| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86750216 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://tmng-al.gov.uspto.report/resting2/api/img/86750216/large |
| LITERAL ELEMENT | STAR |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration under Section 2 (d) of the Act and has requested a new specimen. Applicant respectfully disagrees. SECTION 2 (d) OBJECTIONS The Examining Attorney has cited three registered marks in Class 41. One is a symbol of a star, one is the word STAR, and the third is STAR BEHAVIORAL HEALTH PROVIDERS. As an initial observation, each of these registrations co-exists on the Principal Register which means that users of the specified services can distinguish between them. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., Appeal No. 2014-1789 (Fed. Cir. August 19, 2015). In fact, registration 2,738,298 was not cited against registration 3,760,649, and neither was cited against registration 4,504,422. There is an obvious reason for this. The marks can be distinguished because their services are all directed at a highly specialized and sophisticated user, namely, medical personal and/or people seeking help with a specific medical condition. Registration 2,728,298 is for undergraduate and graduate medical training by the University of Texas, Registration 3,760,649 is for respiratory care for nurses and the like, and Registration 4,504,422 is for referral services for behavioral healthcare for veterans. Each of these is a highly specialized service that is directed toward a highly specialized audience who is seeking out that service. In determining that the services specified in the cited registration and those in the application are related, the Examining Attorney has improperly focused on the fact that they can all be characterized as “in the field of medicine.” The Board has held, however, that this is insufficient to establish relatedness that is likely to cause confusion; rather, “in order to find that goods and services are related, there must be more of a connection than that a single term, in this case “financial field,” may be used to generally describe them.” Calypso Technology, Inc. v. Calypso Capital Management, LP, 100 U.S.P.Q.2d 1213 (TTAB 2011)(citation omitted). From this perspective, the services are easily distinguished: · One is for medical students; · One is for persons who need in-home and hospital respiratory care; and · One if for veterans who need behavioral services. Applicant’s mark is for “providing online instruction in the field of medicine.” This is very different from the services in the cited registrations. Nonetheless, Applicant has further limited the scope of its specification to “Education services, namely, providing online instruction in the field of medicine by providing an on-line resource for individuals to organize and analyze patient data.” This further differentiates Applicant’s services from those of the cited registrations. The likelihood that people who need the specialized services in the cited registrations would seek out these highly specialized services from Applicant nil. No one would use these services on impulse; time and care would be taken in selecting the services which further lessens the likelihood of confusion. See Calypso Technology, Inc. v. Calypso Capital Management, LP, 100 U.S.P.Q.2d 1213 (TTAB 2011)(citation omitted). SPECIMEN The Examining Attorney claims it is not clear that the specimen submitted with the application would provide “instruction in all instances.” It does not need to; rather, it only needs to provide instruction in some instances. Nonetheless, Applicant has submitted anther specimen which shows that the services provided under the mark will provide educational information, online, for organizing and analysing patient data. CONCLUSION For all of these reasons, Applicant respectfully requests that the objections be withdrawn and the application approved for publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| Educational services, namely, providing online instruction in the field of medicine | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/04/2014 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/27/2015 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 041 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Education services, namely, providing online instruction in the field of medicine by providing an on-line resource for individuals to organize and analyze patient data. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 05/04/2014 |
| FIRST USE IN COMMERCE DATE | At least as early as 07/27/2015 |
| STATEMENT TYPE | "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b) Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen]. |
| SPECIMEN FILE NAME(S) |
\\TICRS\EXPORT16\IMAGEOUT 16\867\502\86750216\xml4\ ROA0002.JPG |
| NEW ATTORNEY SECTION | |
| NAME | Paul W. Reidl |
| FIRM NAME | Law Office of Paul W. Reidl |
| INTERNAL ADDRESS | Second Floor |
| STREET | 241 Eagle Trace Driv |
| CITY | Half Moon Bay |
| STATE | California |
| ZIP/POSTAL CODE | 94019 |
| COUNTRY | United States |
| PHONE | (650) 560-8530 |
| paul@reidllaw.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | HENNENFENT, BRADLEY 2327 Palm Key Ct Sebring Florida US 33870-1606 |
| NEW CORRESPONDENCE SECTION | |
| NAME | Paul W. Reidl |
| FIRM NAME | Law Office of Paul W. Reidl |
| INTERNAL ADDRESS | Second Floor |
| STREET | 241 Eagle Trace Driv |
| CITY | Half Moon Bay |
| STATE | California |
| ZIP/POSTAL CODE | 94019 |
| COUNTRY | United States |
| PHONE | (650) 560-8530 |
| paul@reidllaw.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /pwr/ |
| SIGNATORY'S NAME | Paul W. Reidl |
| SIGNATORY'S POSITION | Attorney of Record, Member CA Bar |
| SIGNATORY'S PHONE NUMBER | (650) 560-8530 |
| DATE SIGNED | 05/10/2016 |
| RESPONSE SIGNATURE | /pwr/ |
| SIGNATORY'S NAME | Paul W. Reidl |
| SIGNATORY'S POSITION | Attorney of Record, Member CA Bar |
| SIGNATORY'S PHONE NUMBER | (650) 560-8530 |
| DATE SIGNED | 05/10/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 10 16:51:04 EDT 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 160510165104155787-867502 16-550462d17e75bb6c2665c4 4a2d57de1891276690f5c2b5f ab4631096dca11399b-N/A-N/ A-20160510164225798605 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
The Examining Attorney has refused registration under Section 2 (d) of the Act and has requested a new specimen. Applicant respectfully disagrees.
SECTION 2 (d) OBJECTIONS
The Examining Attorney has cited three registered marks in Class 41. One is a symbol of a star, one is the word STAR, and the third is STAR BEHAVIORAL HEALTH PROVIDERS.
As an initial observation, each of these registrations co-exists on the Principal Register which means that users of the specified services can distinguish between them. Jack Wolfskin Ausrustung fur Draussen GmbH & Co. KGaA v. New Millennium Sports, S.L.U., Appeal No. 2014-1789 (Fed. Cir. August 19, 2015). In fact, registration 2,738,298 was not cited against registration 3,760,649, and neither was cited against registration 4,504,422.
There is an obvious reason for this. The marks can be distinguished because their services are all directed at a highly specialized and sophisticated user, namely, medical personal and/or people seeking help with a specific medical condition. Registration 2,728,298 is for undergraduate and graduate medical training by the University of Texas, Registration 3,760,649 is for respiratory care for nurses and the like, and Registration 4,504,422 is for referral services for behavioral healthcare for veterans. Each of these is a highly specialized service that is directed toward a highly specialized audience who is seeking out that service.
In determining that the services specified in the cited registration and those in the application are related, the Examining Attorney has improperly focused on the fact that they can all be characterized as “in the field of medicine.” The Board has held, however, that this is insufficient to establish relatedness that is likely to cause confusion; rather, “in order to find that goods and services are related, there must be more of a connection than that a single term, in this case “financial field,” may be used to generally describe them.” Calypso Technology, Inc. v. Calypso Capital Management, LP, 100 U.S.P.Q.2d 1213 (TTAB 2011)(citation omitted).
From this perspective, the services are easily distinguished:
· One is for medical students;
· One is for persons who need in-home and hospital respiratory care; and
· One if for veterans who need behavioral services.
Applicant’s mark is for “providing online instruction in the field of medicine.” This is very different from the services in the cited registrations. Nonetheless, Applicant has further limited the scope of its specification to “Education services, namely, providing online instruction in the field of medicine by providing an on-line resource for individuals to organize and analyze patient data.” This further differentiates Applicant’s services from those of the cited registrations.
The likelihood that people who need the specialized services in the cited registrations would seek out these highly specialized services from Applicant nil. No one would use these services on impulse; time and care would be taken in selecting the services which further lessens the likelihood of confusion. See Calypso Technology, Inc. v. Calypso Capital Management, LP, 100 U.S.P.Q.2d 1213 (TTAB 2011)(citation omitted).
SPECIMEN
The Examining Attorney claims it is not clear that the specimen submitted with the application would provide “instruction in all instances.” It does not need to; rather, it only needs to provide instruction in some instances. Nonetheless, Applicant has submitted anther specimen which shows that the services provided under the mark will provide educational information, online, for organizing and analysing patient data.
CONCLUSION
For all of these reasons, Applicant respectfully requests that the objections be withdrawn and the application approved for publication.
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
