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. 88078806 CHILDREN'S NATIONAL HEALTH & WELLNESS (Stylized and/or with Design, see http://uspto.report/TM/88078806/mark.png) has been amended as follows:

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

This responds to the Office Action issued June 5, 2019.

The Examining Attorney continued a request that Applicant disclaim “CHILDREN’S NATIONAL HEALTH & WELLNESS” apart from the mark.  This wording is not a unitary phrase as shown in the Applicant’s mark.

The Applicant previously entered a disclaimer of “HEALTH & WELLNESS” apart from the mark.  The Applicant now claims acquired distinctiveness in part as to “CHILDREN’S NATIONAL” under Section 2(f) based on ownership of U.S. Reg. Nos. 4174968, 5326914, and 5200183 that include the same wording, “CHILDREN’S NATIONAL,” and identify sufficiently related services.  Prior registrations are among the type of evidence that may be used to establish acquired distinctiveness. 37 CFR §2.41(a)(1); TMEP §1212.04(e).

TMEP §1212.09(b) states that an Applicant may make a claim of acquired distinctiveness  in part under Section 2(f) in an intent-to- use application.  TMEP §1212.04(c) discusses the interpretation of “sufficiently similar” when considering the relationship between goods/services in registrations that form the basis of a Section 2(f) claim of acquired distinctiveness and the goods/services in a pending application.

In this case, the strong recognition of "CHILDREN’S NATIONAL" in the marketplace for a range of health and medical services, and the sufficient relationship between those services and the goods identified in the pending application lead to the conclusion that the established acquired distinctiveness of “CHILDREN’S NATIONAL” will transfer to the identified goods in this application when use begins. 

The Applicant has been continuously using “CHILDREN’S NATIONAL” since at least the late 1980s - 30 years or more.  Given this substantial and longstanding use, the primary significance of "CHILDREN’S NATIONAL" in the minds of the consuming public will be to identify not only the goods in this application but the source of the goods.  As noted above, the goods identified in the pending application are sufficiently related to the Applicant’s health and medical services in its prior registrations to allow acquired distinctiveness in "CHILDREN'S NATIONAL" to be transferred.

Third- party registrations have probative value to demonstrate that goods/services might emanate from a single source.  The probative value of third-party registrations increases when registrations are based on use in commerce.  TMEP §1207.01(d)(iii) states: 

Third-party registrations that cover a number of different goods or services may have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that "a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis")

In responding to Office Action No. 1, the Applicant provided examples of third-party registrations that include Class 3 goods and Class 44 medical/health services.  The Examining Attorney notes that some of these registrations were based on Section 44; however, as previously explained, Declarations of Use had been filed for the registrations and thus, their probative value is the same as that for use-based registrations. 

Attached at Exhibit A, the Applicant provides TSDR copies of the following registrations based on use in commerce that identify both Class 3 products (many including lotions and creams) and Class 44 medical services and/or medical or health-related services.

Mark	Registration No
JANCARE SKINFARM	5894395
HB2	5738818
SL SKIN LAUNDRY CALIFORNIA	5872153
MIXILAB	5838231
VERO DERM	5834313
M	5818435
AMERICAN SKIN INSTITUTE	5789971
SCANDANAVIAN HAIR SCIENCE SINCE 1979	5471661
“I” Stylized	5891715
AVANTI DENTISTRY	5711982
ATLANTA AESTHETICS	5658103
SIENNA BIOPHARMACEUTICALS	5509302
Design Only	5639412
Design Only	5616379
CALIFORNIA SKIN INSTITUTE	5269244
FOOT MD	5274585
THE ROXBURY INSTITUTE	5443745

Evidence of a large number of third-party registrations covering both the goods and services at issue may suffice to establish that the goods/services may come from the same source. The USPTO frequently uses evidence of third-party registrations to support a relationship between goods and services and therefore, this evidence supports the conclusion that the goods in the pending application are sufficiently related to the services identified in the Applicant’s prior registrations upon which a claim of acquired distinctiveness in part is based.

The Applicant has addressed all of the issues raised by the Examining Attorney.  Based on the foregoing, the Applicant respectfully requests that the Examining Attorney accept the disclaimer of “HEALTH & WELLNESS,” accept the claim of acquired distinctiveness in part as to “CHILDREN’S NATIONAL” under Section 2(f), and approve the application for publication.  

 

EVIDENCE
Evidence in the nature of TSDR Records For Third-Party Registrations has been attached.
Original PDF file:
evi_192311351-20191205090643741360_._Exhibit_A__OA_Response_SN_88078806_.pdf
Converted PDF file(s) ( 53 pages)
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ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use HEALTH & WELLNESS apart from the mark as shown.


SECTION 2(f) Claim of Acquired Distinctiveness, IN PART, based on Active Prior Registration(s)
CHILDREN'S NATIONAL has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for sufficiently similar goods/services of active U.S. Registration No(s). 5326914 5200183 4174968


SIGNATURE(S)
Declaration Signature
The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice.
Response Signature
Signature: /anna w manville/     Date: 12/05/2019
Signatory's Name: Anna W. Manville
Signatory's Position: Attorney of record, DC Bar member

Signatory's Phone Number: 2408642412

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); 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.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88078806
Internet Transmission Date: Thu Dec 05 09:25:27 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.X-20191205092527855
982-88078806-700f6c670a0e55e7ddc27f65947
5012276e9841d691414258d66bd61d8a82e5889-
N/A-N/A-20191205090643741360