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 |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88205002
Mark: SNAP
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Correspondence Address:
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Applicant: Essenlix Corporation
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Reference/Docket No. ESX-T065
Correspondence Email Address: |
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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
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
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.
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.
(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).)
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.
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
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).
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