Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 16, 2019

 

This Office action responds to applicant’s communication dated 9/25/2019 where applicant:

 

1. Submitted arguments and evidence against the Section 2(d) Refusal.

The examining attorney has reviewed the applicant’s response and determined the following:

1. The arguments and evidence against the Section 2(d) Refusal are not persuasive, therefore, the Section 2(d) Refusal is continued and made FINAL.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 5660606.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

The stated refusal refers to the following services and does not bar registration for the other services:  “Scientific and technological services, namely, conducting research and analysis to determine the extent and impact of different relationships between medical providers through specific disease states as indicated by medical coding to create benchmarks to create new classifications of medical providers for purposes of noting effectiveness and efficiency of the care network and for developing community care networks based on the data; Scientific and technological services, namely, correlation, regression analysis, and machine language learning to determine the extent and impact of different relationships between medical coding through the aggregation of specific disease states into proprietary service lines across multiple medical disciplines as indicated by medical coding, research and analytics specifically for developing a system capable of medical coding interoperability in the field of health providers and medical coding; Scientific and technological services, namely, medical research and analytics specifically for developing community care networks and medical coding interoperability in the fields of health providers and medical coding; Scientific and technological services, namely, medical research and design in the fields of healthcare analytics in medical coding; industrial analysis and research in the field of developing algorithms, care networks, care outcomes, and medical coding as it relates to specific communities.”

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5660606.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

In this case, applicant has applied to register the mark TEAM for use in connection with, in relevant part, “Scientific and technological services, namely, conducting research and analysis to determine the extent and impact of different relationships between medical providers through specific disease states as indicated by medical coding to create benchmarks to create new classifications of medical providers for purposes of noting effectiveness and efficiency of the care network and for developing community care networks based on the data; Scientific and technological services, namely, correlation, regression analysis, and machine language learning to determine the extent and impact of different relationships between medical coding through the aggregation of specific disease states into proprietary service lines across multiple medical disciplines as indicated by medical coding, research and analytics specifically for developing a system capable of medical coding interoperability in the field of health providers and medical coding; Scientific and technological services, namely, medical research and analytics specifically for developing community care networks and medical coding interoperability in the fields of health providers and medical coding; Scientific and technological services, namely, medical research and design in the fields of healthcare analytics in medical coding; industrial analysis and research in the field of developing algorithms, care networks, care outcomes, and medical coding as it relates to specific communities.”

 

Registration No. 5660606 is for the mark TEAM used in connection with “Scientific study and research in the fields of health and wellness.”

 

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 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 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 [services] and differences in the marks.”); TMEP §1207.01.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

As previously discussed, applicant’s mark is TEAM and registrant’s mark is TEAM.  Thus, the word portion of the marks is identical in terms of appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because the word portions are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services.  Id.  Therefore, the marks are confusingly similar. 

 

Furthermore, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).  Therefore, the design in the applied-for mark does not obviate the similarities between the marks.

 

Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording TEAM to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations appear to be for services that are predominantly different from or unrelated to those identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

However, applicant has only provided third party registrations for marks with the term TEAM paired with additional wording by which the marks can be distinguished.  Applicant has provided no third party registrations for the term TEAM on its own as with the applicant’s and the registrant’s marks.  Therefore, applicant has not provided evidence that the term TEAM on its own has been diluted. 

 

Further, evidence comprising third-party registrations for similar marks with different or unrelated services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording TEAM is weak or diluted. 

 

Ultimately, when purchasers call for the services of the applicant and registrant using TEAM and TEAM, they are likely to be confused as to the sources of those services by the similarities between the marks. Thus, the marks are confusingly similar.

 

            Relatedness of the Services

 

The compared services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, applicant's “Scientific and technological services, namely, conducting research and analysis to determine the extent and impact of different relationships between medical providers through specific disease states as indicated by medical coding to create benchmarks to create new classifications of medical providers for purposes of noting effectiveness and efficiency of the care network and for developing community care networks based on the data; Scientific and technological services, namely, correlation, regression analysis, and machine language learning to determine the extent and impact of different relationships between medical coding through the aggregation of specific disease states into proprietary service lines across multiple medical disciplines as indicated by medical coding, research and analytics specifically for developing a system capable of medical coding interoperability in the field of health providers and medical coding; Scientific and technological services, namely, medical research and analytics specifically for developing community care networks and medical coding interoperability in the fields of health providers and medical coding; Scientific and technological services, namely, medical research and design in the fields of healthcare analytics in medical coding; industrial analysis and research in the field of developing algorithms, care networks, care outcomes, and medical coding as it relates to specific communities” are related to registrant’s “Scientific study and research in the fields of health and wellness.” Specifically, both the application and registration identify research in the health field.

 

As previously discussed, the registration uses broad wording to describe health related research services, which presumably encompasses all services of the type described, including applicant’s more narrow medical coding research 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)).

 

Further, the attached Internet evidence, consisting of the websites of third party research companies in the health field that include data and analytics research, establishes that the same entity commonly provides the relevant services and markets the services under the same mark.  See attached websites for CLARITY INSIGHTS Healthcare, http://www.clarityinsights.com/industries/healthcare-data-analytics; HRH DATA DRIVEN INTELLIGENCE, http://www.hraresearch.com/; ELSEVIER HEALTH ANALYTICS, http://www.elsevier.com/clinical-solutions/health-analytics; NORTHWESTERN CENTER OF ENGINEERING AND HEALTH'S HEALTH ANALYTICS, http://www.mccormick.northwestern.edu/research/engineering-and-health-center/research/research-areas/health-analytics.html; and CARILIONCLINIC HEALTH ANALYTICS RESEARCH TEAM, http://www.carilionclinic.org/health-analytics-research-team#data-extracts-data-management; and SAS HEALTH CARE ANALYTICS,   Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Further, the presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all services identified in the registration.  15 U.S.C. §1057(b).  In the absence of limitations as to channels of trade or classes of purchasers in the services in the registration, the presumption is that the services move in all trade channels normal for such services and are available to all potential classes of ordinary consumers of such goods services.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).  Here, applicant’s broad identification of health research means that registrant’s services are presumed to move in all trade channels normal for such services and are available to all potential classes of ordinary consumers of such goods services, which encompasses those of the applicant’s research services related to the health field.  Accordingly, applicant’s and registrant’s services travel in the same trade channels.

 

Finally, when the marks of the respective parties are virtually identical, as in this case, the degree of similarity or relatedness between the services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).  Therefore, the registrant’s encompassing services are sufficiently related to the applicant’s services for likelihood of confusion purposes.

 

Here, applicant argues that their services do not relate to field of registrant’s actual use of the mark in telehealth or multidisciplinary care.  However, determining likelihood of confusion is based on the description of the services stated 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)). Registrant’s services are not limited to telehealth and multidisciplinary in the identification of services.  Therefore, applicant’s more narrow health research and analysis services are related to registrant’s more broad health research services.

 

When purchasers encounter the services of the applicant and registrant, they are likely to be confused as to the source of the services by the relationship between them. Thus, the services are closely related.

 

Therefore, because the marks are confusingly similar and the services are closely related, purchasers encountering these services are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:

 

(1) Deleting the services to which the refusal pertains;

 

(2) Filing a request to divide out the services that have not been refused registration, so that the mark may proceed toward publication for opposition for those services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).

 

RESPONSE TO THIS FINAL ACTION

 

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.  

 

If applicant does not timely respond within six months of the issue date of this final Office action, the following services to which the final refusal apply will be deleted from the application by Examiner’s Amendment:  “Scientific and technological services, namely, conducting research and analysis to determine the extent and impact of different relationships between medical providers through specific disease states as indicated by medical coding to create benchmarks to create new classifications of medical providers for purposes of noting effectiveness and efficiency of the care network and for developing community care networks based on the data; Scientific and technological services, namely, correlation, regression analysis, and machine language learning to determine the extent and impact of different relationships between medical coding through the aggregation of specific disease states into proprietary service lines across multiple medical disciplines as indicated by medical coding, research and analytics specifically for developing a system capable of medical coding interoperability in the field of health providers and medical coding; Scientific and technological services, namely, medical research and analytics specifically for developing community care networks and medical coding interoperability in the fields of health providers and medical coding; Scientific and technological services, namely, medical research and design in the fields of healthcare analytics in medical coding; industrial analysis and research in the field of developing algorithms, care networks, care outcomes, and medical coding as it relates to specific communities.”  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

In such case, the application will proceed for the following services only: 

 

Class 35 – “predictive analysis and physician referral services, namely, providing a criteria featuring statistical data on the performance of healthcare professionals for the purpose of assisting healthcare networks in making physician selection decisions.” 

 

Class 42 – “design and development of computer hardware and software; Providing a website featuring resources, namely, non-downloadable software for generating reports relating to the community care profile of hospitals, physicians, labs, home health, and imaging; Providing a website featuring resources, namely, non-downloadable software for medical data collection and medical coding, namely, generating medical coding consisting of data sets containing subcategories and subdivisions, including for medical services coding, for medical diagnosis statements coding, and for medical procedures statements coding; Providing a website featuring resources, namely, non-downloadable software for generating statistical and indexable reports on medical data collection and medical coding for administrative, financial, and analytical purposes; Providing a website featuring resources, namely, non-downloadable software for providing real-time monitoring service of an entire base of patients at any point in time and for proactively predicting the services needed and the resources required to fulfill the clinical needs of each patient in the patient base.”

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Emma Sirignano/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7031

emma.sirignano@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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 16, 2019 for

U.S. Trademark Application Serial No. 88161426

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Emma Sirignano/

Examining Attorney, Law Office 113

United States Patent and Trademark Office

(571) 272-7031

emma.sirignano@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 16, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”