Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

NOTICE:  APPLICATION ABANDONED

 

ISSUE/MAILING DATE: 1/12/2016

 

 

The above-referenced application is abandoned because applicant failed to file a complete response to the FINAL Office action dated July 7, 2015.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a); TMEP §§718.02, 718.03, 718.03(b).  That is, applicant’s December 18, 2015 response was not legally sufficient for the reason specified below.

 

Applicant’s response is incomplete because it failed to resolve the outstanding issue in the final Office action, it did not raise a new issue or provide any new or compelling evidence with regard to the outstanding issue, and applicant’s analysis and arguments were not persuasive nor did they shed new light on the issue.  In addition, the USPTO has not received a timely filed notice of appeal and there is no time remaining in the response period. 

 

Section 2(d) Refusal Maintained and Continued

 

In the request for reconsideration, applicant again argues that the goods and services of applicant and registrant are used by a different class of consumer in a different field of use based on the actual use of the goods and services.

 

First, as discussed in the Final action, the analysis concerns the description of the goods and services in the application and registration, not on extrinsic evidence of actual use. Here, the identification set forth in the registration has no restrictions as to the nature, type, channels of trade, or class of consumers. Therefore, although applicant's services are limited to therapists, registrant's goods are not limited to any class of purchaser or channel of trade. 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.

 

Moreover, the Final action shows that applicant's and registrant's goods are commonly used together by the same class of consumers for the same or related purposes.

 

Second, as discussed in the Final action, hospitals commonly include rehabilitation facilities. 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.

 

Finally, applicant's argument regarding the sophistication of the consumers does not obviate the likelihood of confusion created through applicant's use of a mark identical to registrant's registered mark. 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).

 

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

 

**

 

Applicant may respond by filing a petition to the Director to request a reversal of the decision to abandon the application.  TMEP §§715.03(a)(ii)(D), 718.03(b), 1713.01-.02; see 37 C.F.R. §2.146(a)(3).  The petition must be filed within two months of the date of issuance of this letter and may be filed online at http://www.gov.uspto.report/trademarks/teas/petition_forms.jsp.  See 37 C.F.R. §§2.66(a)(1), 2.146(d); TMEP §§1705.04, 1714.01(a), (d).  A $100 fee for such a petition is required.  See 37 C.F.R. §2.6(a)(15).

 

 

/Tara L. Bhupathi/

Examining Attorney

Law Office 102

571-272-5557

tara.bhupathi@uspto.gov

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/12/2016 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.gov.uspto.report/, 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)  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

 

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.