to the Section 2(d) refusal, the examining attorney considered the applicant's arguments in response and finds them unpersuasive and remains of the opinion that the applicant's mark is confusingly similar to the registered mark in U.S. Registration No. 2709657. Accordingly, the refusal under Trademark Act Section 2(d) is now made FINAL.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The refusal of registration of the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 2709657 is hereby made Final. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

Applicant’s mark is SYNCHRONY (in standard character form) for "interactive video game system comprised of computer hardware and software for playing exercise games for the treatment of dysphagia and swallowing disorders, provided as a unit" in International Class 28 and "educational services, namely, providing clinical programs and clinical training for therapists in the treatment of dysphagia and swallowing disorders" in International Class 41.

 

Registrant's mark is SYNCHRONY (Reg. No. 2709657) for "breathing apparatus, namely, bi-level positive airway pressure breathing device for use in respiratory or sleep therapy" in International Class 10.

 

Comparison of Marks:

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is SYNCHRONY and registrant’s mark is SYNCHRONY.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and services.

 

Therefore, the marks are confusingly similar. 

 

In response, applicant argues that SYNCHRONY is diluted in the medical industry.

 

First, the mere submission of a list of registrations does not make such registrations part of the record.  In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006); TBMP §1208.02; TMEP §710.03. To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal.  In re Jump Designs LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Ruffin Gaming, 66 USPQ2d, 1924, 1925 n.3 (TTAB 2002); TBMP §1208.02; TMEP §710.03.

 

Second, the two referenced applications are of no probative value because the marks are not registered.

 

Third, even if the applications and registration are considered, the weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and services.  See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). 

 

Evidence of weakness or dilution consisting solely of third-party registrations, such as those submitted by applicant in this case, is generally entitled to little weight in determining the strength of a mark, because such registrations do not establish that the registered marks identified therein are in actual use in the marketplace or that consumers are accustomed to seeing them.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009); Richardson-Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982).  Furthermore, the goods and services listed in the third-party registrations submitted by applicant are different from those at issue and thus do not show that the relevant wording is commonly used in connection with the goods and services at issue. Specifically, applicant's and registrant's marks are for dysphagia and respiratory ailments, which, as discussed below, are closely related. The referenced applications and registration, on the other hand, are for ocular implants, stent coatings and hearing implants. These goods are not closely related or as closely related to applicant's goods and services as the cited registration.

 

Given the foregoing, applicant's and registrant's marks are considered highly similar for likelihood of confusion purposes.

 

Relatedness of Goods and Services:

 

Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods and services need not be as close to support a finding of likelihood of confusion.  See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

 

Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). 

 

Relatedness as to Class 28

 

Applicant's interactive video game system for playing exercise games for the treatment of dysphagia and swallowing disorders is closely related to registrant's breathing apparatus for respiratory or sleep therapy treatment because applicant's and registrant's goods have complementary uses and are used by together by the same purchasers for the same or related purposes.

 

The examining attorney refers to the internet evidence attached to the previous Office action defining "dysphagia" as difficulty swallowing and the internet evidence from The Marshall Protocol Knowledge Base, Massachusetts General Hospital, Copddysphagia.wikispaces.com, ClinicalTrials.Gov and GI Motility Online, showing that treatment of swallowing disorders and respiratory and sleep therapy are overlapping. Specifically, patients with dysphagia often have respiratory and breathing problems, and patients with breathing problems commonly have difficulty swallowing. This evidence shows that both applicant's goods for treating dysphagia and swallowing disorders, and registrant's goods for treating respiratory issues, are complementary in nature.

 

In addition, the previously attached internet evidence from Passy-Muir, Inc., Medical Speech Pathology and Healthcare Professionals Blog shows products for treating both respiratory and dysphagia conditions, sold as one product, under the same mark, to the same class of consumers, in the same field of use. Finally, the previously attached internet evidence from PesiHealthCare shows a book on "Managing Dysphagia: Essential Assessment, Diagnosis & Treatment Strategies" which includes, "treatments for respiratory functions related to dysphagia." All of this evidence shows the overlapping nature of the ailments treated with applicant's and registrant's goods, and therefore shows the related use of the goods and the likelihood that the same consumers will encounter both applicant's and registrant's goods in the same channels of trade and same field of use.

 

Moreover, the examining attorney refers to the internet evidence attached to the instant Final action from American Senior Communities, CareGiver, Maxor, Mayo Clinic, NCBI and Swallowing Lab, showing that dysphagia and swallowing disorders often lead to respiratory problems, and as such, treatment of dysphagia often includes treatment of respiratory problems. For example, evidence from American Senior Communities and CareGiver notes that difficulty swallowing can lead to respiratory problems.

 

Thus, consumers are likely to encounter both registrant’s mark used for treatment of respiratory issues and sleep therapy and applicant’s mark for treatment of dysphagia and swallowing disorders, in the same channels of trade and the same field of use, and are likely to be confused and mistakenly believe that the respective goods emanate from a common source.

 

Relatedness as to Class 41

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services related to those goods.  TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).

 

Applicant's clinical programs and training for therapists in the treatment of dysphagia and swallowing disorders are related to registrant's breathing apparatus for use in respiratory or sleep therapy because registrant's goods are used in connection with applicant's services.

 

As discussed above, the previously attached internet evidence and the internet evidence attached to the instant Final action all show the overlapping nature of treatment of dysphagia, swallowing disorders, sleep therapy and respiratory therapy. For example, the evidence from PesiHealthCare.Com discusses treatment of respiratory issues related to dysphagia.

 

Moreover, the internet evidence attached to the instant Final action from NCBI, GrayMatterTherapy and SLRC show that the therapists often treat both dysphagia and respiratory issues together and therapists engaged in dysphagia treatment also engage in respiratory treatment. For example, evidence from NCBI discusses treatment of those with dysphagia and respiratory problems and dysphagia and respiratory care after a spinal cord injury. In addition, the evidence from GrayMatterTherapy discusses the necessity of understanding and treating respiratory issues in conjunction with dysphagia. This evidence shows that the therapists attending applicant's programs and trainings are likely to encounter registrant's goods for use in treating respiratory issues because therapists in the field of dysphagia engage in therapy in the field of respiratory issues, often in conjunction with treatment of dysphagia.

 

As such, therapists attending programs and trainings in the field of dysphagia and swallowing disorders are likely to encounter registrant's mechanism for treating respiratory disorders in the same channels of trade and same field of use.

 

Finally, the examining attorney refers to the seven (7) previously attached third-party registrations showing that the same entity commonly engages in applicant's services and provides both applicant's and registrant's goods, or similar goods, under the same mark.

 

Thus, consumers are likely to encounter registrant’s mark used for a mechanism to treat respiratory issues and sleep therapy and applicant’s mark for programs and clinics in the field of dysphagia and swallowing disorders, in the same channels of trade and the same field of use, and are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.

 

In response, applicant argues that, although both are in the medical industry, applicant's and registrant's goods and services are in separate channels of trade because applicant's goods and services are for rehabilitation providers and rehabilitation therapists, whereas registrant's goods are for hospitals and physicians.

 

First, with respect to applicant’s and registrant’s goods and services, the question of likelihood of confusion is determined based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, the identification set forth in the registration has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods “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)). Therefore, although applicant's services are limited to therapists, registrant's goods are not limited to any class of purchaser or channel of trade, and therefore registrant's goods are presumed to travel in all channels of trade, including applicant's. In addition, applicant's goods are not limited to any channel of trade or class of consumer and therefore are presumed to travel in all channels of trade and to all classes of consumers.

 

Second, hospitals commonly include rehabilitation facilities. See the attached internet evidence from Mercy Health System, Cleveland Clinic, Jefferson University Hospitals and Sunrise Hospital. Accordingly, even if applicant's goods and services are limited to the field of rehabilitation and registrant's goods are limited to hospitals and physicians, hospitals, rehabilitation facilities and physicians are in interlocking and overlapping channels of trade and are not distinct classes of consumers or fields of use. In fact, applicant states that applicant's class of consumers is "medical professionals and administrators who operate rehabilitation facilities" and registrant's class of consumers is "physicians and hospital administrators." (App. Rsp. Pg. 6). This narrow distinction fails to obviate the likelihood of confusion.

 

In response, applicant also argues that the confusion is obviated because the potential consumers are highly sophisticated. However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).

 

Finally, it is noted that throughout the response applicant states that applicant's goods and services in the field of dysphagia and swallowing disorders and registrant's goods for treating respiratory issues and sleep therapy are vastly different. However, application fails to explain in what ways the goods and services diverge in terms of use and function. In fact, applicant does not dispute the examining attorney's evidence and arguments that the goods and services are complementary in nature.

 

Given the foregoing, registration is refused under Section 2(d) of the Trademark Act.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)        A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

 

(2)        An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

/Tara L. Bhupathi/

Examining Attorney

Law Office 102

571-272-5557

tara.bhupathi@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 7/7/2015 FOR U.S. APPLICATION SERIAL NO. 86378831

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/7/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.