Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88320440 HEALTHHUB (Stylized and/or with Design, see http://uspto.report/TM/88320440/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

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 two registrations (collectively referred to herein as “Cited Registrations”):

• U.S. Reg. No. 5272808 for BRIGHAM HEALTH HUB for ‘Health care; Hospital services; Internet-based health care information services; Medical information,” in Class 44, owned by The Brigham and Women’s Hospital, Inc. (“Brigham Registration”)

• U.S. Reg. No. 5701325 for ADVANTIA HEALTH A WOMAN'S HEALTH HUB for “Medical clinic services,” in Class 44, owned by Maryland’s Physicians Edge, dba Advantia (“Advantia 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 applications, if these applications proceed to registration:

• U.S. App. No. 87854872 for “BAYCARE HEALTHHUB” for “Retail store services featuring health, wellness, nutrition, and medical care goods; Retail store services featuring health and medical diagnostic equipment,” in Class 35; and “Healthcare services; hospital services; health care services provided in retail stores, namely, providing blood pressure screenings and information on heart health; provision of health care and medical services by health care professionals via the Internet or telecommunication networks to customers in retail stores; rental of health diagnostic equipment provided in retail stores; nutrition counseling; providing information about health, wellness, and nutrition, excluding information for employers, employees, and retirees; providing educational information about health, wellness, and nutrition, excluding information for employers, employees, and retirees,” in Class 44, owned by BayCare Health System, Inc.

• U.S. App. No. 88268824 for VIVALIFE HEALTH HUB for “wellness and health-related consulting services,” in Class 44, owned by Kelly Elmore.

   

With respect to the cited applications, Applicant disagrees with the potential likelihood of confusion refusal, but requests suspension of the present application pending the registration or abandonment of the two cited applications.

 

With respect to the Cited Registrations, 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 has a prior registration in Class 44, the identical class being sought for registration herein:   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.

 

It is highly notable that the USPTO allowed the registration of the Cited Registrations that contain the phrase “HEALTHHUB” for Class 44 services, even though Applicant’s prior U.S. Registration No. 4388400 is for the word HEALTHHUB and is registered in Class 44 for providing health and wellness services. 

 

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 the marks.  Clearly, the Cited Registrations each include their respective house marks:  The Brigham Registration includes the word BRIGHAM.   See Exhibit 1 for another registration containing BRIGHAM owned by the owner of the Brigham Registration for health care services.  The Advantia Registration includes the word ADVANTIA.   See Exhibit 2 for another registration containing ADVANTIA owned by the owner of the Cited Registration for health care services. 

 

Consumers visiting the Brigham Health Hub for medical services are going to recognize that the services come from The Brigham and Women’s Hospital, in view of the use of BRIGHAM in the trademark.  Similarly, consumers vising the Advantia Health A Women’s Health Hub clinic are going to know they are visiting a Advantia clinic, in view of the use of Advantia in the trademark. 

 

On the other hand, Applicant’s mark does not include BRIGHAM or ADVANTIA.  Consumers will not be confused that Applicant’s medical services come from the owner of the Cited Registrations because (1) Applicant already owns U.S. Registrations for the identical mark HEALTHHUB, including one in Class 44 for health related services; and (2) Applicant’s mark does not include a house mark such as BRIGHAM or ADVANTIA.  It follows that consumers will recognize HEALTHHUB Applicant’s healthcare services, which are highly related to 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 BRIGHAM or ADVANTIA. 

 

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 marks.”  This is simply not a concern, because the USPTO allowed the registration of the Cited Registrations despite the fact that they contain the entirety of Applicant’s prior U.S. Registrations for health related services in Class 44.  Clearly, the USPTO did not consider the Cited Registrations to be unregistrable because they 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 other parties 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 CONNECTION, for health care services in Class 44, and, on the other hand, marks containing CARE CONNECTION and another word or words, also for health care services.  This is shown below in Table 1.  Just as CARECONNECTIONS is registered by Springwell, Inc. for health care services in Class 44, the USPTO also allowed the registration, by different parties, of CARDINAL HEALTH CARE CONNECTIONS, CHILDREN’S CARE CONNECTION, C3 CARE CONNECTION, MAKENA CARE CONNECTION and BLUE CARE CONNECTION all for health care services in Class 44.  See TSDRs attached as Exhibit 3 for the marks shown in Table 1.  Similar to the situation with the mark CARE CONNECTION, Applicant owns prior registrations for HEALTHHUB, which coexist with the Cited Registrations, in view of the differences in the marks and goods/services, and therefore Applicant’s current filing in Class 44 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, Applicant’s mark and the Cited Registrations 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 Brigham Registration was March 2017 and of the Advantia Registration was September 2014.  As such, for years, Applicant’s HEALTHHUB health care services have coexisted with Registrants’ BRIGHAM HEALTH HUB health care services and ADVANTIA HEALTH’S A WOMAN’S HEALTH HUB health care services without actual confusion of which Applicant is aware.  This factor weighs heavily in favor of a finding of no confusion.

An additional Du Pont factor to include for analysis is the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasers.  Du Pont, 476 F.2d at 1361, 177 U.S.P.Q. 563.  Purchasers of both Applicant’s health care services and purchasers of Registrants’ health care services are sophisticated in that they know from whom they are buying and are not as likely to be susceptible to confusion.  All three parties’ health care services will be highly researched with regard to whether a patient's insurance is accepted, if the health care provider has a good reputation, and even if insurance covers part of the health care visit, as copays can be expensive.   See J. Thomas McCarthy, McCarthy On Trademarks & Unfair Competition (4th ed. 2015), § 23:96 (The standard of care for expensive purchases is raised to that of a more sophisticated “discriminating purchaser”); § 23:101.  Clearly the services offered by Applicant and by the owners of the Cited Registrations are not impulse purchases, thus confusion is not likely as to source

 

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 allowed the registration of the Cited Registrations, even though Applicant’s prior U.S. Registrations contain the word HEALTHHUB and cover Class 44 health care services, even though the Cited Registrations also cover health care services and include HEALTH HUB.  in light of Applicant's senior right in the mark and the allowance of the Cited Registrations to be registered despite the existence of Applicant’s prior registrations, Applicant submits there is no likelihood of confusion with the Cited Registrations.

 

In conclusion, a likelihood of confusion between Applicant’s mark and the Cited Registrations does not exist.  

 

In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal to registration under Trademark Act Section 2(d) for the two Cited Registrations and suspend the application pending the registration or abandonment of the two cited applications.

EVIDENCE
Evidence in the nature of exhibits cited in response has been attached.
Original PDF file:
evi_5023923450-20191023183723463291_._Exhibit_1.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_5023923450-20191023183723463291_._Exhibit_2.pdf
Converted PDF file(s) ( 3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_5023923450-20191023183723463291_._Exhibit_3.pdf
Converted PDF file(s) ( 27 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
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Evidence-27

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Providing wellness and disease management programs; personal health assessments; including, personal assessments of health risk, fitness, nutrition and lifestyle; providing smoking cessation and weight loss program services; providing health and medical information, including, information regarding medications and medication management counseling services; managed health care services, including, health and wellness counseling services; disease care management services; providing health care information in the field of health and wellness, and disease management; medical care services; nursing services; medical care services, including, providing personalized and customized health and wellness assessment, health care, disease management, medical treatment and wellness plans and programs; medical care services, including, evaluating and monitoring a patient's condition; providing medical information, including, providing information on healthcare, health and wellness programs, medications, and medical symptoms, conditions, procedures, and services; providing online health care and health coaching services; medical clinics featuring non-emergency medical diagnostic services in convenient locations
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/15/2019 and first used in commerce at least as early as 01/15/2019 , and is now in use in such commerce.

Proposed:
Tracked Text Description: Providing wellness and disease management programs; Health care services, namely, providing wellness and disease management programs; personal health assessments; personal health assessments, namely, personal assessments of health risk, fitness, nutrition and lifestyle; including, personal assessments of health risk, fitness, nutrition and lifestyle; providing smoking cessation and weight loss program services; providing health and medical information, including, information regarding medications and medication management counseling services; managed health care services, including, health and wellness counseling services; health care services, namely, disease care management services; disease care management services; providing health care information in the field of health and wellness, and disease management; medical care services; nursing services; medical care services, including, providing personalized and customized health and wellness assessment, health care, disease management, medical treatment and wellness plans and programs; medical care services, including, evaluating and monitoring a patient's condition; providing medical information, including, providing information on healthcare, health and wellness programs, medications, and medical symptoms, conditions, procedures, and services; medical clinics featuring non-emergency medical diagnostic services in convenient locations; providing online health care and health coaching services; providing online health care and health advice servicesClass 044 for Health care services, namely, providing wellness and disease management programs; personal health assessments, namely, personal assessments of health risk, fitness, nutrition and lifestyle; providing smoking cessation and weight loss program services; providing health and medical information, including, information regarding medications and medication management counseling services; managed health care services, including, health and wellness counseling services; health care services, namely, disease care management services; providing health care information in the field of health and wellness, and disease management; medical care services; nursing services; medical care services, including, providing personalized and customized health and wellness assessment, health care, disease management, medical treatment and wellness plans and programs; medical care services, including, evaluating and monitoring a patient's condition; providing medical information, including, providing information on healthcare, health and wellness programs, medications, and medical symptoms, conditions, procedures, and services; medical clinics featuring non-emergency medical diagnostic services in convenient locations; providing online health care and health advice services
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 01/15/2019 and first used in commerce at least as early as 01/15/2019 , and is now in use in such commerce.
SIGNATURE(S)
Response Signature
Signature: /miriam trudell/     Date: 10/23/2019
Signatory's Name: Miriam D. Trudell
Signatory's Position: Attorney of record, Colorado bar member

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 88320440
Internet Transmission Date: Wed Oct 23 18:39:33 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2019102318393382
7070-88320440-61059b5138bf1265cf3d3accce
e6f8362eabd0a27f54d3123e4acac78f118f7-N/
A-N/A-20191023183723463291