Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88059852 PEAK CARE(Standard Characters, see http://uspto.report/TM/88059852/mark.png) has been amended as follows:

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

ARGUMENT

Applicant responds to an Office Action issued on October 29, 2018 regarding Applicant’s PEAK CARE mark (the “Mark”). This application was refused based on the alleged likelihood of confusion with U.S. Registration No. 5,224,611 for PEAK CARE (the “'611 Registration”) and 5,229,507 for PEAK CARE ASSISTED LIVING HOMES  (the “'507 Registration”) (collectively, the “Cited Registrations”) both owned by Peak Care Assisted Living Homes, of Arizona (the "Cited Registrant").  Applicant respectfully submits that confusion is not likely to occur and submits the following response in favor of registration.

AMENDMENTS

 

Description of Services.  Applicant has revised its description of services as shown below. 

Applicant hereby amends the description of services as follows:

Class 36: Health, medical, hospital, pharmaceutical and prescription drug insurance underwriting; administration and organizing of prepaid, and/or preferred provider, and/or health maintenance organization and/or and managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and associated health plan provider networks, including featuring insurance-related claims administration and processing, enrolling, and providing insurance eligibility and benefit information, claims remittance advising, claims and benefits reporting; providing insurance information and data pertaining to the underwriting of health, medical, hospital, pharmaceutical and prescription drug insurance and pertaining to the administration and organizing of prepaid, and/or preferred provider, and/or health maintenance organization and/or and managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks; administering, organizing and underwriting health care insurance coverage through contracted relationships with subscribers and professional clinical, hospital, nursing home and other health care providers

Disclaimer.  Applicant submits the following disclaimer:

“No claim is made to the exclusive right to use “CARE” apart from the mark as shown.”

DISCUSSION

Applicant’s Services and the Cited Registrations’ Services are Distinguishable, Therefore there is No Likelihood of Confusion

 

Applicant respectfully submits that the subject services are distinguishable from those in the Cited Registrations and, therefore, confusion between Applicant's Mark and the Cited Registrations is unlikely to occur.  In particular, Applicant’s Mark is used in connection with health insurance services, prescription drug plans and underwriting health care coverage services in Class 36. Applicant offers health care plans integrated with a health system of hospitals, clinics, and urgent care centers.

 

Conversely, the Cited Registrations cover "providing assisted living facilities" in Class 43 and "rest home services" in Class 44. Specifically, the Cited Registrant provides residential assisted living accommodations for the elderly. The significant differences between the nature of the Applicant’s services, as revised, and the Cited Registrant’s services, indicates that consumer confusion is unlikely to occur.

 

It is well settled that, if the goods or services in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1244-45, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004) (reversing TTAB’s holding that contemporaneous use of RITZ for cooking and wine selection classes and RITZ for kitchen textiles is likely to cause confusion, because the relatedness of the respective goods and services was not supported by substantial evidence); Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156, 1158 (TTAB 1990) (finding liquid drain opener and advertising services in the plumbing field to be such different goods and services that confusion as to their source is unlikely even if they are offered under the same marks); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668, 1669 (TTAB 1986) (holding QR for coaxial cable and QR for various apparatus used in connection with photocopying, drafting, and blueprint machines not likely to cause confusion because of the differences between the parties’ respective goods in terms of their nature and purpose, how they are promoted, and who they are purchased by).

The Examining Attorney mistakenly concludes that the services of the Applicant and Cited Registrant would be provided together to the same consumers for the same purposes. Applicant offers health, medical, hospital, pharmaceutical and prescription drug insurance underwriting services. The Cited Registrant provides very niche services, namely, residential living facilities for the elderly for assisted living purposes. Both sets of services are specifically marketed to knowledgeable consumers who are unlikely to be confused as to the source of either the health insurance or assisted living services.  Indeed, it is unlikely that an individual seeking elderly care for an aging parent would mistakenly believe that these services were offered by a traditional health insurance provider. Similarly, an individual seeking health insurance underwriting or administration of health care accounts, related healthcare plans, and associated health plan provider networks would incorrectly believe that an assisted living facility provided these services. Neither the services in the subject application nor the targeted audience of consumers overlap directly with the Cited Registrant's very narrowly tailored field of services or intended purchasers.

Applicant respectfully submits that the third party registrations and common-law third party use identified by the Examining Attorney does not thoroughly demonstrate that the Applicant's and the Cited Registrant's services commonly emanate from a single source and/or travel in similar channels of trade.  The vast majority of the evidence presented by the Examining Attorney indicates that a party may offer administration of health care benefits or reimbursement programs and operate an assisted living facility but not that they commonly do. These limited examples, which do not clearly indicate that the Cited Registrant would provide administration of health care plans to any consumer but perhaps residents at an assisted living facility, do little to confirm that the services at issue commonly emanate from a single source, travel in similar channels of trade or are advertised to be used by the same classes of consumers. As such, the Examining Attorney's evidence amounts to, at best, evidence of the possibility that an assisted living facility could potentially offer administration of health plans to its residents.

Applicant’s services and the Cited Registrant’s services are technically quite distinct and cannot be substituted for one another. While Applicant can appreciate that an assisted living facility could offer administration of health care benefits to its residents, nothing in the record indicates that the parties’ respective services are more closely related to each other than they would be to other services in the health services industry.

Given the innate differences between Applicant’s and the Cited Registrant’s services and their divergent purposes in the fields of health insurance and rest home facilities and, considering that they do not inherently travel in the same channels of trade or are marketed to the same consumers, confusion is unlikely to occur in the marketplace.

Further, the Trademark Trial and Appeal Board (“TTAB”) has previously considered how to treat identical marks that contain common terms and can broadly be described in a similar way, but are in fact used for distinct and non-competitive products. In In re Carter-Wallace, Inc., 222 USPQ 729 (TTAB 1984), the Board reversed a refusal to register SUPER GEL for shaving gel on the basis of a prior registration for sunburn gel. While both products were used for skin care and both were sold through similar channels of trade, the Board emphasized that the products are “of different types, used for quite different purposes.” Id. at 730.

 

In this instance, Applicant’s Mark and the '507 Registration are decidedly not identical nor are Applicant’s and the Cited Registrant's services offered under circumstances that would create confusion amongst consumers. Moreover, the relationship between Applicant’s services and the Cited Registrant's services are similar to the relationship between the products in Carter-Wallace, although with the added difference that typical purchasers and channels of trade are quite different.

 

Various marks containing identical terms owned by different parties co-exist on the registry and in the marketplace for the services at issue without creating consumer confusion because consumers are conditioned to make fine-grained distinctions between different and non-competitive types of services with very different uses, just as Carter-Wallace demonstrated that consumers are able to easily differentiate between identical marks for very different (and inexpensive) types of skincare gels. By way of example, different third parties own registrations for GOLDEN, LIBERTY, THRIVE, HORIZON, PROVIDENCE, DISCOVERY and GUARDIAN formative marks for health insurance and health insurance administration and assisted living/rest home services respectively and have been permitted to coexist on the US Federal register. A representative sampling of these registrations co-existing on the Federal register for the Applicant's and Cited Registrant's services is attached as Exhibit A. Title and Status copies are included.

 

Applicant respectfully submits that the coexistence of numerous marks with the same prominent and key terms for the services at issue without confusion strongly suggests that consumers are conditioned to paying attention to minute differences between these particular services and are therefore are unlikely to be confused by Applicant’s Mark. As such, Applicant requests similar treatment.

 

In light of the foregoing, Applicant respectfully submits that likelihood of confusion in unlikely to occur.

 

CONCLUSION

In view of the above, Applicant believes this application is in condition for publication.  If questions remain, the Examining Attorney is invited to contact Applicant’s counsel, Jennifer R. Ashton, by email at Jennifer.Ashton@cojk.com or by telephone at (206) 695-1614.

EVIDENCE

Original PDF file:
evi_502391710-20190429142601039539_._Exhibit_A_with_Status.pdf
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CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 036 for Health, medical, hospital, pharmaceutical and prescription drug insurance underwriting; administration and organizing of prepaid and/or preferred provider and/or health maintenance organization and/or managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks, including claims administration and processing, enrolling, providing eligibility and benefit information, claims remittance advising, claims and benefits reporting; providing information, data, pertaining to the underwriting of health, medical, hospital, pharmaceutical and prescription drug insurance and pertaining to the administration and organizing of prepaid and/or preferred provider and/or health maintenance organization and/or managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks; administering, organizing and underwriting health care coverage through contracted relationships with subscribers and professional clinical, hospital, nursing home and other health care providers
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: Health, medical, hospital, pharmaceutical and prescription drug insurance underwriting; administration and organizing of prepaid and/or preferred provider and/or health maintenance organization and/or managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks, including claims administration and processing, enrolling, providing eligibility and benefit information, claims remittance advising, claims and benefits reporting; administration of prepaid, preferred provider, health maintenance organization and managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar related healthcare plans and associated health plan provider networks, featuring insurance-related claims administration and processing, enrolling, and providing insurance eligibility and benefit information, claims remittance advising, claims and benefits reporting; providing information, data, pertaining to the underwriting of health, medical, hospital, pharmaceutical and prescription drug insurance and pertaining to the administration and organizing of prepaid and/or preferred provider and/or health maintenance organization and/or managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks; providing insurance information and data pertaining to the underwriting of health, medical, hospital, pharmaceutical and prescription drug insurance and pertaining to the administration and organizing of prepaid, preferred provider, health maintenance organization and managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks; administering, organizing and underwriting health care coverage through contracted relationships with subscribers and professional clinical, hospital, nursing home and other health care providers; administering and underwriting health care insurance coverage through contracted relationships with subscribers and professional clinical, hospital, nursing home and other health care providersClass 036 for Health, medical, hospital, pharmaceutical and prescription drug insurance underwriting; administration of prepaid, preferred provider, health maintenance organization and managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar related healthcare plans and associated health plan provider networks, featuring insurance-related claims administration and processing, enrolling, and providing insurance eligibility and benefit information, claims remittance advising, claims and benefits reporting; providing insurance information and data pertaining to the underwriting of health, medical, hospital, pharmaceutical and prescription drug insurance and pertaining to the administration and organizing of prepaid, preferred provider, health maintenance organization and managed care health, medical, hospital, pharmaceutical, prescription drug plans and health savings accounts and similar accounts and related healthcare plans and networks; administering and underwriting health care insurance coverage through contracted relationships with subscribers and professional clinical, hospital, nursing home and other health care providers
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 "CARE" apart from the mark as shown.


SIGNATURE(S)
Response Signature
Signature: /Jennifer R. Ashton/     Date: 04/29/2019
Signatory's Name: Jennifer R. Ashton
Signatory's Position: Associate Attorney, Christensen O'Connor Johnson Kindness, Washington bar member

Signatory's Phone Number: 206-682-8100

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 88059852
Internet Transmission Date: Mon Apr 29 14:55:55 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20190429145555095
381-88059852-620e2626843394f0f2ff657f145
46e68d7d9fef621974e2148e893731a55f821-N/
A-N/A-20190429142601039539