| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88161426 |
| LAW OFFICE ASSIGNED | LAW OFFICE 113 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88161426/mark.png |
| LITERAL ELEMENT | TEAM |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This document is filed in response to the Final Office Action mailed October 16, 2019. Applicant submits that this Response places the Application in a condition for publication. The Examining Attorney has refused registration under Section 2(d) based upon a likelihood of confusion with Registration No. 5,660,606 for the mark “TEAM” in connection with “scientific study and research in the fields of health and wellness” in Class 42. The Examining Attorney has only refused registration based upon the Applicant’s services in Class 42 as follows: Class 42: 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.
The Examining Attorney proposes going forward with the following services in Class 42: 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.
The proposed amendment to Class 42 generally deletes all references to scientific and technological services in the nature of conducting research and analysis. Initially, the Examining Attorney failed to address the issues related to the Crowded Field Doctrine. There are just too many uses of “TEAM”. The common law uses of the registrations and applications cited in Exhibits 1 and 2 of Applicant’s Response dated September 25, 2019 need not be authenticated by any third party. The Examining Attorney states that likelihood of confusion is determined on a case-by-case basis by applying the DuPont factors and that only those factors that are “relevant and of record” need be considered, citing the M2 Software case and the In re Inn at St. John’s case. In consideration of the factors that are relevant and of record, Applicant includes the Declaration of Applicant setting forth the differences between the services performed by the owner of Registration No. 5,660,606 and the services performed by the Applicant. The Registrant, inHealth Medical Services, Inc., conducts scientific study and research to assist patients in overcoming certain conditions for their health and wellness. Conversely, the Applicant uses technology and research relating to medical coding for the purpose of improving the effectiveness and efficiency of care networks. There is no likelihood of confusion between research for the wellness of patients and research for the profits of care networks. Additionally, Applicant submits that the DuPont factors warrant against the finding of a likelihood of confusion. In this matter, Registrant’s mark is a standard character mark whereas Applicant’s mark is a stylized mark consisting of a box placed at the top upper left-hand corner with the box’s border diagonally split near the center of the top and right sides and to the lower right of the box is the stylized letters “TEAM”. The prominence of the box overtakes the word mark “TEAM”. In accordance with the DuPont factors, Registrant’s mark and Applicant’s mark must be compared in their entireties for their overall appearance, sound, connotation and commercial impression. The dissimilarity of the Registrant’s word mark and Applicant’s stylized mark, particularly in their form, precludes the likelihood of confusion. The Examining Attorney states that the services of the Registrant and Applicant are presumed to move in all trade channels normal for such services and are available to all potential classes of ordinary consumers of such services. The Examining Attorney focuses the argument on the “Applicant’s and Registrant’s services travel in the same trade channels”. However, the “potential classes of ordinary consumers of such services” are sufficiently different. As stated in the Declaration of Applicant, the potential classes of ordinary consumers of Registrant’s services for the purposes of improving the health of patients differ from the potential classes of ordinary consumers of Applicant’s services for the purposes of increasing the profit of care networks. Thus, applicant’s and registrant’s services are sufficiently different to preclude a likelihood of confusion. In accordance with In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) and TMEP §1207.01(a)(i),, the compared goods and services 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 goods and/or services] emanate from the same source.” Again, the services are not related. The Applicant is marketing its research services for the purpose of improving profit of care providers, whereas the Registrant is marketing its research services for the purpose of improving the wellness of patients. Accordingly, the circumstances surrounding their marketing target different customers. Consequently, the respective marketing of the Applicant and Registrants will not result in the mistaken belief that their goods and/or services emanate from the same source. The Examining Attorney states that 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, citing the In re Detroit Athletic Co. case and the In re i.am.symbolic case. The Examining Attorney concludes that Applicant’s more narrow health research and analysis services are related to Registrant’s more broad health research services. Respectfully, the Examining Attorney fails to see that Applicant’s services do not identify “health” in any relation to the broad health research services identified in Registrant’s services. Registrant’s services are “scientific study and research in the fields of health and wellness”. All references to “health” in the deleted portion of Applicant’s services consistently refer to “providers” or “healthcare analytics in medical coding”, and there are no references to “wellness”. Based on the description of the services stated in the Registration and the Application, services of “scientific study and research in the fields of health and wellness” for the purpose of improving the wellness of patients are unrelated to the services of technology and research for the purpose of improving the profit of care networks. Therefore, purchasers will not be confused as to the source of the services because there is no relationship between them. Based upon the evidence and arguments submitted by the Applicant, the Section 2(d) refusal to register has been overcome. Applicant submits that this Response places the Application in a condition for publication. However, if the Examining Attorney has any other concerns or questions, it would be appreciated if they would telephone the undersigned. The Commissioner is authorized to charge any additional fees or credit any overpayment coincident to this Response and Amendment to Deposit Account 23-0035. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
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| ORIGINAL PDF FILE | evi_122151790-20191029134208667163_._2DE2193-Decl-Exh_3-Wikipedia-019626.PDF |
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| DESCRIPTION OF EVIDENCE FILE | Declaration and referenced exhibits |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Edward D Lanquist, Jr./ |
| SIGNATORY'S NAME | Edward D Lanquist Jr. |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 6152422400 |
| DATE SIGNED | 10/29/2019 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Oct 29 13:45:53 EDT 2019 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XX.XX-20 191029134553956648-881614 26-7003a1830bf2156b9a07fb 082cad5c961445581b2505c8f ee749c908c6a5d7eb1f0-N/A- N/A-20191029134208667163 |
| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
This document is filed in response to the Final Office Action mailed October 16, 2019. Applicant submits that this Response places the Application in a condition for publication.
The Examining Attorney has refused registration under Section 2(d) based upon a likelihood of confusion with Registration No. 5,660,606 for the mark “TEAM” in connection with “scientific study and research in the fields of health and wellness” in Class 42.
The Examining Attorney has only refused registration based upon the Applicant’s services in Class 42 as follows:
Class 42:
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.
The Examining Attorney proposes going forward with the following services in Class 42:
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.
The proposed amendment to Class 42 generally deletes all references to scientific and technological services in the nature of conducting research and analysis.
Initially, the Examining Attorney failed to address the issues related to the Crowded Field Doctrine. There are just too many uses of “TEAM”. The common law uses of the registrations and applications cited in Exhibits 1 and 2 of Applicant’s Response dated September 25, 2019 need not be authenticated by any third party.
The Examining Attorney states that likelihood of confusion is determined on a case-by-case basis by applying the DuPont factors and that only those factors that are “relevant and of record” need be considered, citing the M2 Software case and the In re Inn at St. John’s case. In consideration of the factors that are relevant and of record, Applicant includes the Declaration of Applicant setting forth the differences between the services performed by the owner of Registration No. 5,660,606 and the services performed by the Applicant. The Registrant, inHealth Medical Services, Inc., conducts scientific study and research to assist patients in overcoming certain conditions for their health and wellness. Conversely, the Applicant uses technology and research relating to medical coding for the purpose of improving the effectiveness and efficiency of care networks. There is no likelihood of confusion between research for the wellness of patients and research for the profits of care networks.
Additionally, Applicant submits that the DuPont factors warrant against the finding of a likelihood of confusion. In this matter, Registrant’s mark is a standard character mark whereas Applicant’s mark is a stylized mark consisting of a box placed at the top upper left-hand corner with the box’s border diagonally split near the center of the top and right sides and to the lower right of the box is the stylized letters “TEAM”. The prominence of the box overtakes the word mark “TEAM”. In accordance with the DuPont factors, Registrant’s mark and Applicant’s mark must be compared in their entireties for their overall appearance, sound, connotation and commercial impression. The dissimilarity of the Registrant’s word mark and Applicant’s stylized mark, particularly in their form, precludes the likelihood of confusion.
The Examining Attorney states that the services of the Registrant and Applicant are presumed to move in all trade channels normal for such services and are available to all potential classes of ordinary consumers of such services. The Examining Attorney focuses the argument on the “Applicant’s and Registrant’s services travel in the same trade channels”. However, the “potential classes of ordinary consumers of such services” are sufficiently different. As stated in the Declaration of Applicant, the potential classes of ordinary consumers of Registrant’s services for the purposes of improving the health of patients differ from the potential classes of ordinary consumers of Applicant’s services for the purposes of increasing the profit of care networks. Thus, applicant’s and registrant’s services are sufficiently different to preclude a likelihood of confusion.
In accordance with In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999) and TMEP §1207.01(a)(i),, the compared goods and services 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 goods and/or services] emanate from the same source.” Again, the services are not related. The Applicant is marketing its research services for the purpose of improving profit of care providers, whereas the Registrant is marketing its research services for the purpose of improving the wellness of patients. Accordingly, the circumstances surrounding their marketing target different customers. Consequently, the respective marketing of the Applicant and Registrants will not result in the mistaken belief that their goods and/or services emanate from the same source.
The Examining Attorney states that 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, citing the In re Detroit Athletic Co. case and the In re i.am.symbolic case. The Examining Attorney concludes that Applicant’s more narrow health research and analysis services are related to Registrant’s more broad health research services. Respectfully, the Examining Attorney fails to see that Applicant’s services do not identify “health” in any relation to the broad health research services identified in Registrant’s services. Registrant’s services are “scientific study and research in the fields of health and wellness”. All references to “health” in the deleted portion of Applicant’s services consistently refer to “providers” or “healthcare analytics in medical coding”, and there are no references to “wellness”. Based on the description of the services stated in the Registration and the Application, services of “scientific study and research in the fields of health and wellness” for the purpose of improving the wellness of patients are unrelated to the services of technology and research for the purpose of improving the profit of care networks. Therefore, purchasers will not be confused as to the source of the services because there is no relationship between them.
Based upon the evidence and arguments submitted by the Applicant, the Section 2(d) refusal to register has been overcome.
Applicant submits that this Response places the Application in a condition for publication. However, if the Examining Attorney has any other concerns or questions, it would be appreciated if they would telephone the undersigned.
The Commissioner is authorized to charge any additional fees or credit any overpayment coincident to this Response and Amendment to Deposit Account 23-0035.
