| 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 | 88140549 |
| LAW OFFICE ASSIGNED | LAW OFFICE 125 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88140549/mark.png |
| LITERAL ELEMENT | BLINK |
| 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) | |
|
RESPONSE This is in response to the Office Action dated November 28, 2018. Reconsideration of this Application is respectfully requested in view of the following remarks. REMARKS In the Office Action, the Examining Attorney raised a number of issues, each of which is discussed in detail below.
A. Likelihood of Confusion with BLINK / BLINK HEALTH (Applies to Class 44 Only) The Examining Attorney issued an initial refusal against Applicant's mark BLINK, citing a likelihood of confusion with Blink Health Ltd.’s registered marks BLINK (Reg. No. 5225683) and BLINK HEALTH (Reg. No. 5225684). In its application, Applicant specified: “providing a website featuring information in the fields of nutrition and physical health” in Class 44. The cited registrations cover “providing medical information via the Internet and mobile applications concerning prescription drugs and pharmacies” in Class 44. In support of his refusal, the Examining Attorney stated that the parties’ respective marks are identical. Additionally, he stated that Applicant’s provision of a website featuring information in the field of nutrition and health “presumably encompasses all services of the type described, including registrant’s narrower identifications for providing certain kinds of medical information via the internet, in particular related to prescription drugs and pharmacies.” 1. The Parties’ Offer Different Services. Applicant cannot agree that its services are similar to the Registrant’s services. To emphasize these differences and to clarify why confusion is unlikely, the Applicant has amended its description of Class 44 services as follows: ---Class 44: Consulting services in the fields of physical health and nutrition; providing healthy lifestyle and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, activity monitoring and counseling; providing a website featuring information in the fields of nutrition and physical health, excluding information concerning prescription drugs and pharmacies; massage services for athletes; massage therapy services for athletes--- Applicant primarily provides gym/health club facilities and a variety of related goods and services. In fact, there are over 80 gyms operating under the BLINK mark throughout the United States. In connection with these facilities, Applicant provides physical fitness training services, instruction and consultation services in the field of exercise and physical fitness, and workshops and seminars in the field of exercise and physical fitness, among other services. Applicant’s specified services, namely, providing a website featuring information in the fields of nutrition and physical health (excluding information concerning prescription drugs and pharmacies), are ancillary to Applicant’s gyms and physical fitness training services. Current and prospective gym members may be able to obtain information from Applicant’s website regarding fitness, exercise and nutrition. In contrast, the cited registrations cover “providing medical information via the Internet and mobile applications concerning prescription drugs and pharmacies” in Class 44, among other services. As is clear from the Registrant’s remaining specified goods and services, as well as its submitted specimen, Registrant sells prescription drugs online. The “information” Registrant provides is directly related to how its prescription drug services work. Applicant hereby submits a copy of the specimen Registrant submitted in connection with its application for the BLINK mark (See Reg. No. 5225683). It appears to be a webpage from the Registrant’s website at blinkhealth.com. The webpage has headings such as “How does Blink work?”, “What happens after I pay?” and “How does this work with my insurance?” The Registrant’s “information” services are directly related to and explanatory of its prescription drug services. Both the Applicant and the Registrant provide information online, but regarding very different subject matter. As Applicant’s amended description of services makes clear, there is neither overlap in the parties’ goods and services nor similarity between the parties’ goods and services. Applicant’s mark and the cited marks are unlikely to be confused based on the differences between the parties’ respective goods and services. Even when two marks are identical, they may coexist on the Principal Register, provided that the goods or services associated with the marks are sufficiently different to obviate confusion. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (reversing the Board's finding of likelihood of confusion between opposer's registered mark EDS for computer programming services and Applicant's mark E.D.S. for power supplies and battery chargers); and Therma-Scan Inc v. Thermoscan Inc. 63 U.S.P.Q2d 1659, 1664 (6th Cir. 2002) (finding no likelihood of confusion between THERMA-SCAN for infrared medical imaging services and THERMOSCAN for electronic ear thermometers because, although the parties might coexist in a broad industry of medical applications of thermology and infrared identification of heat, they "offer goods and services that utilize similar technology in very different ways”). Furthermore, it is important to note that Applicant and the registrant are not competitors. “If companies are not in direct competition, it is harder to show that consumers are likely to be confused by similar terms or marks.” Planet Hollywood (Region IV), Inc. v. Hollywood Casino Corp., 80 F. Supp. 2d 815, 881 (N.D. Ill. 1999). Applicant provides gyms/health club facilities and related goods and services; the Registrant sells prescription drugs online. The parties are clearly not competitors. In sum, Applicant’s services are sufficiently different from those specified in the cited registrations, such that confusion is unlikely. Applicant has already highlighted the marked differences in the parties’ respective goods and services. An analysis of other DuPont factors also indicates that confusion is unlikely. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). 2. The Registrant’s Marks are Neither Famous Nor Used on a Wide Variety of Goods and Services. The scope of protection for the Registrant’s marks is narrow, as the Examining Attorney has presented no evidence that Registrant’s marks have acquired fame or are part of a family of related marks. Further, in the registrations, the Registrant stated that the information it provides specifically relates to prescription drugs and pharmacies. In this case, the Registrant did not obtain protection for a broader description of its services. Therefore, the analysis of likely confusion in this case is strictly limited to the services specified in the registrations and Applicant’s services, as amended, and Applicant has already demonstrated the differences in these services. See CBS Inc. v. Morrow, 218 U.S.P.Q. 198 (Fed. Cir. 1983) (the goods specified in a registration are to be compared with the goods specified in the application for a likelihood of confusion analysis). Thus, there is no likelihood of confusion in this case. For all the foregoing reasons, Applicant requests that the refusal to register based on Section 2d of the Trademark Act be withdrawn. B. Potential Refusal Based on BLINK BROW BAR Additionally, the Examining Attorney noted that there may be a likelihood of confusion between Applicant’s BLINK mark and the prior-filed mark BLINK BROW BAR (App. No. 86722799). Applicant elects not to submit arguments relevant to this issue at this time and reserves the right to do so in the future. Applicant respectfully requests that its Application be suspended pending final disposition of this prior-filed application. C. Amendment to Description of Services Finally, the Examining Attorney requested amendment to the description of services in the Application. Applicant hereby complies with this request. CONCLUSION Applicant respectfully requests that the refusal to register based on Section 2d of the Trademark Act be withdrawn, that the amendments to its description of services be accepted, and that the Application be suspended pending final disposition of the prior-filed pending mark cited in the Office Action. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_20620511711-20190528143237604488_._Evidence-_BLINK_Specimen.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\881\405\88140549\xml4\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Specimen submitted in connection with cited registration |
| GOODS AND/OR SERVICES SECTION (025)(no change) | |
| GOODS AND/OR SERVICES SECTION (041)(current) | |
| INTERNATIONAL CLASS | 041 |
| DESCRIPTION | |
| Fitness training services; physical fitness conditioning classes; providing classes, workshops and seminars in the fields of fitness and exercise; providing gym facilities; providing gym facilities and fitness facilities at hotels, resorts, spas and residential buildings; providing a website featuring information on exercise and fitness and sports training and training advice, work-out tracking and the recording of training and workouts; providing on-line newsletters in the field of fitness, health, bodywork and body care services | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (041)(proposed) | |
| INTERNATIONAL CLASS | 041 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Physical fitness training services; physical fitness conditioning classes; providing classes, workshops and seminars in the fields of fitness and exercise; providing gym facilities; providing gym facilities and fitness facilities at hotels, resorts, spas and residential buildings; providing a website featuring information on exercise and fitness and sports training and training advice, work-out tracking and the recording of training and workouts; providing on-line newsletters in the field of fitness, health, bodywork and body care services; fitness services, namely, providing physical fitness assessment services and physical fitness consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (043)(no change) | |
| GOODS AND/OR SERVICES SECTION (044)(current) | |
| INTERNATIONAL CLASS | 044 |
| DESCRIPTION | |
| Consulting services in the fields of physical health and nutrition; providing healthy lifestyle and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, activity monitoring and counseling; fitness services, namely, providing assistance, fitness evaluation and consultation to individuals to help them make health, wellness and nutritional changes in their daily living to improve health; providing a website featuring information in the fields of nutrition and physical health; massage services for athletes; massage therapy services for athletes | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (044)(proposed) | |
| INTERNATIONAL CLASS | 044 |
| TRACKED TEXT DESCRIPTION | |
| Consulting services in the fields of physical health and nutrition; providing healthy
lifestyle and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, activity monitoring and counseling; |
|
| FINAL DESCRIPTION | |
| Consulting services in the fields of physical health and nutrition; providing healthy lifestyle and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, activity monitoring and counseling; providing a website featuring information in the fields of nutrition and physical health, excluding information concerning prescription drugs and pharmacies; massage services for athletes; massage therapy services for athletes | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Nicole Chaudhari/ |
| SIGNATORY'S NAME | Nicole Chaudhari |
| SIGNATORY'S POSITION | Associate attorney, DLA Piper, IL bar member |
| SIGNATORY'S PHONE NUMBER | 312-368-4000 |
| DATE SIGNED | 05/28/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue May 28 14:38:40 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XX- 20190528143840109037-8814 0549-620414646c0a4e34a396 d12dad403a115191f3c5d159e 4df1a964d43371f47f2-N/A-N /A-20190528143237604488 |
| 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
This is in response to the Office Action dated November 28, 2018. Reconsideration of this Application is respectfully requested in view of the following remarks.
REMARKS
In the Office Action, the Examining Attorney raised a number of issues, each of which is discussed in detail below.
A. Likelihood of Confusion with BLINK / BLINK HEALTH (Applies to Class 44 Only)
The Examining Attorney issued an initial refusal against Applicant's mark BLINK, citing a likelihood of confusion with Blink Health Ltd.’s registered marks BLINK (Reg. No. 5225683) and BLINK HEALTH (Reg. No. 5225684). In its application, Applicant specified: “providing a website featuring information in the fields of nutrition and physical health” in Class 44. The cited registrations cover “providing medical information via the Internet and mobile applications concerning prescription drugs and pharmacies” in Class 44.
In support of his refusal, the Examining Attorney stated that the parties’ respective marks are identical. Additionally, he stated that Applicant’s provision of a website featuring information in the field of nutrition and health “presumably encompasses all services of the type described, including registrant’s narrower identifications for providing certain kinds of medical information via the internet, in particular related to prescription drugs and pharmacies.”
1. The Parties’ Offer Different Services.
Applicant cannot agree that its services are similar to the Registrant’s services. To emphasize these differences and to clarify why confusion is unlikely, the Applicant has amended its description of Class 44 services as follows:
---Class 44: Consulting services in the fields of physical health and nutrition; providing healthy lifestyle and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, activity monitoring and counseling; providing a website featuring information in the fields of nutrition and physical health, excluding information concerning prescription drugs and pharmacies; massage services for athletes; massage therapy services for athletes---
Applicant primarily provides gym/health club facilities and a variety of related goods and services. In fact, there are over 80 gyms operating under the BLINK mark throughout the United States. In connection with these facilities, Applicant provides physical fitness training services, instruction and consultation services in the field of exercise and physical fitness, and workshops and seminars in the field of exercise and physical fitness, among other services. Applicant’s specified services, namely, providing a website featuring information in the fields of nutrition and physical health (excluding information concerning prescription drugs and pharmacies), are ancillary to Applicant’s gyms and physical fitness training services. Current and prospective gym members may be able to obtain information from Applicant’s website regarding fitness, exercise and nutrition.
In contrast, the cited registrations cover “providing medical information via the Internet and mobile applications concerning prescription drugs and pharmacies” in Class 44, among other services. As is clear from the Registrant’s remaining specified goods and services, as well as its submitted specimen, Registrant sells prescription drugs online. The “information” Registrant provides is directly related to how its prescription drug services work. Applicant hereby submits a copy of the specimen Registrant submitted in connection with its application for the BLINK mark (See Reg. No. 5225683). It appears to be a webpage from the Registrant’s website at blinkhealth.com. The webpage has headings such as “How does Blink work?”, “What happens after I pay?” and “How does this work with my insurance?” The Registrant’s “information” services are directly related to and explanatory of its prescription drug services. Both the Applicant and the Registrant provide information online, but regarding very different subject matter.
As Applicant’s amended description of services makes clear, there is neither overlap in the parties’ goods and services nor similarity between the parties’ goods and services.
Applicant’s mark and the cited marks are unlikely to be confused based on the differences between the parties’ respective goods and services. Even when two marks are identical, they may coexist on the Principal Register, provided that the goods or services associated with the marks are sufficiently different to obviate confusion. See Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992) (reversing the Board's finding of likelihood of confusion between opposer's registered mark EDS for computer programming services and Applicant's mark E.D.S. for power supplies and battery chargers); and Therma-Scan Inc v. Thermoscan Inc. 63 U.S.P.Q2d 1659, 1664 (6th Cir. 2002) (finding no likelihood of confusion between THERMA-SCAN for infrared medical imaging services and THERMOSCAN for electronic ear thermometers because, although the parties might coexist in a broad industry of medical applications of thermology and infrared identification of heat, they "offer goods and services that utilize similar technology in very different ways”).
Furthermore, it is important to note that Applicant and the registrant are not competitors. “If companies are not in direct competition, it is harder to show that consumers are likely to be confused by similar terms or marks.” Planet Hollywood (Region IV), Inc. v. Hollywood Casino Corp., 80 F. Supp. 2d 815, 881 (N.D. Ill. 1999). Applicant provides gyms/health club facilities and related goods and services; the Registrant sells prescription drugs online. The parties are clearly not competitors. In sum, Applicant’s services are sufficiently different from those specified in the cited registrations, such that confusion is unlikely.
Applicant has already highlighted the marked differences in the parties’ respective goods and services. An analysis of other DuPont factors also indicates that confusion is unlikely. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973).
2. The Registrant’s Marks are Neither Famous Nor Used on a Wide Variety of Goods and Services.
The scope of protection for the Registrant’s marks is narrow, as the Examining Attorney has presented no evidence that Registrant’s marks have acquired fame or are part of a family of related marks. Further, in the registrations, the Registrant stated that the information it provides specifically relates to prescription drugs and pharmacies. In this case, the Registrant did not obtain protection for a broader description of its services. Therefore, the analysis of likely confusion in this case is strictly limited to the services specified in the registrations and Applicant’s services, as amended, and Applicant has already demonstrated the differences in these services. See CBS Inc. v. Morrow, 218 U.S.P.Q. 198 (Fed. Cir. 1983) (the goods specified in a registration are to be compared with the goods specified in the application for a likelihood of confusion analysis). Thus, there is no likelihood of confusion in this case.
For all the foregoing reasons, Applicant requests that the refusal to register based on Section 2d of the Trademark Act be withdrawn.
B. Potential Refusal Based on BLINK BROW BAR
Additionally, the Examining Attorney noted that there may be a likelihood of confusion between Applicant’s BLINK mark and the prior-filed mark BLINK BROW BAR (App. No. 86722799). Applicant elects not to submit arguments relevant to this issue at this time and reserves the right to do so in the future. Applicant respectfully requests that its Application be suspended pending final disposition of this prior-filed application.
C. Amendment to Description of Services
Finally, the Examining Attorney requested amendment to the description of services in the Application. Applicant hereby complies with this request.
CONCLUSION
Applicant respectfully requests that the refusal to register based on Section 2d of the Trademark Act be withdrawn, that the amendments to its description of services be accepted, and that the Application be suspended pending final disposition of the prior-filed pending mark cited in the Office Action.
