Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  January 16, 2020

 

On May 21, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87687905.  The referenced prior-pending application has registered.  Therefore, registration is refused as follows.

 

Section 2(d) Refusal – Likelihood of Confusion

 

a.         U.S. Registration No. 5816621

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5816621.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

In this case, the applicant has applied to register IMPACT (Standard Characters) for “Arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances; arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances for training purposes; training services relating to pharmaceutical and veterinary preparations and substances; provision of interactive online training services in the field of pharmaceutical and veterinary preparations and substances; provision of educational services, namely, classes, seminars, workshops in the fields of pharmaceutical and veterinary preparations and substances; distribution of course materials relating to pharmaceutical and veterinary preparations and substances in connection with educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops in the fields of pharmaceutical and veterinary preparations and substances; provision of online information relating to educational services in the fields of pharmaceutical and veterinary preparations and substances via an online web site; information, advisory and consultancy services in relation to all of the aforesaid services.”

 

The registrant’s mark is  IMPACT EDUCATION LLC (and Design) for “education services, namely, continuing medical education (CME) courses, continuing education units (CEU) courses, continuing education (CE) courses, continuing nursing education (CNE) courses, and continuing pharmacy education (CPE) courses, for physicians, nurses, nurse practitioners, pharmacists, professional performance medical directors, pharmacy directors, quality directors, clinical pharmacists, health-system pharmacists, specialty pharmacists, case managers, home infusion providers, policy administrators, utilization managers, Health Information Technology professionals, C-suite executives, health plan personnel, Health Maintenance Organization personnel, health systems personnel, Integrated Delivery Network personnel, Accountable Care Organization personnel, managed care organizations personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, patient advocacy organization personnel, and payer organization personnel, in the field of educational courses for improving knowledge- and skill-based medical education courses for managed care and payer professionals.”

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

In this case, the marks contain the same dominant wording, namely, “IMPACT.”  Applicant’s mark consists solely of the word “IMPACT”; the literal portion of registrant’s mark consists of the word “IMPACT” followed by the descriptive word “EDUCATION” and the entity designation “LLC,” both of which have been disclaimed by the registrant.  Because of this common wording, the marks are similar in sound, appearance, and overall commercial impression.

 

Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  “IMPACT” is the first word in registrant’s mark and the only word in applicant’s mark.

 

Further, applicant’s entire mark is contained within registrant’s mark.  Incorporating the entirety of one mark within another, as in the present case, does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

The fact that applicant’s mark is in standard characters while registrant’s mark contains a design element is insufficient to overcome the likelihood of confusion.  When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Relatedness of the Services

 

Determining likelihood of confusion is based on the descriptions of the services in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration uses broad wording to describe “education services, namely, continuing medical education (CME) courses, continuing education units (CEU) courses, continuing education (CE) courses, continuing nursing education (CNE) courses, and continuing pharmacy education (CPE) courses, for physicians, nurses, nurse practitioners, pharmacists, professional performance medical directors, pharmacy directors, quality directors, clinical pharmacists, health-system pharmacists, specialty pharmacists, case managers, home infusion providers, policy administrators, utilization managers, Health Information Technology professionals, C-suite executives, health plan personnel, Health Maintenance Organization personnel, health systems personnel, Integrated Delivery Network personnel, Accountable Care Organization personnel, managed care organizations personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, patient advocacy organization personnel, and payer organization personnel, in the field of educational courses for improving knowledge- and skill-based medical education courses for managed care and payer professionals,” which presumably encompasses all services of the type described, including applicant’s more narrow “Arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances; arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances for training purposes; training services relating to pharmaceutical and veterinary preparations and substances; provision of interactive online training services in the field of pharmaceutical and veterinary preparations and substances; provision of educational services, namely, classes, seminars, workshops in the fields of pharmaceutical and veterinary preparations and substances; distribution of course materials relating to pharmaceutical and veterinary preparations and substances in connection with educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops in the fields of pharmaceutical and veterinary preparations and substances; provision of online information relating to educational services in the fields of pharmaceutical and veterinary preparations and substances via an online web site; information, advisory and consultancy services in relation to all of the aforesaid services.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Summary of the Refusal

 

The marks contain the same dominant wording and are similar in sound, appearance, and overall commercial impression.  The services are legally identical.  The similarities among the marks and the services are so great as to create a likelihood of confusion among consumers.  The overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

b.         U.S. Registration No. 4862168

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is maintained and continued with respect to U.S. Registration No. 4862168.[1]  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

 

The applicant has applied to register IMPACT (Standard Characters) for “Arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances; arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances for training purposes; training services relating to pharmaceutical and veterinary preparations and substances; provision of interactive online training services in the field of pharmaceutical and veterinary preparations and substances; provision of educational services, namely, classes, seminars, workshops in the fields of pharmaceutical and veterinary preparations and substances; distribution of course materials relating to pharmaceutical and veterinary preparations and substances in connection with educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops in the fields of pharmaceutical and veterinary preparations and substances; provision of online information relating to educational services in the fields of pharmaceutical and veterinary preparations and substances via an online web site; information, advisory and consultancy services in relation to all of the aforesaid services.”

 

Registrant’s mark is MSK-IMPACT (Standard Characters) for services in Classes 42 and 44 and for “Educational services, namely, conducting seminars, workshops and conferences in the field of molecular pathology, tumor biology and cancer care” in Class 41.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In this case, the marks contain the same wording in part, namely, “IMPACT.”  Applicant’s mark consists solely of the word “IMPACT”; registrant’s mark consists of the word “IMPACT” preceded by the initialism of registrant’s name, “MSK.”[2]  Because of this common wording, the marks are highly similar in sound, appearance, and overall commercial impression.

 

In the May2, 2019 response, the applicant argues that:

 

The cited mark MSK-IMPACT contains the additional distinctive term MSK (which is an acronym for the owner Memorial Sloan-Kettering, see Ex. C.) that is linked to the term IMPACT with a hyphen.  As such, the term IMPACT in the cited mark MSK-IMPACT is not considered separable from the term MSK, and consumers would not refer to the mark as simply IMPACT.

 

Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Applicant’s primary argument with respect to the marks is:

 

The Cited Marks should be afforded a sufficiently narrow scope of protection that Applicant’s Mark can coexist, because other marks comprised of or featuring the word IMPACT (or similar) coexist in the relevant fields.[[3]]

 

            *                                              *                                              *

 

There are over 200 registered marks in Class 41 (where Applicant’s educational services are classified) that cover some form of healthcare-, medical-, and/or pharmaceutical-related educational service, or similar service.  A representative sampling is shown in Table 1 below.  Further, in Class 42 (where three of the four Cited Marks coexist) over 20 registered marks coexist the cover medical or scientific research.  A representative sampling is shown in Table 2 below.[[4]]

 

If the Cited Marks and the marks listed in the tables below and in the attached TESS records can co-exist this means that the Cited Marks are not entitled to a broad scope of protection in the relevant space.  As a result, Applicant’s Mark should be able to coexist with the Cited Marks as well.

 

Most of the third-party registrations provided by the applicant contain wording in addition to the word “IMPACT,” which would distinguish those marks from other marks that also contain the word “IMPACT” plus different additional wording.  The applicant’s mark in this case consists solely of the word “IMPACT.”  

 

As to those few third-party registrations that consist solely of the word “IMPACT” or the phonetic equivalent of “IMPACT,” prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

 

Relatedness of the Services

 

Registrant’s Class 41 services are “Educational services, namely, conducting seminars, workshops and conferences in the field of molecular pathology, tumor biology and cancer care.”  Applicant’s services are “Arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances; arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances for training purposes; training services relating to pharmaceutical and veterinary preparations and substances; provision of interactive online training services in the field of pharmaceutical and veterinary preparations and substances; provision of educational services, namely, classes, seminars, workshops in the fields of pharmaceutical and veterinary preparations and substances; distribution of course materials relating to pharmaceutical and veterinary preparations and substances in connection with educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops in the fields of pharmaceutical and veterinary preparations and substances; provision of online information relating to educational services in the fields of pharmaceutical and veterinary preparations and substances via an online web site; information, advisory and consultancy services in relation to all of the aforesaid services.”

 

Determining likelihood of confusion is based on the descriptions of the services in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration uses broad wording to describe “Educational services, namely, conducting seminars, workshops and conferences in the field of molecular pathology, tumor biology and cancer care,” which presumably encompasses all services of the type described, including applicant’s more narrow “Arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances; arranging, conducting and organisation of educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops relating to pharmaceutical and veterinary preparations and substances for training purposes; training services relating to pharmaceutical and veterinary preparations and substances; provision of interactive online training services in the field of pharmaceutical and veterinary preparations and substances; provision of educational services, namely, classes, seminars, workshops in the fields of pharmaceutical and veterinary preparations and substances; distribution of course materials relating to pharmaceutical and veterinary preparations and substances in connection with educational conferences, congresses, conventions, lectures, seminars, symposiums and workshops in the fields of pharmaceutical and veterinary preparations and substances; provision of online information relating to educational services in the fields of pharmaceutical and veterinary preparations and substances via an online web site; information, advisory and consultancy services in relation to all of the aforesaid services.”  See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

In the May 2, 2019 response, the applicant argues that:

 

Memorial Sloan-Kettering uses its MSK-IMPACT mark in connection with a test available to its patients.  According to its website, MSK-IMPACT “stands for integrated mutation profiling of actionable cancer targets.  It is a targeted tumor-sequencing test available to MSK patients.”  Ex. G.  There does not appear to be an educational component.  In fact, the specimens filed as part of the application to support the Class 41 services, appear to use the MSK-IMPACT mark to reference the subject matter of the educational services, as opposed to the source of the educational services.  See Ex. H.

 

As explained above, determining likelihood of confusion is based on the descriptions of the services in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).

 

It is improper to decide the issue of likelihood of confusion based upon a comparison of applicant’s actual goods [or services] with registrant’s actual goods [or services].  If registrant’s goods [or services] are broadly described in its registration so as to include types of goods [or services] which are similar to applicant’s goods [or services], then an applicant in an ex parte case cannot properly argue that, in point of fact, registrant actually uses its mark on a far more limited range of goods [or services] which range does not include goods [or services] which are similar to applicant’s goods [or services].

 

In re Trackmobile, Inc., 15 USPQ2d 1152, 1153 (TTAB 1990).

 

Further, a trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv).

 

Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

 

For the foregoing reasons, the Section 2(d) likelihood of confusion refusal is maintained and continued with respect to U.S. Registration No. 4862168.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

TEAS RF Advisory

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

If the applicant has any questions or needs assistance in responding to this Office action, please call the assigned examining attorney.

 

A prompt response to this Office action will expedite the handling of this matter.

 

 

 

/Barbara A. Gaynor/

Barbara A. Gaynor

Trademark Examining Attorney

Law Office 115

571-272-9164

Barbara.Gaynor@uspto.gov

 

 

RESPONSE GUIDANCE

 

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.