To: | Current Health Inc. (trademarks@wsgr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88226902 - CURRENT - 52642-TM1004 |
Sent: | 3/11/2019 4:32:00 PM |
Sent As: | ECOM101@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 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88226902
MARK: CURRENT
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Current Health Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/11/2019
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.
REFUSALS & REQUIREMENTS
PRIOR-FILED APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Comparison of the Marks
The application is for the standard character mark CURRENT.
Reg. No. 3901027 is for the standard character mark CURRENT CARE.
Reg. No. 4775780 is for the stylized word CURRENT with a swirl design.
Reg. No. 5022271 is for the standard character mark MEDCURRENT.
The applied-for mark CURRENT is the dominant feature of the cited registrations.
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).
Reg. No. 3901027 disclaimed CARE. Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
In addition, the attached evidence shows that the wording MED in the Reg. No. 5022271 is merely descriptive of or generic for the registrant’s goods and/or services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording CURRENT the more dominant element of the mark.
As for the design in Reg. No. 4775780, 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 goods and/or 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, even where the word portion has been disclaimed. 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)).
Therefore, the marks are confusingly similar.
Comparison of the Goods & Services
The application is for:
Class 9
Computer software for use in monitoring patient health, namely, monitoring patient pulse, blood pressure, heart rate, and vital signs; computer software for communicating patient health information, namely, generating, transmitting, and displaying patient health information and diagnosing illness; computer software for use in video conferencing with healthcare providers; computer software for use in conducting virtual healthcare office visits; computer software for use in patient checkups and reporting of symptoms to healthcare providers; computer software for use in educational and preventative care virtual healthcare office visits
Class 10
Wearable medical device for monitoring patient health; medical device for monitoring patient health, namely, monitoring patient pulse, blood pressure, heart rate, and vital signs; medical device for communicating patient health information, namely, generating, transmitting, and displaying patient health information and diagnosing illness; wearable medical device for monitoring patient health
Class 42
Providing temporary use of nondownloadable computer software for use in monitoring patient health, namely, monitoring patient pulse, blood pressure, heart rate, and vital signs; providing temporary use of nondownloadable computer software for communicating patient health information, namely, generating, transmitting, and displaying patient health information and diagnosing illness; providing temporary use of nondownloadable computer software for use in video conferencing with healthcare providers; providing temporary use of nondownloadable computer software for use in conducting virtual healthcare office visits; providing temporary use of nondownloadable computer software for use in patient checkups and reporting of symptoms to healthcare providers; providing temporary use of nondownloadable computer software for use in educational and preventative care virtual healthcare office visits
Reg. No. 3901027 includes “Providing online non-downloadable computer software which allows secure access to patient medical records” in Class 42.
Reg. No. 4775780 is for “Collecting, analyzing, compiling and integrating data in the field of healthcare for business purposes; services for collection, preparation, composition, processing, acquisition and provision of business information, data, statistics and indices; services for collecting, analyzing, compiling and integrating information from separate databases and the creation of aggregated data, statistics and indices at the record level; providing an online database in the field of physician affiliation relationships, namely, hospital, group practice and long term care affiliations; medical data management services, namely, receiving data and data entering that are originated by physicians, hospitals, and ancillary medical care providers” in Class 35.
Reg. No. 5022271 is for:
Class 42
Computer software development and computer programming development for others in the medical field, namely, clinical decision support (CDS) software which is designed to assist physicians and other healthcare professionals make medically appropriate decisions by electronically linking clinical observations with evidence-based health knowledge
Class 44
Software as a service (SAAS) services, namely, a platform which provides an innovative way for hospitals, radiologist practices, and physicians to significantly improve the ordering of medical procedures through seamless integration with the Electronic Medical Record (EMR) systems through the use of software integration, digital content customization and workflow adoption relating for use in the medical field; Consultation services in the field of wellness and health
The healthcare goods and services perform the same or similar purposes as the services in the cited registrations.
Broad wording is presumed to encompass all goods and/or services of the type described. 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 goods and/or services are related.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
/Samuel R. Paquin/
Examining Attorney
Law Office 101
(571) 272-2514
samuel.paquin@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.