To: | All-Pro Orthopedics and Sports Medicine, ETC. (mjs@veraskiscim.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88296279 - ALL-PRO - N/A |
Sent: | 4/23/2019 5:52:08 PM |
Sent As: | ECOM127@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88296279
MARK: ALL-PRO
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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: All-Pro Orthopedics and Sports Medicine, ETC.
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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: 4/23/2019
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:
· Section 2(d) – Likelihood Of Confusion Refusal
· Entity Type Clarification
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL
Applicant’s mark is ALL-PRO (in standard character form) for “Orthopaedic surgery services; Orthopedic surgery services; Sports medicine services; Fitting of orthopaedic devices; Fitting of orthopedic devices; Medical services, namely, Orthopedic surgery” in Class 44.
Registrant’s mark is ALLPRO SPORTS TRAINING (in standard character form) for, in relevant part, “Physical therapy” in Class 44.
Introduction to Section 2(d) Analysis
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).
In this case, the following factors are most relevant: (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.
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).
In the present case, applicant’s mark is confusingly similar in sound, appearance, meaning, and overall commercial impression to registrant’s mark. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Specifically, the marks are highly similar in sound, appearance, and meaning because of the shared term “ALL-PRO / ALLPRO”.
Moreover, the additional wording in registrant’s mark does not obviate the similarities because this wording is descriptive of registrant’s services, and is disclaimed as such. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s 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). Accordingly, consumers will focus on the shared wording “ALL-PRO / ALLPRO” and perceive this as the dominant, source-identifying matter in the marks. Consequently, purchasers will likely be confused as to the source of the parties’ services because of the similarities between the marks.
For these reasons, the marks are confusingly similar.
Relatedness of the Goods and/or Services
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Here, the applicant’s “Orthopaedic surgery services; Orthopedic surgery services; Sports medicine services; Fitting of orthopaedic devices; Fitting of orthopedic devices; Medical services, namely, Orthopedic surgery” are closely related to the registrant’s “Physical therapy” because businesses that offer orthopedic services frequently offer physical therapy in the same channels of trade and under the same mark. See e.g., http://www.dcorthodocs.com/services and http://www.dcorthodocs.com/therapy; see also http://www.toc.md/areas-of-expertise/ and http://www.toc.md/physical-therapy/; http://www.riverviewmedicalcenter.com/RMC/services/OrthopedicsJointReplacement.cfm and http://www.riverviewmedicalcenter.com/RMC/services/riverviewrehabilitationcenter/index.cfm; http://www.umassmemorialhealthcare.org/umass-memorial-medical-center/services-treatments/orthopedics/services-we-provide and http://www.umassmemorialhealthcare.org/umass-memorial-medical-center/services-treatments/rehabilitation-therapy-services/services-we-provide/physical-therapy; http://www.thedacare.org/Health-Library-and-Conditions/Bone-Muscle-and-Joint-Pain/orthopedic-services/orthopedic-care.aspx and http://www.thedacare.org/Health-Library-and-Conditions/Bone-Muscle-and-Joint-Pain/orthopedic-services/therapy-services.aspx.
The attached evidence consisting of 5 websites establishes that services similar to the parties’ respective services frequently travel in the same channels of trade, and are offered to the same class of consumers in the same field of use. Additionally, the evidence demonstrates that consumers are accustomed to seeing businesses offer a wide variety of orthopedic care services all under the same mark. As a result, consumers encountering applicant’s and registrant’s respective services at the same time are likely to mistakenly presume the services originate from the same source because of the relationship between the services. Consequently, applicant’s and registrant’s respective services are closely related under the likelihood of confusion analysis.
Therefore, because the marks are confusingly similar and the services are closely related, the application is refused for a likelihood of confusion under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
ENTITY TYPE CLARIFICATION REQUIRED
The application identifies applicant as All-Pro Orthopedics and Sports Medicine, P.A., with “P.A.” referring to “professional association”. See http://info.legalzoom.com/pa-vs-llc-23145.html. However, the legal entity type is listed as “corporation”. Therefore, applicant must specify the particular type of legal entity applying, e.g., corporation, association, partnership, or joint venture, and provide the additional information explained below about that entity. See 37 C.F.R. §§2.32(a)(3)(ii)-(iv), 2.61(b); TMEP §803.03.
If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated. TMEP §803.03(c).
If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated. Id.
If applicant is a partnership, applicant must specify the U.S. state or foreign country under whose laws the partnership is organized. TMEP §803.03(b). In addition, for a U.S. partnership, applicant must list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners. Id. For foreign partnerships, the names and citizenships of the general partners are not required. See id.
If applicant is a joint venture, applicant must specify the U.S. state or foreign country under whose laws the joint venture is organized. Id. In addition, for a U.S. joint venture, applicant must list the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture. Id. For foreign joint ventures, the names and citizenships of the active members are not required. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
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.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action.
/Evonne M. Neptune/
Trademark Examining Attorney, Law Office 127
United States Patent and Trademark Office
(571) 270-1740
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.