UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 2/20/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues

 

• Refusal under Section 2(d) – Likelihood of Confusion
• Refusal under Section 2(e)(1) - descriptive
• Identification of Goods clarification required
• Notice of prior pending application as possible bar to registration

 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3686434.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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 goods and/or 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 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.

 

The applicant’s mark is IDENTIFY for “contact free biometric scanners; contact free biometric apparatus to verify patient and treatment plan; computer hardware and software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for contact free biometric scanners; computer software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for medical imaging apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; computer software for use in radiation therapy treatment planning and radiation therapy treatment verification; computer software for use in authorization, administration and authentication of patient information over global computer networks; apparatus and software for recording, transmitting and reproducing sound and/or images; computer software for the creation or transmission of images or data relating to radiotherapy treatment; computer software for use with oncology treatment devices and for creating and facilitating oncology treatment plans; and Medical apparatus, namely, for confirming patients, settings and treatment plans; medical apparatus for the creation or transmission of images or data relating to radiotherapy; medical imaging apparatus for confirming patients, settings and treatment plans; electromedical systems and their components, all for diagnostic radiology and radiotherapy; medical apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; medical imaging apparatus incorporating medical imaging software that generates surface renderings of the patient.”

 

The registrant’s mark is IDENTAFI for “Medical equipment, namely, optical detection devices for the screening and diagnosis of pre-cancerous and cancerous conditions”

 

The 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

The applicant’s mark is IDENTIFY.  The registrant’s mark is IDENTAFI.  The marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

 

The Goods/Services

 

The compared goods and/or 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 applicant’s goods are “contact free biometric scanners; contact free biometric apparatus to verify patient and treatment plan; computer hardware and software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for contact free biometric scanners; computer software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for medical imaging apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; computer software for use in radiation therapy treatment planning and radiation therapy treatment verification; computer software for use in authorization, administration and authentication of patient information over global computer networks; apparatus and software for recording, transmitting and reproducing sound and/or images; computer software for the creation or transmission of images or data relating to radiotherapy treatment; computer software for use with oncology treatment devices and for creating and facilitating oncology treatment plans; and Medical apparatus, namely, for confirming patients, settings and treatment plans; medical apparatus for the creation or transmission of images or data relating to radiotherapy; medical imaging apparatus for confirming patients, settings and treatment plans; electromedical systems and their components, all for diagnostic radiology and radiotherapy; medical apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; medical imaging apparatus incorporating medical imaging software that generates surface renderings of the patient.”

 

The registrant’s goods are “medical equipment, namely, optical detection devices for the screening and diagnosis of pre-cancerous and cancerous conditions”.

 

The applicant’s goods include software and apparatus for use with oncology treatment devices and that create and facilitate oncology treatment plans, apparatus for creation and transmission of images and data related to radiotherapy and systems for diagnostic radiology and radiotherapy, and generally used in treating oncology patients. The registrant’s goods are for screening and diagnosis of pre-cancerous and cancerous conditions.  The registrant’s and some of applicant’s goods are used for diagnostic purposes per the identification.  In addition, these goods are used by the same consumer and are in the same channels of trade, and thus related.  The attached information about optical scanners and radiology equipment indicates that the technology may be used together to diagnose and treat cancer and other conditions.  Thus, it appears that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and the goods are similar or complementary in terms of purpose or function.  Thus, applicant’s and registrant’s goods 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).

 

 

Given the nearly identical marks and the same/related goods, confusion as to source is likely and therefore, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.

 

 

Section 2(e)(1) – Descriptiveness Refusal 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

In this case, applicant seeks registration of “IDENTIFY” for “Contact free biometric scanners; contact free biometric apparatus to verify patient and treatment plan; computer hardware and software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for contact free biometric scanners; computer software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for medical imaging apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; computer software for use in radiation therapy treatment planning and radiation therapy treatment verification; computer software for use in authorization, administration and authentication of patient information over global computer networks; apparatus and software for recording, transmitting and reproducing sound and/or images; computer software for the creation or transmission of images or data relating to radiotherapy treatment; computer software for use with oncology treatment devices and for creating and facilitating oncology treatment plans; and Medical apparatus, namely, for confirming patients, settings and treatment plans; medical apparatus for the creation or transmission of images or data relating to radiotherapy; medical imaging apparatus for confirming patients, settings and treatment plans; electromedical systems and their components, all for diagnostic radiology and radiotherapy; medical apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; medical imaging apparatus incorporating medical imaging software that generates surface renderings of the patient.”

IDENTIFY means “to establish or recognize the identity of; ascertain as a certain person or thing”. Identify is synonymous with recognition.  See attached dictionary definitions.  The applicant goods are used for recognizing, authenticating or verifying the identity of a patient for the purpose of diagnosis and treatment of that individual.  In particular, the applicant’s biometric apparatus and goods incorporating a biometric function are used to identify a specific patient so that the apparatus can apply the correct treatment protocol. See attached definition of biometric.  Thus the proposed mark is descriptive of a feature of the applicant’s goods and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

Identification of Goods clarification

 

The goods identified in bold below are indefinite or vague, and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  The nature of the biometric apparatus has been clarified in Class 9, as well as the function of the software for the oncology treatment devices.  While the applicant indicated that the software is “used with” these devices, the wording does not identify the specific function of the software, e.g., operating software.  Additionally, the Class 10 medical apparatus must identify the medical purpose.  As written, the identified goods seem to be related to office management rather than as a medical device for treating a condition or illness.

 

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.

 

Applicant may adopt the following wording, if accurate: 

 

Class 9:

 

Contact free biometric scanners; contact free biometric apparatus to verify the identity of the patient and the corresponding treatment plan; computer hardware and software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for contact free biometric scanners; computer software for medical imaging apparatus, namely, for recognizing patients and setting and confirming treatment plans; computer software for medical imaging apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; computer software for use in radiation therapy treatment planning and radiation therapy treatment verification; computer software for use in authorization, administration and authentication of patient information over global computer networks; apparatus and software for recording, transmitting and reproducing sound and/or images; computer software for the creation or transmission of images or data relating to radiotherapy treatment; computer software for operating oncology treatment devices and for creating and facilitating oncology treatment plans

 

Class 10:

 

Computerized medical apparatus for treating {indicate specify condition} with predetermined treatment settings for the identified patient; medical radiotherapy apparatus for the creation or transmission of images or data; medical imaging apparatus incorporating functionality to identify patients and execute preset treatment plans; electromedical systems consisting of {identify the components of the system} for diagnostic radiology and radiotherapy; medical apparatus and instruments for setting-up and monitoring patient's position throughout treatment; electromagnetic medical diagnostic imaging apparatus that generates surface renderings of the patient; medical imaging apparatus incorporating medical imaging software that generates surface renderings of the patient.”

 

 

Applicant’s goods and/or services 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 and/or services or add goods and/or services 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 and/or services 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 and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

Prior Pending Application

 

The filing date of pending U.S. Application Serial No.  88121851 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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 mark in the referenced application.  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.

 

 

General Response Information

 

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.  

 

 

 

/Andrea P. Butler/

Trademark Attorney

Law Office 124

571-272-7491

andrea.butler@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/20/2019 FOR U.S. APPLICATION SERIAL NO. 88227227

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/20/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.