UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88271548
MARK: STRUT
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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: Strut Health, LLC
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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: 4/5/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE CLASSES SPECIFIED THEREIN
Applicant has applied for the mark STRUT (in standard character form) for “Pharmaceutical preparations and substances for the treatment of viral, metabolic, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, psychiatric and immune system related diseases and disorders” in International Class 5; “Downloadable software, namely, mobile applications for use in connection with the collection, analysis, and sharing of personal medical data; mobile applications for use in obtaining prescription and over the counter medications and referrals to healthcare providers; Downloadable mobile applications featuring pricing information for prescription drugs and over the counter medications, for purchasing of prescription drugs and over the counter medications, and for providing information regarding health, prescription drugs and over the counter medications” in International Class 9; “Providing a website featuring non-downloadable publications in the nature of blogs, magazines, brochures, and articles in the fields of pharmaceuticals, medicine, healthcare, disease management, nutrition, diet, fitness, and personal health” in International Class 41; and “Providing on-line information services in the field of wellness, nutrition, weight loss and dieting; health care services, namely, wellness programs; providing a website featuring information on health, wellness and nutrition; healthcare in the nature of health maintenance organizations; providing long-term care facilities; providing a website featuring medical information” in International Class 44.
Please note that the stated refusal refers to “Providing a website featuring non-downloadable publications in the nature of blogs, magazines, brochures, and articles in the fields of pharmaceuticals, medicine, healthcare, disease management, nutrition, diet, fitness, and personal health” in International Class 41 and “Providing on-line information services in the field of wellness, nutrition, weight loss and dieting; health care services, namely, wellness programs; providing a website featuring information on health, wellness and nutrition; healthcare in the nature of health maintenance organizations; providing long-term care facilities; providing a website featuring medical information” in International Class 44 only and does not bar registration for the goods in International Classes 5 and 9.
Registrant’s mark is STRUT (in standard character form) for “Educational services, namely, conducting programs in the field of health and wellness; education services, namely, providing panel discussion in the fields of health and wellness” in International Class 41 and “Counseling services in the fields of mental health, wellness, and substance abuse; providing educational information in the fields of health and wellness, medical care, substance abuse, and mental health; charitable services, namely, providing health care services in the nature of addiction treatment, wellness programs and mental health counseling to drug users and the LGBT community; medical clinics; medical counseling; provision of healthcare and medical services; medical screening, diagnosis and treatment of HIV/AIDS; health care services, namely, providing health and wellness programs; medical health counseling; addiction treatment; providing information in the fields of health and wellness, medical care, substance abuse, substance abuse counseling and treatment, and mental health care and prevention, screening, diagnosis and treatment of HIV/AIDS; patient assistance program to provide medication free of charge to low-income patients without prescription drug coverage; drug testing for substance abuse; providing a website featuring information about medical care, health and wellness, substance abuse counseling and treatment, and mental health care and prevention, screening, diagnosis and treatment of HIV/AIDS; drug use screening and testing services” in International Class 44.
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 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 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 Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); 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).
In the present case, applicant’s mark is STRUT and registrant’s mark is STRUT. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective services. Id.
Therefore, the marks are confusingly similar.
Comparison of Services
The services are compared to determine whether they are similar, 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, 1207.01(a)(vi).
Since the marks are similar and the services are related, there is a likelihood of confusion as to the source of the services. Therefore, applicant’s mark is refused registration under Section 2(d) of the Trademark Act.
Partial Refusal Advisory – Section 2(d) Refusal
The stated refusal refers to the following services and does not bar registration for the other goods: “Providing a website featuring non-downloadable publications in the nature of blogs, magazines, brochures, and articles in the fields of pharmaceuticals, medicine, healthcare, disease management, nutrition, diet, fitness, and personal health” in International Class 41 and “Providing on-line information services in the field of wellness, nutrition, weight loss and dieting; health care services, namely, wellness programs; providing a website featuring information on health, wellness and nutrition; healthcare in the nature of health maintenance organizations; providing long-term care facilities; providing a website featuring medical information” in International Class 44.
(1) Deleting the services to which the refusal pertains; or
(2) Filing a request to divide out the goods 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).
AMENDED IDENTIFICATION OF GOODS AND SERVICES REQUIRED
The wording in the identification of goods and services must be clarified as indicated below. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
For example, the following are acceptable identifications for software in International Class 9: “desktop publishing software,” “downloadable software for word processing,” and “downloadable mobile applications for managing bank accounts.” Additionally, the following are acceptable identifications for software in International Class 42: “providing temporary use of on-line non-downloadable software development tools” and “providing temporary use of non-downloadable cloud-based software for calculating energy costs.” For assistance with software classification and identifications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.
Second, the identifications for “downloadable software, namely, mobile applications for use in connection with the collection, analysis, and sharing of personal medical data” and “mobile applications for use in obtaining prescription and over the counter medications and referrals to healthcare providers” are indefinite because the purpose or function of the software is not clear. For software goods and services, applicants must specify the purpose or function of the software, and if content- or field-specific, the content or field of use of the software. TMEP §1402.03(d). The USPTO requires such specificity in identifying computer software in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). In this case, the wording “use in connection with” and “use in” makes the identifications indefinite because it is not clear if the wording following these phrases are the function of the software or describe instances in which such software should be used.
Applicant may substitute the following wording, if accurate (suggested language in bold):
International Class 5: Pharmaceutical preparations and substances for the treatment of viral, metabolic, endocrine, musculoskeletal, cardiovascular, cardiopulmonary, genitourinary, sexual dysfunction, oncological, ophthalmic, respiratory, neurological, gastrointestinal, hormonal, dermatological, psychiatric and immune system related diseases and disorders
International Class 9: Downloadable software, namely, mobile applications for use in connection with the collection,
analysis, and sharing of personal medical data; downloadable mobile applications for use in obtaining prescription and over the counter medications and referrals to
healthcare providers; Downloadable mobile applications featuring pricing information for prescription drugs and over the counter medications, for purchasing of prescription drugs and over the counter
medications, and for providing information regarding health, prescription drugs and over the counter medications
International Class 41: Providing a website featuring non-downloadable publications in the nature of blogs, magazines, brochures, and articles in the fields of pharmaceuticals, medicine, healthcare, disease management, nutrition, diet, fitness, and personal health
International Class 42: Providing the online temporary use of non-downloadable mobile applications for obtaining prescription and over the counter medications and referrals to healthcare providers
International Class 44: Providing on-line information services in the field of wellness, nutrition, weight loss and dieting; health care services, namely, wellness programs; providing a website featuring information on health, wellness and nutrition; healthcare in the nature of health maintenance organizations; providing long-term care facilities; providing a website featuring medical information
Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods and services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and services may not later be reinserted. See 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and services that are classified in at least five (5) classes; however, applicant submitted fees sufficient for only four (4) classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
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.
/Pauline Ha/
Examining Attorney
Law Office 115
(571) 272-5005
pauline.ha@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.