| 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 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88052543 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88052543/mark.png |
| LITERAL ELEMENT | ILLUMINATE |
| 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) | |
|
In the outstanding Office Action, the Examining Attorney: (1) refused registration on the grounds of a likelihood of confusion with the mark in U.S Registration No. 3,608,560; and (2) required that Applicant amend the identification of goods because the wording “devices” is indefinite and must be clarified. In response, Applicant has now amended its identification of goods. On account of the foregoing amendment and the following remarks, Applicant submits that this application is now in condition for allowance. With respect to Item (2) above, Applicant has amended its identification of goods so that the identification of goods now reads:
“medical apparatus, namely, devices, namely, hardware modules capable of being mounted to a smartphone and communicating with a smartphone, that enable a patient to perform basic self-diagnostic tests, and for transmitting the results of those tests to a healthcare provider, and for providing teleconferencing between the user and a healthcare provider” in International Class 10.
Accordingly, Applicant believes that its amended identification of goods complies with the Examining Attorney’s requirement and is now in an acceptable form. With respect to Item (1) above, Applicant respectfully traverses the Examining Attorney, and states that there is little likelihood of confusion between Applicant’s mark and Registrant’s mark, because Applicant’s goods as amended are of a very different type than Registrant’s, and travel in different channels of commerce. Turning first to the nature of the goods, Applicant’s goods as amended are:
“medical apparatus, namely, devices, namely, hardware modules capable of being mounted to a smartphone and communicating with a smartphone, that enable a patient to perform basic self-diagnostic tests, and for transmitting the results of those tests to a healthcare provider, and for providing teleconferencing between the user and a healthcare provider” in International Class 10.
Registrant’s goods are:
“Computer software for managing patient medical information; computer software for indexing, searching, displaying, and managing electronic health records and electronic medical records; computer software for indexing, searching, displaying, and managing radiology images, radiology examinations, radiology reports, radiology data, and patient data” in International Class 9. Applicant’s goods as amended are in the nature of hardware which is connected to a smartphone to enable a user to conduct basic medical diagnostic tests on himself. The hardware allows the results of the tests to be sent to the user’s healthcare provider, and enables teleconferencing between the user and the healthcare provider to enable the healthcare provider to make an efficient diagnosis of the user without the user having to come to the healthcare provider’s location. By contrast, Registrant’s goods are in the nature of computer software for managing a patient’s medical records and for allowing the management of a patient’s radiological images and information. These are highly different goods used for completely different purposes, and are unlikely to emanate from the same source. Looking next at the respective channels of trade, the relevant purchasing public for Applicant’s goods is comprised of lay users who use the hardware for conducting medical diagnostic tests at home and communicating the results to their healthcare providers. The relevant purchasing public for Registrant’s goods is comprised of medical professionals who will use the software in a medical office setting. Applicant believes that the markets for its goods and for Registrant’s goods are highly specialized and segmented. Applicant believes that purchasers of Registrant’s goods are sophisticated medical professionals who are seeking out specific software for managing patient data and radiology images, and who are likely to seek out only those producers who specialize in such software. Such purchasers are not likely to confuse the source for medical record and radiology imaging software with the source for self-diagnostic hardware intended for home use by lay users. Consequently, Applicant’s goods and Registrant’s goods travel in different channels of commerce. Accordingly, because Applicant’s goods and Registrant’s goods are very different in nature and travel in different channels of commerce, Applicant believes that there is little likelihood of confusion between its mark and Registrant’s mark. In view of the foregoing, Applicant submits that this application is now in condition for allowance, and reconsideration thereof is respectfully requested. Thank you. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | |
| medical apparatus, namely, devices for acquiring medical data and information from a user and for transmitting the same to a healthcare provider, and for providing teleconferencing between the user and a healthcare provider | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 010 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| medical apparatus, namely, devices, namely, hardware modules capable of being mounted to a smartphone and communicating with a smartphone, that enable a patient to perform basic self-diagnostic tests, and for transmitting the results of those tests to a healthcare provider, and for providing teleconferencing between the user and a healthcare provider | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Mark Yankopoulos/ |
| SIGNATORY'S NAME | Mark Yankopoulos |
| SIGNATORY'S POSITION | Attorney for Applicant |
| SIGNATORY'S PHONE NUMBER | 781-290-0060 |
| DATE SIGNED | 02/08/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Feb 08 17:48:01 EST 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0190208174801858559-88052 543-620e8c48a321d338848ba 91e2d641498fb160bc211df67 97ac1f89b1ea21a7ff63-N/A- N/A-20190208173237362995 |
| 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 09/20/2020) |
In the outstanding Office Action, the Examining Attorney:
(1) refused registration on the grounds of a likelihood of confusion with the mark in U.S Registration No. 3,608,560; and
(2) required that Applicant amend the identification of goods because the wording “devices” is indefinite and must be clarified.
In response, Applicant has now amended its identification of goods. On account of the foregoing amendment and the following remarks, Applicant submits that this application is now in condition for allowance.
With respect to Item (2) above, Applicant has amended its identification of goods so that the identification of goods now reads:
“medical apparatus, namely, devices, namely, hardware modules capable of being mounted to a smartphone and communicating with a smartphone, that enable a patient to perform basic self-diagnostic tests, and for transmitting the results of those tests to a healthcare provider, and for providing teleconferencing between the user and a healthcare provider” in International Class 10.
Accordingly, Applicant believes that its amended identification of goods complies with the Examining Attorney’s requirement and is now in an acceptable form.
With respect to Item (1) above, Applicant respectfully traverses the Examining Attorney, and states that there is little likelihood of confusion between Applicant’s mark and Registrant’s mark, because Applicant’s goods as amended are of a very different type than Registrant’s, and travel in different channels of commerce.
Turning first to the nature of the goods, Applicant’s goods as amended are:
“medical apparatus, namely, devices, namely, hardware modules capable of being mounted to a smartphone and communicating with a smartphone, that enable a patient to perform basic self-diagnostic tests, and for transmitting the results of those tests to a healthcare provider, and for providing teleconferencing between the user and a healthcare provider” in International Class 10.
Registrant’s goods are:
“Computer software for managing patient medical information; computer software for indexing, searching, displaying, and managing electronic health records and electronic medical records; computer software for indexing, searching, displaying, and managing radiology images, radiology examinations, radiology reports, radiology data, and patient data” in International Class 9.
Applicant’s goods as amended are in the nature of hardware which is connected to a smartphone to enable a user to conduct basic medical diagnostic tests on himself. The hardware allows the results of the tests to be sent to the user’s healthcare provider, and enables teleconferencing between the user and the healthcare provider to enable the healthcare provider to make an efficient diagnosis of the user without the user having to come to the healthcare provider’s location. By contrast, Registrant’s goods are in the nature of computer software for managing a patient’s medical records and for allowing the management of a patient’s radiological images and information. These are highly different goods used for completely different purposes, and are unlikely to emanate from the same source.
Looking next at the respective channels of trade, the relevant purchasing public for Applicant’s goods is comprised of lay users who use the hardware for conducting medical diagnostic tests at home and communicating the results to their healthcare providers. The relevant purchasing public for Registrant’s goods is comprised of medical professionals who will use the software in a medical office setting. Applicant believes that the markets for its goods and for Registrant’s goods are highly specialized and segmented. Applicant believes that purchasers of Registrant’s goods are sophisticated medical professionals who are seeking out specific software for managing patient data and radiology images, and who are likely to seek out only those producers who specialize in such software. Such purchasers are not likely to confuse the source for medical record and radiology imaging software with the source for self-diagnostic hardware intended for home use by lay users. Consequently, Applicant’s goods and Registrant’s goods travel in different channels of commerce.
Accordingly, because Applicant’s goods and Registrant’s goods are very different in nature and travel in different channels of commerce, Applicant believes that there is little likelihood of confusion between its mark and Registrant’s mark.
In view of the foregoing, Applicant submits that this application is now in condition for allowance, and reconsideration thereof is respectfully requested.
Thank you.