| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
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| SERIAL NUMBER | 88312236 | |||||||||||||||||||||||||||||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 104 | |||||||||||||||||||||||||||||||||||||||||||||
| MARK SECTION | ||||||||||||||||||||||||||||||||||||||||||||||
| MARK | http://uspto.report/TM/88312236/mark.png | |||||||||||||||||||||||||||||||||||||||||||||
| LITERAL ELEMENT | HEALTHHUB | |||||||||||||||||||||||||||||||||||||||||||||
| STANDARD CHARACTERS | YES | |||||||||||||||||||||||||||||||||||||||||||||
| USPTO-GENERATED IMAGE | YES | |||||||||||||||||||||||||||||||||||||||||||||
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. | |||||||||||||||||||||||||||||||||||||||||||||
| ARGUMENT(S) | ||||||||||||||||||||||||||||||||||||||||||||||
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In response to the Office Action with a mailing date of April 25, 2019, please consider the following. The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the basis that a likelihood of confusion exists between Applicant's mark and the following registration:
In addition, the Examining Attorney has indicated that Applicant’s mark may be refused registration based upon a possible likelihood of confusion with the following pending application, if this application proceeds to registration:
With respect to the cited marks, Applicant disagrees that a likelihood of confusion exists between Applicant’s mark and the cited marks.
NO LIKELIHOOD OF CONFUSION EXISTS WITH U.S. REGISTRATION NO. 4786788 FOR INTERMOUNTAIN HEALTH HUB
With respect to the Cited Registration, after evaluating relevant Du Pont factors, there is no likelihood of confusion between Applicant's mark and the Cited Registration. See In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).
Before a review of the Du Pont factors is made, it is extremely relevant to the current analysis that Applicant owns the following two incontestable U.S. Registrations for the identical mark that is being sought for registration herein:
1. U.S. Reg. No. 3966998 for “HEALTHHUB” for the following (filed August 31, 2009, registered May 24, 2011). Class 35: Providing a web site containing information for employers in the area of business payroll preparation; Providing a web site containing information for employers in the area of, administration, billing and reconciliation of retiree accounts; Administration of business payroll for others; administration, billing and reconciliation of retiree accounts on behalf of others; on-line retail store services featuring medical apparatus and equipment, medicines, publications in the fields of health and wellness, exercise equipment and other health-related products eligible for FSA (Flexible Spending Account), HRA (Health Reimbursement Accounts), HSA (Health Savings Accounts) and other tax-advantaged account reimbursement programs; providing a web site featuring business information in the form of audio and video interviews, transcripts and other educational materials
Class 36: Administration of employee and retiree benefit plans concerning health, medical, dependent care, transit and parking; investment of funds for others; administration of health savings accounts, tax-advantaged accounts, COBRA (Consolidated Omnibus Budget Reconciliation Act) plans and cafeteria/flexible spending account reimbursement programs; providing credit and debit cards for employee benefit plans; consulting services in the field of employee and retiree benefit plans; financial analysis in the nature of performing employee discrimination testing for employee benefit plans; providing a web site containing information for employers, employees and retirees regarding employee and retiree benefit plans
Class 38: Transmission and streaming of voice, data, graphics, images, audio and video by means of telecommunication networks, wireless communication networks, and the Internet
2. U.S. Reg. No. 4388400 for “HEALTHHUB” for the following, filed Dec. 2, 2009 and registered August 20, 2013:
Class 44: Providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing a web site containing information for employers, employees, and retirees regarding health and wellness
Applicant’s prior registrations cover, among other services, the following:
Transmission and streaming of voice, data, graphics, images, audio and video by means of telecommunication networks, wireless communication networks, and the Internet; Providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing a web site containing information for employers, employees, and retirees regarding health and wellness.
The specific services in U.S. Reg. No. 4388400 of providing wellness services and providing a website with health and wellness information are in the identical field as the subject matter of the computer software in Applicant’s present application. Furthermore, the specific services in U.S. Reg. No. 3966998 of transmission of data via the Internet have the same function and use as the software in Applicant’s present application.
It is highly notable that the USPTO allowed the registration of the Cited Registration, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB, the Cited Registration covers “downloadable mobile applications” which operate by transmitting and streaming data over the Internet (covered by Applicant’s U.S. Reg. No. 3966998) and field of the mobile applications in the Cited Registration cover “health” related information (covered by Applicant’s U.S. Reg. No. 4388400).
Furthermore, an evaluation of the Du Pont factors supports a finding of no likelihood of confusion. Id., 476 F.2d at 1361.
The first Du Pont factor to consider is the differences in goods as described in the application and Cited Registration. In reviewing this factor of relatedness of the goods, it must be noted that the Trademark Trial and Appeal Board (“TTAB”) has rejected the “per se” approach that all computer goods are related. See In re Quadram Corp., 228 USPQ 863 (TTAB 1985). In In re Quadram, the TTAB recognized that “as a result of the veritable explosion of technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider realities in the marketplace.” Id. at 865. In addition, this position has been followed by a number of subsequent TTAB cases. “It is important to note that, in order to support a holding of likelihood of confusion, there must be some similarity between the goods and services at issue herein beyond the fact that each involves the use of computers. In view of the fact that computers are useful and/or are used in almost every facet of the world of business, commerce, medicine, law, etc., it is obvious that distinctions must be made.” Reynolds and Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1751 (TTAB 1987). See also Information Resources v. X*Press Info. Servs., 6 USPQ2d 1034 (TTAB 1988) (X*PRESS for a news service transmitted through cable television to a computer was found not likely to cause confusion with EXPRESS for specialized information analysis software) and Electronic Data Systems Corp. v. EDS A Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (TTAB 1992) (“[T]he fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks. . . . All computer software programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers”). Further, the TMEP states that “there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto.” TMEP § 1207.01(a)(iv). It is clear that the position of the TTAB is that a per se position that all computer software goods are related is too restrictive an approach. Furthermore, it is clear that the position of the TTAB is that a per se position that all computer software in the field of healthcare is related is too restrictive. Thus, the function and purpose of the goods listed in the present application the Cited Registration must be examined in detail. To that end, the goods in the present application and Cited Registration are different and distinguishable. Applicant’s goods are software programs that provide health and wellness information, health plan and health insurance information, and personal health assistant software. Just as Applicant’s prior U.S. Registration covers providing information in the field of health and wellness, Applicant’s current application is simply an extension of these services through the use of computer software. Applicant sells its computer software to those wanting general information to help a user learn about health and wellness subjects. On the other hand, the goods listed in the Cited Registration are not software programs that provide general health and wellness information. The mobile applications in the Cited Registration cover specific search functions about facilities, providers, wait times and check-in times, and the applications provide specific information about prescription medications and links to pharmacies, symptoms, medication, health care locations and outbreaks of diseases, as well as bill payment functions and e-cards for patients. The function of the software in the Cited Registration, sold under the mark INTERMOUNTAIN HEALTH HUB, is to assist users in getting specific medical care at the Intermountain Medical Centers.
The second Du Pont factor to consider is the differences in the marks. Clearly, the Cited Registration includes the house mark INTERMOUNTAIN, which references the hospital and health care facilities offered by the owner of the Cited Registration. See Exhibit 1 for another registration containing INTERMOUNTAIN owned by the owner of the Cited Registration for health care services. Consumers downloading the mobile app offered under the INTERMOUNTAIN HEALTH HUB mark will understand that the app is specific to the medical services offered by Intermountain, and provides wait times, facilities, medications and locations about Intermountain services.
On the other hand, Applicant’s mark does not include INTERMOUNTAIN. Consumers will not be confused that Applicant’s software comes from the owner of the Cited Registration because (1) Applicant already owns U.S. Registrations for the identical mark HEALTHHUB, for services that are in the field of health and wellness and data transmission; and (2) Applicant’s mark does not include INTERMOUNTAIN.. It follows that consumers will recognize that computer software with the same function and use as the services already registered and used by Applicant and will not be confused because Applicant’s prior registrations, as well as current application, do not include INTERMOUNTAIN.
In the Office Action, the Examining Attorney stated that “Applicant’s mark is likely to appear to prospective purchasers as a shorted form of Registrant’s mark,” even though “Applicant’s mark does not contain the entirety of the registered mark.” This is simply not a concern, because the USPTO allowed the registration of the Cited Registration despite the fact that it contains the entirety of Applicant’s prior U.S. Registrations for services in the fields of data transmission via the Internet and providing health and wellness information. Clearly, the USPTO did not consider the Cited Registration to be unregistrable because it contained the entirety of Applicant’s mark. Rather, the USPTO recognized in some situations, one party may own rights in a trademark without additional wording such as a house mark, and another party may own rights in the identical trademark with additional wording such as a house mark, for use in the same field. As is the case with HEALTHHUB, the USPTO has allowed the registration of, on the one hand, CARE CONNECT, for software in the field of healthcare, and, on the other hand, marks containing CARE CONNECT and another word or words, for software in the field of healthcare. This is shown below in Table 1. Just as CARECONNECT is registered by Texas Health Resources for software in the field of health records, the USPTO also allowed the registration, by different parties, of CHRONIC CARE CONNECT for software for collecting information for chronic diseases, MS CARE CONNECT for software for assisting those with autoimmune diseases, CLARIFY CARE CONNECT for software for monitoring of patient health, and CAROLINAS HEALTHCARE SYSTEM CARECONNECT for medical record software. See TSDRs attached as Exhibit 2 for the marks shown in Table 1. Similar to the situation with the mark CARE CONNECT, Applicant owns prior registrations for HEALTHHUB, which coexist with the Cited Registration and allowed cited application, in view of the differences in the marks and goods, and therefore Applicant’s current filing in Class 9 should also be able to coexist.
TABLE 1
Further, the Du Pont factor of the length of time during and conditions under which there has been concurrent use without evidence of actual confusion must be considered. As noted by the Court of Appeals for the Federal Circuit earlier this year in In re Guild Mortgage Co., 129 USPQ2d 1160 (Fed. Cir. 2019), “[Applicant] presented evidence of concurrent use of [Applicant’s mark and the cited registration] for a particularly long period of time —over 40 years —in which the two businesses operated in the same geographic market—southern California—without any evidence of actual confusion. . . . The Board erred in its analysis by failing to consider this evidence and argument as to factor 8. Because this evidence weighs in favor of no likelihood of confusion, we do not deem the Board’s error harmless.” Id.
In the present analysis, just as in In re Guild Mortgage, the two marks have coexisted in the marketplace for years without evidence of actual confusion of which the Applicant is aware. The first use date of Applicant’s mark was in August 2010, as shown in the prior registrations owned by Applicant. The first use date of the Cited Registration was February 14, 2014. As such, for 5 years, Applicant’s HEALTHHUB transmission of data over the Internet services and wellness and health information services have coexisted with Registrant’s INTERMOUNTAIN HEALTH HUB mobile apps without actual confusion of which Applicant is aware. This factor weighs heavily in favor of a finding of no confusion.
The final Du Pont factor to consider is the Applicant's senior right to exclude based on its prior registration for the same mark. As noted above, the USPTO allowed the registration of the Cited Registration, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB, the Cited Registration covers “downloadable mobile applications” which operate by transmitting and streaming data over the Internet (covered by Applicant’s U.S. Reg. No. 3966998) and field of the mobile applications in the Cited Registration cover “health” related information (covered by Applicant’s U.S. Reg. No. 4388400). In light of Applicant's senior rights in the mark and the allowance of the Cited Registration to be registered despite the existence of Applicant’s prior registrations, Applicant submits there is no likelihood of confusion with the Cited Registration.
In conclusion, a likelihood of confusion between Applicant’s mark and the Cited Registration does not exist.
NO LIKELIHOOD OF CONFUSION EXISTS WITH U.S. APP. NO. 88058502 FOR “LIVEHEALTH ONLINE HEALTH HUB”
With respect to the Cited Application, after evaluating relevant Du Pont factors, there is no likelihood of confusion between Applicant's mark and the Cited Application. See In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).
As noted above in the argument section pertaining to the Cited Registration, it is extremely relevant to the current analysis that Applicant owns the following two incontestable U.S. Registrations for the identical mark that is being sought for registration herein, specifically, U.S. Reg. Nos. 3966998 and 4388400, both for “HEALTHHUB”. The Cited Application covers “interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use by healthcare professionals and patients to communicate and consult via phone, online chat or videoconferencing, access patient medical records, and provide and obtain prescriptions and prescription renewals.” Applicant’s prior registrations cover, among other services,
Transmission and streaming of voice, data, graphics, images, audio and video by means of telecommunication networks, wireless communication networks, and the Internet
Providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing a web site containing information for employers, employees, and retirees regarding health and wellness
The specific services in U.S. Reg. No. 4388400 of providing wellness services and providing a website with health and wellness information are in the identical field as the subject matter of the computer software in Applicant’s present application. Furthermore, the specific services in U.S. Reg. No. 3966998 of transmission of data via the Internet have the same function and use as the computer software in Applicant’s present application.
It is highly notable that the USPTO passed the Cited Application to publication, and the Notice of Allowance issued, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB, and the Cited Application covers “interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use by healthcare professionals and patients to communicate and consult via phone, online chat or videoconferencing, access patient medical records, and provide and obtain prescriptions and prescription renewals” which operate by transmitting and streaming data over the Internet (covered by Applicant’s U.S. Reg. No. 3966998) and field of the mobile applications in the Cited Registration cover “health” related information (covered by Applicant’s U.S. Reg. No. 4388400).
Furthermore, an evaluation of the Du Pont factors supports a finding of no likelihood of confusion. Id., 476 F.2d at 1361.
The first Du Pont factor to consider is the differences in goods as described in the application and Cited Application. As noted above, a per se position that all computer hardware and software goods, even in the field of healthcare, is too restrictive. Thus, the function and purpose of the goods listed in the present application the Cited Application must be examined, and upon examination, these are very different and have very different functions and uses.
Applicant’s goods are software programs that provide health and wellness information, health plan and health insurance information, and personal health assistant software. Just as Applicant’s prior U.S. Registration covers providing information in the field of health and wellness, Applicant’s current application is simply an extension of these services through the use of computer software. Applicant offers its computer software to those wanting general information to help a user learn about health and wellness subjects.
On the other hand, the goods listed in the Cited Application are, first and foremost, interactive computer kiosks. The goods in the Cited Application cannot be used at home, cannot be used on a mobile device and in fact cannot be accessed unless the user is standing in front of the interactive computer kiosk itself. An interactive computer kiosk is likely similar to an ATM, in that a user has to travel to the specific place at which the kiosk is located, log into the kiosk, and spend time at the kiosk interacting with healthcare professionals. Consumers are not likely to be confused that the goods in the Cited Application come from the same source as the goods herein, as a user of the kiosk must have a relationship with the owner of the Cited Application in order to use the kiosk. It is similar to a user going up to an ATM, the user must make sure that the ATM is in the user’s network, or from the user’s bank, in order to access the ATM; the user of the kiosk in the Cited Application must make sure that the kiosk is in the user’s network in order to access the kiosk.
The second Du Pont factor to consider is the differences in the marks. The Cited Application includes the house mark LIVEHEALTH ONLINE, which references the online health services offered by the owner of the Cited Application. See Exhibit 3 for TSDR information regarding a registration for LIVEHEALTH ONLINE owned by the owner of the Cited Application for health care services. Consumers visiting the LIVEHEALTH ONLINE HEALTH HUB kiosk will understand that the kiosk is specific to the medical services offered under LIVEHEALTH ONLINE, and the user of the kiosk must have a membership or relationship with LIVEHEALTH ONLINE in order to use the kiosk.
On the other hand, Applicant’s mark does not include LIVEHEALTH ONLINE. Consumers will not be confused that Applicant’s software comes from the owner of the Cited Application because (1) Applicant already owns U.S. Registrations for the identical mark HEALTHHUB, for services that are in the field of health and wellness and data transmission; and (2) Applicant’s mark does not include LIVEHEALTH ONLINE. It follows that consumers will recognize that computer software with the same function and use as the services already registered and used by Applicant; and not be confused because Applicant’s prior registrations, as well as current application, do not include LIVEHEALTH ONLINE.
The final Du Pont factor to consider is the Applicant's senior right to exclude based on its prior registrations for the same mark. As noted above, the USPTO passed the Cited Application to allowance, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB. In light of Applicant's senior right in the mark, Applicant submits there is no likelihood of confusion with the Cited Application.
In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal to registration under Trademark Act Section 2(d), and pass the mark to publication. |
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| EVIDENCE SECTION | ||||||||||||||||||||||||||||||||||||||||||||||
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| ORIGINAL PDF FILE | evi_5023923450-20191023181322357218_._Exhibit_1.pdf | |||||||||||||||||||||||||||||||||||||||||||||
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| DESCRIPTION OF EVIDENCE FILE | Exhibits cited in response | |||||||||||||||||||||||||||||||||||||||||||||
| SIGNATURE SECTION | ||||||||||||||||||||||||||||||||||||||||||||||
| RESPONSE SIGNATURE | /miriam trudell/ | |||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S NAME | Miriam D. Trudell | |||||||||||||||||||||||||||||||||||||||||||||
| SIGNATORY'S POSITION | Attorney of record, Colorado bar member | |||||||||||||||||||||||||||||||||||||||||||||
| DATE SIGNED | 10/23/2019 | |||||||||||||||||||||||||||||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | |||||||||||||||||||||||||||||||||||||||||||||
| FILING INFORMATION SECTION | ||||||||||||||||||||||||||||||||||||||||||||||
| SUBMIT DATE | Wed Oct 23 18:18:59 EDT 2019 | |||||||||||||||||||||||||||||||||||||||||||||
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XX-2 0191023181859954864-88312 236-610f092df4d6f25dd5562 87ff93745b8ed76fc22588aac dfd8896ed7c945d1f7-N/A-N/ A-20191023181322357218 |
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| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
In response to the Office Action with a mailing date of April 25, 2019, please consider the following. The Examining Attorney has refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), on the basis that a likelihood of confusion exists between Applicant's mark and the following registration:
U.S. Reg. No. 4786788 for INTERMOUNTAIN HEALTH HUB for “downloadable mobile application in the field of healthcare for searching healthcare facilities, healthcare providers and estimated wait times, and the ability to check-in; Downloadable mobile application in the field of healthcare to access information, namely, prescription medications and links to pharmacies, symptoms of illness, treatments, medication dosage tables, recommendations for medical care and links to medical providers and locations, outbreaks of germs and diseases in a geographic area and diagnosis and treatment, first aid, personal health information and bill payment; downloadable mobile applications in the field of healthcare for sending e-cards to patients,” in Class 9 owned by IHC Health Services, Inc. (“Cited Registration”).
In addition, the Examining Attorney has indicated that Applicant’s mark may be refused registration based upon a possible likelihood of confusion with the following pending application, if this application proceeds to registration:
U.S. App. No. 88058502 for “LIVEHEALTH ONLINE HEALTH HUB” for “interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use by healthcare professionals and patients to communicate and consult via phone, online chat or videoconferencing, access patient medical records, and provide and obtain prescriptions and prescription renewals,” in Class 9, owned by Anthem, Inc. (“Cited Application”)
With respect to the cited marks, Applicant disagrees that a likelihood of confusion exists between Applicant’s mark and the cited marks.
NO LIKELIHOOD OF CONFUSION EXISTS WITH U.S. REGISTRATION NO. 4786788 FOR INTERMOUNTAIN HEALTH HUB
With respect to the Cited Registration, after evaluating relevant Du Pont factors, there is no likelihood of confusion between Applicant's mark and the Cited Registration. See In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).
Before a review of the Du Pont factors is made, it is extremely relevant to the current analysis that Applicant owns the following two incontestable U.S. Registrations for the identical mark that is being sought for registration herein:
1. U.S. Reg. No. 3966998 for “HEALTHHUB” for the following (filed August 31, 2009, registered May 24, 2011).
Class 35: Providing a web site containing information for employers in the area of business payroll preparation; Providing a web site containing information for employers in the area of, administration, billing and reconciliation of retiree accounts; Administration of business payroll for others; administration, billing and reconciliation of retiree accounts on behalf of others; on-line retail store services featuring medical apparatus and equipment, medicines, publications in the fields of health and wellness, exercise equipment and other health-related products eligible for FSA (Flexible Spending Account), HRA (Health Reimbursement Accounts), HSA (Health Savings Accounts) and other tax-advantaged account reimbursement programs; providing a web site featuring business information in the form of audio and video interviews, transcripts and other educational materials
Class 36: Administration of employee and retiree benefit plans concerning health, medical, dependent care, transit and parking; investment of funds for others; administration of health savings accounts, tax-advantaged accounts, COBRA (Consolidated Omnibus Budget Reconciliation Act) plans and cafeteria/flexible spending account reimbursement programs; providing credit and debit cards for employee benefit plans; consulting services in the field of employee and retiree benefit plans; financial analysis in the nature of performing employee discrimination testing for employee benefit plans; providing a web site containing information for employers, employees and retirees regarding employee and retiree benefit plans
Class 38: Transmission and streaming of voice, data, graphics, images, audio and video by means of telecommunication networks, wireless communication networks, and the Internet
2. U.S. Reg. No. 4388400 for “HEALTHHUB” for the following, filed Dec. 2, 2009 and registered August 20, 2013:
Class 44: Providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing a web site containing information for employers, employees, and retirees regarding health and wellness
Applicant’s prior registrations cover, among other services, the following:
Transmission and streaming of voice, data, graphics, images, audio and video by means of telecommunication networks, wireless communication networks, and the Internet; Providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing a web site containing information for employers, employees, and retirees regarding health and wellness.
The specific services in U.S. Reg. No. 4388400 of providing wellness services and providing a website with health and wellness information are in the identical field as the subject matter of the computer software in Applicant’s present application. Furthermore, the specific services in U.S. Reg. No. 3966998 of transmission of data via the Internet have the same function and use as the software in Applicant’s present application.
It is highly notable that the USPTO allowed the registration of the Cited Registration, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB, the Cited Registration covers “downloadable mobile applications” which operate by transmitting and streaming data over the Internet (covered by Applicant’s U.S. Reg. No. 3966998) and field of the mobile applications in the Cited Registration cover “health” related information (covered by Applicant’s U.S. Reg. No. 4388400).
Furthermore, an evaluation of the Du Pont factors supports a finding of no likelihood of confusion. Id., 476 F.2d at 1361.
The first Du Pont factor to consider is the differences in goods as described in the application and Cited Registration. In reviewing this factor of relatedness of the goods, it must be noted that the Trademark Trial and Appeal Board (“TTAB”) has rejected the “per se” approach that all computer goods are related. See In re Quadram Corp., 228 USPQ 863 (TTAB 1985). In In re Quadram, the TTAB recognized that “as a result of the veritable explosion of technology in the computer field over the last several years and the almost limitless number of specialized products and specialized uses in this industry, we think that a per se rule relating to source confusion vis-a-vis computer hardware and software is simply too rigid and restrictive an approach and fails to consider realities in the marketplace.” Id. at 865. In addition, this position has been followed by a number of subsequent TTAB cases. “It is important to note that, in order to support a holding of likelihood of confusion, there must be some similarity between the goods and services at issue herein beyond the fact that each involves the use of computers. In view of the fact that computers are useful and/or are used in almost every facet of the world of business, commerce, medicine, law, etc., it is obvious that distinctions must be made.” Reynolds and Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d 1749, 1751 (TTAB 1987). See also Information Resources v. X*Press Info. Servs., 6 USPQ2d 1034 (TTAB 1988) (X*PRESS for a news service transmitted through cable television to a computer was found not likely to cause confusion with EXPRESS for specialized information analysis software) and Electronic Data Systems Corp. v. EDS A Micro Corp., 23 U.S.P.Q.2d 1460, 1463 (TTAB 1992) (“[T]he fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks. . . . All computer software programs process data, but it does not necessarily follow that all computer programs are related. Given the ubiquitous use of computers in all aspects of business in the United States today, this Board and its reviewing Court have rejected the view that a relationship exists between goods and services simply because each involves the use of computers”). Further, the TMEP states that “there can be no rule that certain goods or services are per se related, such that there must be a likelihood of confusion from the use of similar marks in relation thereto.” TMEP § 1207.01(a)(iv).
It is clear that the position of the TTAB is that a per se position that all computer software goods are related is too restrictive an approach. Furthermore, it is clear that the position of the TTAB is that a per se position that all computer software in the field of healthcare is related is too restrictive. Thus, the function and purpose of the goods listed in the present application the Cited Registration must be examined in detail. To that end, the goods in the present application and Cited Registration are different and distinguishable.
Applicant’s goods are software programs that provide health and wellness information, health plan and health insurance information, and personal health assistant software. Just as Applicant’s prior U.S. Registration covers providing information in the field of health and wellness, Applicant’s current application is simply an extension of these services through the use of computer software. Applicant sells its computer software to those wanting general information to help a user learn about health and wellness subjects.
On the other hand, the goods listed in the Cited Registration are not software programs that provide general health and wellness information. The mobile applications in the Cited Registration cover specific search functions about facilities, providers, wait times and check-in times, and the applications provide specific information about prescription medications and links to pharmacies, symptoms, medication, health care locations and outbreaks of diseases, as well as bill payment functions and e-cards for patients. The function of the software in the Cited Registration, sold under the mark INTERMOUNTAIN HEALTH HUB, is to assist users in getting specific medical care at the Intermountain Medical Centers.
The second Du Pont factor to consider is the differences in the marks. Clearly, the Cited Registration includes the house mark INTERMOUNTAIN, which references the hospital and health care facilities offered by the owner of the Cited Registration. See Exhibit 1 for another registration containing INTERMOUNTAIN owned by the owner of the Cited Registration for health care services. Consumers downloading the mobile app offered under the INTERMOUNTAIN HEALTH HUB mark will understand that the app is specific to the medical services offered by Intermountain, and provides wait times, facilities, medications and locations about Intermountain services.
On the other hand, Applicant’s mark does not include INTERMOUNTAIN. Consumers will not be confused that Applicant’s software comes from the owner of the Cited Registration because (1) Applicant already owns U.S. Registrations for the identical mark HEALTHHUB, for services that are in the field of health and wellness and data transmission; and (2) Applicant’s mark does not include INTERMOUNTAIN.. It follows that consumers will recognize that computer software with the same function and use as the services already registered and used by Applicant and will not be confused because Applicant’s prior registrations, as well as current application, do not include INTERMOUNTAIN.
In the Office Action, the Examining Attorney stated that “Applicant’s mark is likely to appear to prospective purchasers as a shorted form of Registrant’s mark,” even though “Applicant’s mark does not contain the entirety of the registered mark.” This is simply not a concern, because the USPTO allowed the registration of the Cited Registration despite the fact that it contains the entirety of Applicant’s prior U.S. Registrations for services in the fields of data transmission via the Internet and providing health and wellness information. Clearly, the USPTO did not consider the Cited Registration to be unregistrable because it contained the entirety of Applicant’s mark. Rather, the USPTO recognized in some situations, one party may own rights in a trademark without additional wording such as a house mark, and another party may own rights in the identical trademark with additional wording such as a house mark, for use in the same field. As is the case with HEALTHHUB, the USPTO has allowed the registration of, on the one hand, CARE CONNECT, for software in the field of healthcare, and, on the other hand, marks containing CARE CONNECT and another word or words, for software in the field of healthcare. This is shown below in Table 1. Just as CARECONNECT is registered by Texas Health Resources for software in the field of health records, the USPTO also allowed the registration, by different parties, of CHRONIC CARE CONNECT for software for collecting information for chronic diseases, MS CARE CONNECT for software for assisting those with autoimmune diseases, CLARIFY CARE CONNECT for software for monitoring of patient health, and CAROLINAS HEALTHCARE SYSTEM CARECONNECT for medical record software. See TSDRs attached as Exhibit 2 for the marks shown in Table 1. Similar to the situation with the mark CARE CONNECT, Applicant owns prior registrations for HEALTHHUB, which coexist with the Cited Registration and allowed cited application, in view of the differences in the marks and goods, and therefore Applicant’s current filing in Class 9 should also be able to coexist.
TABLE 1
|
Citation |
Application Number |
Application Date |
Owner Name |
Goods and Services |
|
CARECONNECT
|
App 76696078 Reg 4577881 |
App 02-MAR-2009 Reg 05-AUG-2014 |
TEXAS HEALTH RESOURCES |
INT. CL. 9 COMPUTER SOFTWARE FOR THE COLLECTION, EDITING, ORGANIZING, MODIFYING, BOOK MARKING, TRANSMISSION, STORAGE AND SHARING OF HEALTH RECORDS FOR A DEFINED NETWORK OF HOSPITALS AND CLINICS, INCLUDING PATIENTS WITHIN SUCH DEFINED NETWORK OF HOSPITALS AND CLINICS WHO ARE PROVIDED MEDICAL CARE AT THEIR HOME, NOT FOR USE WITH HOME HEALTHCARE SERVICES INT. CL. 35 ELECTRONIC HEALTH RECORDS MANAGEMENT SERVICES, NAMELY, DOCUMENT INDEXING FOR OTHERS FOR A DEFINED NETWORK OF HOSPITALS AND CLINICS, INCLUDING PATIENTS WITHIN SUCH DEFINED NETWORK OF HOSPITALS AND CLINICS WHO ARE PROVIDED MEDICAL CARE AT THEIR HOME, NOT FOR USE WITH HOME HEALTHCARE SERVICES INT. CL. 39 ELECTRONIC STORAGE OF HEALTH RECORDS FOR A DEFINED NETWORK OF HOSPITALS AND CLINICS, INCLUDING PATIENTS WITHIN SUCH DEFINED NETWORK OF HOSPITALS AND CLINICS WHO ARE PROVIDED MEDICAL CARE AT THEIR HOME, NOT FOR USE WITH HOME HEALTHCARE SERVICES INT. CL. 42 COMPUTER SERVICE, NAMELY, ACTING AS AN APPLICATION SERVICE PROVIDER IN THE FIELD OF KNOWLEDGE MANAGEMENT TO HOST COMPUTER APPLICATION SOFTWARE FOR THE COLLECTION, EDITING ORGANIZING, MODIFYING, BOOK MARKING, TRANSMISSION, STORAGE AND SHARING OF HEALTH RECORDS FOR A DEFINED NETWORK OF HOSPITALS AND CLINICS, INCLUDING PATIENTS WITHIN SUCH DEFINED NETWORK OF HOSPITALS AND CLINICS WHO ARE PROVIDED MEDICAL CARE AT THEIR HOME, NOT FOR USE WITH HOME HEALTHCARE SERVICES
|
|
CHRONIC CARE CONNECT |
App 79235878 Reg 5784155 |
App 06-MAR-2018 Reg 25-JUN-2019 |
AIR LIQUIDE SANTE (INTERNATIONAL) (France) |
INT. CL. 9 MEDICAL SOFTWARE, IN PARTICULAR, FOR THE COLLECTION, RECORDING, TRANSMISSION, ANALYSIS, MONITORING, REMOTE MONITORING AND TREATMENT OF PERSONS SUFFERING FROM CHRONIC DISEASES INT. CL. 10 MEDICAL APPARATUS FOR THE COLLECTION, RECORDING, TRANSMISSION, ANALYSIS, MONITORING, REMOTE MONITORING AND TREATMENT OF PERSONS SUFFERING FROM CHRONIC DISEASES ; APPARATUS FOR THE CONTROL AND MONITORING OF HEALTH, IN PARTICULAR, APPARATUS FOR MEASURING BLOOD PRESSURE; THERMOMETERS FOR MEDICAL PURPOSES; CALORIMETER, NAMELY, AN APPARATUS FOR MEASURING AND MONITORING THE CALORIC CONSUMPTION AND EXPENDITURE; BLOOD GLUCOSE METER, NAMELY, AN APPARATUS FOR MONITORING AND MEASURING BLOOD GLUCOSE LEVELS; PULSE OXIMETER, NAMELY, AN APPARATUS FOR MEASURING AND MONITORING BLOOD OXYGEN SATURATION INT. CL. 38 PROVIDING ACCESS TO A PORTAL FOR MEDICAL USE, IN PARTICULAR, INFORMATION, ADVICE, FOLLOW-UP AND TREATMENT OF PEOPLE SUFFERING FROM CHRONIC DISEASES INT. CL. 44 REMOTE MEDICAL SERVICES, IN PARTICULAR, CONSULTANCY AND FOLLOW-UP TREATMENT SERVICES FOR PEOPLE SUFFERING FROM CHRONIC DISEASES |
|
MS CARE CONNECT
|
App 86969496 Reg 5571029 |
App 08-APR-2016 Reg 25-SEP-2018 |
INTERPRO BIOSCIENCE, INC. |
INT. CL. 9 COMPUTER APPLICATION SOFTWARE FOR MOBILE PHONES AND HANDHELD COMPUTERS, NAMELY, SOFTWARE FOR PROVIDING ANALYSIS AND DATA ANALYTICS OF PATIENT REPORTED OUTCOMES RELATING TO PHARMACEUTICAL COMPOUNDS AND PROVIDING HEALTH AND WELLNESS INFORMATION REGARDING AUTOIMMUNE DISEASES
|
|
CLARIFY CARE CONNECT
|
App 86926900 Reg 5210442 |
App 02-MAR-2016 Reg 23-MAY-2017 |
CLARIFY HEALTH SOLUTIONS, INC. |
INT. CL. 9 COMPUTER APPLICATION SOFTWARE FOR MOBILE PHONES AND COMPUTER TABLETS, NAMELY, SOFTWARE FOR REAL-TIME MONITORING OF PATIENT HEALTH CONDITIONS RELATIVE TO TREATMENT PLAN THAT ENABLES CLINICIANS TO INTERVENE IN TREATMENT PLAN AS REQUIRED INT. CL. 42 SOFTWARE AS A SERVICE (SAAS) SERVICES FEATURING SOFTWARE FOR REAL-TIME MONITORING OF PATIENT HEALTH CONDITIONS RELATIVE TO TREATMENT PLAN THAT ENABLES CLINICIANS TO INTERVENE IN TREATMENT PLAN AS REQUIRED
|
|
SPOK CARECONNECT
|
App 86374953 Reg 5346585 |
App 22-AUG-2014 Reg 28-NOV-2017 |
SPOK INC. |
INT. CL. 9 DOWNLOADABLE COMPUTER SOFTWARE PLATFORM THAT ALLOWS DELIVERY OF ELECTRONIC MESSAGES OF ALL TYPES TO ELECTRONIC DEVICES SUCH AS SMARTPHONES, PAGERS OR WIRELESS IP PHONES
|
|
CAROLINAS HEALTHCARE SYSTEM CARECONNECT |
App 86149972 Reg 4923252 |
App 20-DEC-2013 Reg 22-MAR-2016 |
THE CHARLOTTE-MECKLENBURG HOSPITAL AUTHORITY |
INT. CL. 38 PROVIDING ACCESS TO AN ELECTRONIC EXCHANGE OF MEDICAL RECORDS ACROSS A HEALTH INFORMATION NETWORK INT. CL. 42 PROVIDING TEMPORARY USE OF ONLINE NON-DOWNLOADABLE SOFTWARE FOR THE EXCHANGE OF HEALTH INFORMATION; PROVIDING TEMPORARY USE OF NON-DOWNLOADABLE HEALTH INFORMATION EXCHANGE SOFTWARE INT. CL. 44 ELECTRONIC MEDICAL RECORDS MANAGEMENT, NAMELY, MAINTAINING PATIENT MEDICAL RECORDS AND FILES THAT MAY BE ACCESSED USING A GLOBAL COMPUTER NETWORK
|
|
DIRECT CARE CONNECT DCC
|
App 85525212 Reg 4221069 |
App 25-JAN-2012 Reg 09-OCT-2012 |
POLTYS, INC. |
INT. CL. 9 COMPUTER SOFTWARE FOR THE FIELD OF COMMUNICATIONS FOR ASSISTED LIVING FACILITIES AND NURSING HOMES
|
|
EYECARECONNECT
|
App 78027843 Reg 2619002 |
App 27-SEP-2000 Reg 10-SEP-2002 |
US VISIONCARE, L.L.C. |
INT. CL. 9 COMPUTER SOFTWARE, NAMELY, FOR USE IN DATABASE MANAGEMENT RELATED TO PRACTICE MANAGEMENT AND OFFICE FINANCIAL RECORDKEEPING IN THE VISION CARE FIELD
|
Further, the Du Pont factor of the length of time during and conditions under which there has been concurrent use without evidence of actual confusion must be considered. As noted by the Court of Appeals for the Federal Circuit earlier this year in In re Guild Mortgage Co., 129 USPQ2d 1160 (Fed. Cir. 2019), “[Applicant] presented evidence of concurrent use of [Applicant’s mark and the cited registration] for a particularly long period of time —over 40 years —in which the two businesses operated in the same geographic market—southern California—without any evidence of actual confusion. . . . The Board erred in its analysis by failing to consider this evidence and argument as to factor 8. Because this evidence weighs in favor of no likelihood of confusion, we do not deem the Board’s error harmless.” Id.
In the present analysis, just as in In re Guild Mortgage, the two marks have coexisted in the marketplace for years without evidence of actual confusion of which the Applicant is aware. The first use date of Applicant’s mark was in August 2010, as shown in the prior registrations owned by Applicant. The first use date of the Cited Registration was February 14, 2014. As such, for 5 years, Applicant’s HEALTHHUB transmission of data over the Internet services and wellness and health information services have coexisted with Registrant’s INTERMOUNTAIN HEALTH HUB mobile apps without actual confusion of which Applicant is aware. This factor weighs heavily in favor of a finding of no confusion.
The final Du Pont factor to consider is the Applicant's senior right to exclude based on its prior registration for the same mark. As noted above, the USPTO allowed the registration of the Cited Registration, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB, the Cited Registration covers “downloadable mobile applications” which operate by transmitting and streaming data over the Internet (covered by Applicant’s U.S. Reg. No. 3966998) and field of the mobile applications in the Cited Registration cover “health” related information (covered by Applicant’s U.S. Reg. No. 4388400). In light of Applicant's senior rights in the mark and the allowance of the Cited Registration to be registered despite the existence of Applicant’s prior registrations, Applicant submits there is no likelihood of confusion with the Cited Registration.
In conclusion, a likelihood of confusion between Applicant’s mark and the Cited Registration does not exist.
NO LIKELIHOOD OF CONFUSION EXISTS WITH U.S. APP. NO. 88058502 FOR “LIVEHEALTH ONLINE HEALTH HUB”
With respect to the Cited Application, after evaluating relevant Du Pont factors, there is no likelihood of confusion between Applicant's mark and the Cited Application. See In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973).
As noted above in the argument section pertaining to the Cited Registration, it is extremely relevant to the current analysis that Applicant owns the following two incontestable U.S. Registrations for the identical mark that is being sought for registration herein, specifically, U.S. Reg. Nos. 3966998 and 4388400, both for “HEALTHHUB”. The Cited Application covers “interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use by healthcare professionals and patients to communicate and consult via phone, online chat or videoconferencing, access patient medical records, and provide and obtain prescriptions and prescription renewals.” Applicant’s prior registrations cover, among other services,
Transmission and streaming of voice, data, graphics, images, audio and video by means of telecommunication networks, wireless communication networks, and the Internet
Providing wellness services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; providing a web site containing information for employers, employees, and retirees regarding health and wellness
The specific services in U.S. Reg. No. 4388400 of providing wellness services and providing a website with health and wellness information are in the identical field as the subject matter of the computer software in Applicant’s present application. Furthermore, the specific services in U.S. Reg. No. 3966998 of transmission of data via the Internet have the same function and use as the computer software in Applicant’s present application.
It is highly notable that the USPTO passed the Cited Application to publication, and the Notice of Allowance issued, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB, and the Cited Application covers “interactive computer kiosks comprising computers, computer hardware, computer peripherals, and computer operating software, for use by healthcare professionals and patients to communicate and consult via phone, online chat or videoconferencing, access patient medical records, and provide and obtain prescriptions and prescription renewals” which operate by transmitting and streaming data over the Internet (covered by Applicant’s U.S. Reg. No. 3966998) and field of the mobile applications in the Cited Registration cover “health” related information (covered by Applicant’s U.S. Reg. No. 4388400).
Furthermore, an evaluation of the Du Pont factors supports a finding of no likelihood of confusion. Id., 476 F.2d at 1361.
The first Du Pont factor to consider is the differences in goods as described in the application and Cited Application. As noted above, a per se position that all computer hardware and software goods, even in the field of healthcare, is too restrictive. Thus, the function and purpose of the goods listed in the present application the Cited Application must be examined, and upon examination, these are very different and have very different functions and uses.
Applicant’s goods are software programs that provide health and wellness information, health plan and health insurance information, and personal health assistant software. Just as Applicant’s prior U.S. Registration covers providing information in the field of health and wellness, Applicant’s current application is simply an extension of these services through the use of computer software. Applicant offers its computer software to those wanting general information to help a user learn about health and wellness subjects.
On the other hand, the goods listed in the Cited Application are, first and foremost, interactive computer kiosks. The goods in the Cited Application cannot be used at home, cannot be used on a mobile device and in fact cannot be accessed unless the user is standing in front of the interactive computer kiosk itself. An interactive computer kiosk is likely similar to an ATM, in that a user has to travel to the specific place at which the kiosk is located, log into the kiosk, and spend time at the kiosk interacting with healthcare professionals. Consumers are not likely to be confused that the goods in the Cited Application come from the same source as the goods herein, as a user of the kiosk must have a relationship with the owner of the Cited Application in order to use the kiosk. It is similar to a user going up to an ATM, the user must make sure that the ATM is in the user’s network, or from the user’s bank, in order to access the ATM; the user of the kiosk in the Cited Application must make sure that the kiosk is in the user’s network in order to access the kiosk.
The second Du Pont factor to consider is the differences in the marks. The Cited Application includes the house mark LIVEHEALTH ONLINE, which references the online health services offered by the owner of the Cited Application. See Exhibit 3 for TSDR information regarding a registration for LIVEHEALTH ONLINE owned by the owner of the Cited Application for health care services. Consumers visiting the LIVEHEALTH ONLINE HEALTH HUB kiosk will understand that the kiosk is specific to the medical services offered under LIVEHEALTH ONLINE, and the user of the kiosk must have a membership or relationship with LIVEHEALTH ONLINE in order to use the kiosk.
On the other hand, Applicant’s mark does not include LIVEHEALTH ONLINE. Consumers will not be confused that Applicant’s software comes from the owner of the Cited Application because (1) Applicant already owns U.S. Registrations for the identical mark HEALTHHUB, for services that are in the field of health and wellness and data transmission; and (2) Applicant’s mark does not include LIVEHEALTH ONLINE. It follows that consumers will recognize that computer software with the same function and use as the services already registered and used by Applicant; and not be confused because Applicant’s prior registrations, as well as current application, do not include LIVEHEALTH ONLINE.
The final Du Pont factor to consider is the Applicant's senior right to exclude based on its prior registrations for the same mark. As noted above, the USPTO passed the Cited Application to allowance, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB. In light of Applicant's senior right in the mark, Applicant submits there is no likelihood of confusion with the Cited Application.
In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal to registration under Trademark Act Section 2(d), and pass the mark to publication.
