Offc Action Outgoing

SNAP

Essenlix Corporation

U.S. Trademark Application Serial No. 88205002 - SNAP - ESX-T065

To: Essenlix Corporation (esxip@essenlix.com)
Subject: U.S. Trademark Application Serial No. 88205002 - SNAP - ESX-T065
Sent: November 28, 2020 01:43:37 PM
Sent As: ecom120@uspto.gov
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United States Patent and Trademark Office (USPTO)

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

 

U.S. Application Serial No. 88205002

 

Mark:  SNAP

 

 

 

 

Correspondence Address: 

Julian D. Gonzalez

1 DEERPARK DRIVE, SUITE R

MONMOUTH JUNCTION NJ 08852

 

 

 

 

Applicant:  Essenlix Corporation

 

 

 

Reference/Docket No. ESX-T065

 

Correspondence Email Address: 

 esxip@essenlix.com

 

 

 

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:  November 28, 2020

 

 

On September 5, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 88137974.  The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark.

 

 

Introduction

 

This Office action is in response to applicant’s communication filed on August 19, 2019.

 

In a previous suspension action dated September 5, 2019, the trademark examining attorney maintained the refusal to register the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement:  amend the identification of services.

 

The trademark examining attorney notes that following refusal has been obviated:  U.S. Registration No. 4320844 (SNAPMD) has since cancelled and is no longer a bar to registration.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.  All previous arguments and evidence, where applicable, are incorporated by reference herein.

 

Summary of Issues Made Final Applicant Must Address:

  • Section 2(d) Refusal – Likelihood of Confusion
  • Identification of Services

 

Section 2(d) Refusal – Likelihood of Confusion

This Refusal Applies Only to the Following Services: medical services, medical assistance, medical counseling, healthcare testing, diagnostic testing, and diagnostic tests for personal wellness, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; all of the aforesaid services not including medical consultations provided via phone, online or videoconferencing and providing information about medical test results to patients and medical professionals in the form of reports

The refusal to register the applied-for mark is now made FINAL because of a likelihood of confusion with the mark in U.S. Registration No. 4834468 (SNAPCARE).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration in the February 27, 2019 Office action.

 

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the services.  In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.  That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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).  Additionally, the services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).

 

Comparison of 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

Applicant argues SNAP is dilute, however, for the reasons the examining attorney articulates in the September 5, 2019 suspension action, this argument is not persuasive.  As applicant makes no other arguments as to why these marks are not similar in appearance, sound, and connotation, the examining attorney maintains that applicant’s and registrant’s marks have similar overall commercial impressions and therefore are confusingly similar.

 

Comparison of Services

Registrant’s services, in pertinent part, are, “providing information about medical test results; providing medical information to patients and medical professionals in the form of reports.”

Applicant’s services as amended are, “medical services, medical assistance, medical counseling, healthcare testing, diagnostic testing, and diagnostic tests for personal wellness, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing.”

 

As stated in the September 5, 2019 suspension action, applicant’s exclusionary language does not overcome this refusal because the fact that the services of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular services, but likelihood of confusion as to the source or sponsorship of those services.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.

 

For this reason, 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 goods and/or services] 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).

 

 The attached Internet evidence, consisting of pages from LabCorp, Martin Health, Access Medical Labs, and MD Labs, establishes that the same entity commonly provides the relevant services and markets the services under the same mark, that the relevant services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the services are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s 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).

 

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).

Because applicant’s and registrant’s marks are confusingly similar and their services are closely related, the refusal to register applicant’s mark must be made FINAL due to a likelihood of confusion.

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 Application form (form #3) to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or 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).; or

 

(3)  Amending the basis for the goods and/or services identified in the refusal, if appropriate.  TMEP §806.03(h).  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

Identification of Goods

 

The identification of goods is indefinite and must be clarified because it is not evident what is meant by “healthcare testing” and must be specified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

Applicant may adopt the following identification, if accurate: 

 

Class 10: no change

 

Class 44: Medical services, medical assistance, medical counseling, healthcare testing in the nature of diagnostic testing, and diagnostic tests for personal wellness, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing; Medical services for the detection and identification of nucleic acids in a sample, namely, DNA and RNA screening for medical purposes; all of the aforesaid services not including medical consultations provided via phone, online or videoconferencing and providing information about medical test results to patients and medical professionals in the form of reports.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

 

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

This requirement is now made FINAL.

 

Responding to this Action

 

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 and requirement apply will be deleted from the application by Examiner’s Amendment:  medical services, medical assistance, medical counseling, healthcare testing, diagnostic testing, and diagnostic tests for personal wellness, namely, in the fields of cancer, blood abnormalities, immune diseases, neurological diseases, cardiovascular diseases, infectious diseases, viral diseases, genetic diseases, and other tissue-based diagnostic testing, cytology, and cell-based testing.  37 C.F.R. §2.65(a); see 15 U.S.C. §1062(b).

 

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

 

Class 10: no change

 

Class 44: Medical services for the detection and identification of nucleic acids in a sample, namely, DNA and RNA screening for medical purposes; all of the aforesaid services not including medical consultations provided via phone, online or videoconferencing and providing information about medical test results to patients and medical professionals in the form of reports. 

 

Applicant may respond to this final Office action by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are 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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Leslee A. Friedman/

Leslee A. Friedman

Trademark Examining Attorney

Office 120

leslee.friedman@uspto.gov

(571) 272 - 5278

 

 

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.  

 

 

 

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U.S. Trademark Application Serial No. 88205002 - SNAP - ESX-T065

To: Essenlix Corporation (esxip@essenlix.com)
Subject: U.S. Trademark Application Serial No. 88205002 - SNAP - ESX-T065
Sent: November 28, 2020 01:43:38 PM
Sent As: ecom120@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 28, 2020 for

U.S. Trademark Application Serial No. 88205002

 

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. 

 

 

/Leslee A. Friedman/

Leslee A. Friedman

Trademark Examining Attorney

Office 120

leslee.friedman@uspto.gov

(571) 272 - 5278

 

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 November 28, 2020, 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.”

 

 

 


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