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
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
88340533 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 109 |
| MARK SECTION |
| MARK FILE NAME |
http://uspto.report/TM/88340533/mark.png |
| LITERAL ELEMENT |
PROGRESSIVEHEALTH |
| STANDARD CHARACTERS |
NO |
| USPTO-GENERATED IMAGE |
NO |
| ARGUMENT(S) |
|
The Office Action made reference to a pending application for PROGRESSIVE HEALTH & PERFORMANCE, Application Serial No. 88/167,836, which issued as U.S. Registration No. 5,766,122 on May 28,
2019 for “CLASS 41: Consulting services in the fields of fitness and exercise; Counseling services in the field of physical fitness; Personal fitness training services; Personal fitness training
services and consultancy; Personal fitness training services featuring aerobic and anaerobic activities combined with resistance and flexibility training; Personal trainer services; Physical fitness
assessment services; Physical fitness conditioning classes; Physical fitness consultation; Physical fitness instruction; Physical fitness studio services, namely, providing group exercise
instruction, equipment, and facilities; Physical fitness training of individuals and groups; Physical fitness training services; Providing a website featuring information on exercise and fitness;
Providing personal training and physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; and CLASS 44:
Nutrition counseling; Advisory services relating to nutrition; Bodywork therapy; Bodywork therapy services, namely, structural integration therapy and movement therapy; Consulting services in the
fields of diagnostic medical testing and nutrition; Consulting services in the fields of health and nutrition; Counseling services in the fields of health, nutrition and lifestyle wellness; Dietary
and nutritional guidance; Food nutrition consultation; Health assessment services, namely, providing metabolic assessment profiles (MAP) to clients obtained by using a portable metabolic measurement
system in the nature of a unique, heart-rate based overview of their own metabolism in order to assist in reaching weight loss sports performance, health, fitness, and wellness-related goals;
Providing nutritional information about drinks; Providing nutritional information about food; Providing a website featuring information about health, wellness and nutrition; Providing healthy
lifestyle and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; Providing information about dietary supplements and nutrition; Providing
information in the field of nutrition.”
The Office Action has also refused registration of the instant mark on the grounds that it is confusingly similar to marks for PROGRESSIVE HEALTH SERVICES, U.S. Registration
No. 5,495,653 and U.S. Registration No. 5,646,603, for “providing in-person holistic healthcare services.” In considering whether there is a likelihood of confusion between an applied for mark
and a registered mark, the examiner must consider not only the similarity of the marks and the similarity of the products or services, but also other factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), including, but not limited to the overall similarity or dissimilarity in the marks in their entireties in appearance, sound,
connotation and commercial impression, the similarity or dissimilarity of established, likely-to-continue trade channels, the number and nature of similar marks in use on similar goods or services,
and the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion. When compared as a whole, the marks are not confusingly
similar.
When considered in their entireties, applicant’s mark is dissimilar to the registered marks in appearance, connotation and commercial impression
Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial
impression created by each mark. TMEP 1207.01(b)(iii). Where a mark in standard characters is compared to a mark that includes a pictorial representation as part of the mark “the fact that the
word + design mark includes such a pictorial representation will be taken into account to determine likelihood of confusion in terms of the marks’ overall connotation and commercial impression.” In
re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018).
Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial
impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See e.g. Safer, Inc. v. OMS Invs.,
Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for
repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" is descriptive as applied to the relevant goods and thus has no source-indicating significance); Bass
Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the
shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and
stylization in the respective marks); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed)
for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition
of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER
DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN
RIVER" is sufficient to avoid a likelihood of confusion).
The present case is similar to those listed above in that the words PROGRESSIVEHEALTH in both applicant’s mark and the registered marks are merely descriptive of the goods and
services provided by both entities under the marks. The same is true for the services of the registrant as indicated in the specimen that was submitted with their mark. It is the addition
of the word SERVICES in registrant’s mark and the addition of the human-shaped figure with outstretched arms in applicant’s mark that distinguish their marks from each other and from other marks in
use.
Furthermore, in evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific,
impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353
(Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); see also San Fernando Elec. Mfg.
Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2-3 (CCPA 1977) ("Obviously, the marks here are constructed of old linguistic elements, but they must be considered as wholes, and
not on the basis of side-by-side comparison, and in the light of the fallibility of memory."); Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers "may
have but dim recollections from having previously seen or heard one or the other of the involved marks.”).
Dissimilarity of Established, Likely-to-Continue Trade Channels Suggests There is No Likelihood of Confusion between Applicant’s Mark and the Registered Marks
Applicant’s services under the mark are primarily offered to patients indirectly through established trade channels to hospitals, health systems and medium and large
employers. In the clinical solutions trade channels, applicant partners with hospitals and health systems nationwide to provide a broad spectrum of clinical and occupational health solutions
including rehabilitation management while expanding market share. In the employer solutions trade channels, applicant partners with medium and large employers to provide Optimal Placement,
Proactive Prevention, individual and group health improvement, onsite medical and rehabilitation management solutions onsite.
In sharp contrast, services under the PROGRESSIVE HEALTH SERVICES marks are in the nature of in-person holistic health care services. Rather than providing services to
hospitals, health systems and employers, PROGRESSIVE HEALTH SERVICES provides services directly to individual consumers of medical services. According to their website, PROGRESSIVE HEALTH SERVICES
offers “a wide range of health services from STD testing, HIV testing and HPV testing to comprehensive wellness services including women's health care, men's health care, donor
insemination, LGBTIQ health care, acupuncture, nutrition, herbs and much more.” Clearly these services are not offered in the same channels of trade as applicant’s services.
Similarly, PROGRESSIVE HEALTH & PERFORMANCE offers a variety of services relating to personal fitness training and nutrition counseling directly to individual consumers.
On their website, they specifically indicate that their services are offered directly to individual consumers rather than to hospitals, heath systems and employers:
Every person in our community gets a unique fitness and health experience because we know that each person's situation and goals require it. At Progressive Health & Performance
(PHP), you will never get lost in the crowd or stuck doing the same workout as everyone else. We know that athletes and tactical service members looking to improve performance need to train
differently than someone looking to manage or prevent health conditions. We know that those who in need of pain relief and rehabilitation need to train differently than those looking to get back in
shape for summer. At PHP, you get the expertise you need and deserve to get you to your goals efficiently and effectively.
Significant Third-Party Use of Similar Marks Suggests There is No Likelihood of Confusion between Applicant’s Mark and the Registered Marks
Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods." In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it "is relevant to show that
a mark is relatively weak and entitled to only a narrow scope of protection." Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693
(Fed. Cir. 2005); see also In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018) (finding the component term SMOKING HOT in the marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be "somewhat
weak" based in part on evidence of third-party use of the term on similar cosmetics goods, noting that such uses "tend to show consumer exposure to third-party use of the term on similar goods");
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (noting that evidence that third parties had adopted marks that were the same as or similar to opposer’s mark for use in
connection with food products "may show that a term carries a highly suggestive connotation in the industry and, therefore, may be considered weak").
Applicant conducted a cursory internet search for the words “progressive health” and discovered at least the following businesses that use those descriptive words as part of
their name:
|
Mark/Business
|
Website/Domain
|
|
Progressive Community Health Centers
|
http://progressivechc.org/
|
|
Progressive Health Services of FL
|
http://www.google.com/search?q=progressive+health&client=firefox-b-1-d&sxsrf=ACYBGNSImqGakvsdbmxfT6E2LLEO7iYOYg:1574368018372&ei=EvPWXZKlFtDE0PEPlMOeqAo&start=10&sa=N&ved=2ahUKEwiS9uvzkfzlAhVQIjQIHZShB6UQ8NMDegQICxBA&biw=2560&bih=1229
|
|
Progressive Healthcare Group
|
http://phgaz.com/
|
|
Progressive Healthcare Solutions
|
http://www.phsteam.com/our-company/
|
|
Progressive Health Services of CA
|
http://npin.cdc.gov/organization/progressive-health-services
|
|
Progressive Health of PA
|
http://www.progressivehealthofpa.com/jobs/
|
|
Progressive Health Options
|
http://progressivehealthoptions.org/
|
|
Progressive Health Project
|
http://www.progressivehealthproject.com/blog
|
|
Progressive Health Dental
|
http://www.progressivehealthdental.com/
|
The existence of these similar marks that all employ the words “PROGRESSIVE HEALTH” in conjunction with additional words indicates that the term PROGRESSIVE HEALTH is highly
suggestive or descriptive in the industry and the words themselves are considered weak and not entitled to broad protection.
Concurrent use without actual confusion
Applicant has been using its mark in interstate commerce for over twenty years - since 1998. The PROGRESSIVE HEALTH SERVICES marks have been in use since January, 1993, while
the PROGRESSIVE HEALTH & PERFORMANCE mark, which was recently granted registration on the Supplemental Register, has only been in use since sometime in 2018. Applicant is unaware of even a
single instance of confusion in the fifteen (15) years of concurrent use with the PROGRESSIVE HEALTH SERVICES marks. Similarly, applicant is unaware of any instance of confusion in the one plus
year of concurrent use with the PROGRESSIVE HEALTH & PERFORMANCE mark.
CONCLUSION
Applicant respectfully requests registration of the PROGRESSIVEHEALTH & Design mark on the Principal Register as being
capable of distinguishing applicant’s goods and services from those of others. As shown above, PROGRESSIVEHEALTH & Design is not confusingly similar to PROGRESSIVE HEALTH SERVICES, U.S.
Registration No. 5,646,603, PROGRESSIVE HEALTH SERVICES & Design, U.S. Registration No. 5,495,653, or PROGRESSIVE HEALTH & PERFORMANCE, Application Serial No. 88/167,836, which issued as U.S.
Registration No. 5,766,122.
For the foregoing reasons, applicant requests registration of PROGRESSIVEHEALTH & Design on the Principal Register as being
capable of distinguishing applicant’s services. Should the Examiner have any questions, comments or suggestions, he is invited to contact applicant’s representative.
|
| GOODS AND/OR SERVICES SECTION (035)(no change) |
| GOODS AND/OR SERVICES SECTION (041)(current) |
| INTERNATIONAL CLASS |
041 |
| DESCRIPTION |
Physical fitness conditioning classes |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 06/30/2012 |
| FIRST USE IN COMMERCE DATE |
At least as early as 06/30/2012 |
| GOODS AND/OR SERVICES SECTION (041)(proposed) |
| INTERNATIONAL CLASS |
041 |
| DESCRIPTION |
Physical fitness conditioning classes |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 06/30/2012 |
| FIRST USE IN COMMERCE DATE |
At least as early as 06/30/2012 |
| STATEMENT TYPE |
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing
date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in
commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b)
Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an
illegible specimen]. |
| SPECIMEN FILE NAME(S) |
| ORIGINAL PDF FILE |
SPU1-1-9627226121-20191122154741734279_._ProgressiveHealth_Industrial_Solutions.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\883\405\88340533\xml5\ROA0002.JPG |
| |
\\TICRS\EXPORT17\IMAGEOUT17\883\405\88340533\xml5\ROA0003.JPG |
| SPECIMEN DESCRIPTION |
brochure detailing applicant's services provided under the mark |
| GOODS AND/OR SERVICES SECTION (044)(no change) |
| GOODS AND/OR SERVICES SECTION (042)(class added) |
| INTERNATIONAL CLASS |
042 |
| DESCRIPTION |
| ergonomic monitoring in the nature of correcting performance issues to promote optimal physical function preventing the onset, symptoms
and progression of impairments, functional limitations, and disabilities resulting from workplace injuries |
| FILING BASIS |
Section 1(a) |
| FIRST USE ANYWHERE DATE |
At least as early as 08/07/1998 |
| FIRST USE IN COMMERCE DATE |
At least as early as 08/07/1998 |
| STATEMENT TYPE |
"The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing
date of the application"[for an application based on Section 1(a), Use in Commerce] OR "The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in
commerce prior either to the filing of the Amendment to Allege Use or expiration of the filing deadline for filing a Statement of Use" [for an application based on Section 1(b)
Intent-to-Use]. OR "The attached specimen is a true copy of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an
illegible specimen]. |
| SPECIMEN FILE NAME(S) |
| ORIGINAL PDF FILE |
SPN0-9627226121-20191121121853617194_._ProgressiveHealth_Homepage.pdf |
CONVERTED PDF FILE(S)
(1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\883\405\88340533\xml5\ROA0004.JPG |
| SPECIMEN DESCRIPTION |
screenshot of website |
| ATTORNEY SECTION (current) |
| NAME |
C. Richard Martin |
| ATTORNEY BAR MEMBERSHIP NUMBER |
NOT SPECIFIED |
| YEAR OF ADMISSION |
NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
NOT SPECIFIED |
| FIRM NAME |
MARTIN IP LAW GROUP, PC |
| STREET |
318 MAIN ST., STE. 503 |
| CITY |
EVANSVILLE |
| STATE |
Indiana |
| POSTAL CODE |
47708 |
| COUNTRY |
US |
| PHONE |
812-492-4478 |
| EMAIL |
rick@ipsolutionslaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
PHR:011 |
| ATTORNEY SECTION (proposed) |
| NAME |
C. Richard Martin |
| ATTORNEY BAR MEMBERSHIP NUMBER |
XXX |
| YEAR OF ADMISSION |
XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY |
XX |
| FIRM NAME |
MARTIN IP LAW GROUP, PC |
| STREET |
318 MAIN ST., STE. 503 |
| CITY |
EVANSVILLE |
| STATE |
Indiana |
| POSTAL CODE |
47708 |
| COUNTRY |
United States |
| PHONE |
812-492-4478 |
| EMAIL |
rick@ipsolutionslaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
PHR:011 |
| CORRESPONDENCE SECTION (current) |
| NAME |
C. RICHARD MARTIN |
| FIRM NAME |
MARTIN IP LAW GROUP, PC |
| STREET |
318 MAIN ST., STE. 503 |
| CITY |
EVANSVILLE |
| STATE |
Indiana |
| POSTAL CODE |
47708 |
| COUNTRY |
US |
| PHONE |
812-492-4478 |
| EMAIL |
rick@ipsolutionslaw.com; admin@ipsolutionslaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
PHR:011 |
| CORRESPONDENCE SECTION (proposed) |
| NAME |
C. Richard Martin |
| FIRM NAME |
MARTIN IP LAW GROUP, PC |
| STREET |
318 MAIN ST., STE. 503 |
| CITY |
EVANSVILLE |
| STATE |
Indiana |
| POSTAL CODE |
47708 |
| COUNTRY |
United States |
| PHONE |
812-492-4478 |
| EMAIL |
rick@ipsolutionslaw.com; admin@ipsolutionslaw.com |
| AUTHORIZED TO COMMUNICATE VIA EMAIL |
Yes |
| DOCKET/REFERENCE NUMBER |
PHR:011 |
| PAYMENT SECTION |
| NUMBER OF CLASSES |
1 |
| APPLICATION FOR REGISTRATION PER CLASS |
225 |
| TOTAL FEES DUE |
225 |
| SIGNATURE SECTION |
| DECLARATION SIGNATURE |
/C. Richard Martin/ |
| SIGNATORY'S NAME |
C. Richard Martin |
| SIGNATORY'S POSITION |
Attorney of Record |
| SIGNATORY'S PHONE NUMBER |
812-492-4478 |
| DATE SIGNED |
11/22/2019 |
| RESPONSE SIGNATURE |
/C. Richard Martin/ |
| SIGNATORY'S NAME |
C. Richard Martin |
| SIGNATORY'S POSITION |
Attorney of Record |
| SIGNATORY'S PHONE NUMBER |
812-492-4478 |
| DATE SIGNED |
11/22/2019 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Fri Nov 22 17:46:47 EST 2019 |
| TEAS STAMP |
USPTO/ROA-XX.XX.XXX.XXX-2
0191122174647068912-88340
533-700ae18361cbe2d6733e0
e969683aff3674de6cf18cb75
723ccec0aa6e2b3a66b-CC-46
453346-201911221744568607
51 |
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.
88340533 PROGRESSIVEHEALTH (Stylized and/or with Design, see http://uspto.report/TM/88340533/mark.png) has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Office Action made reference to a pending application for PROGRESSIVE HEALTH & PERFORMANCE, Application Serial No. 88/167,836, which issued as U.S. Registration No. 5,766,122 on May 28,
2019 for “CLASS 41: Consulting services in the fields of fitness and exercise; Counseling services in the field of physical fitness; Personal fitness training services; Personal fitness training
services and consultancy; Personal fitness training services featuring aerobic and anaerobic activities combined with resistance and flexibility training; Personal trainer services; Physical fitness
assessment services; Physical fitness conditioning classes; Physical fitness consultation; Physical fitness instruction; Physical fitness studio services, namely, providing group exercise
instruction, equipment, and facilities; Physical fitness training of individuals and groups; Physical fitness training services; Providing a website featuring information on exercise and fitness;
Providing personal training and physical fitness consultation to individuals to help them make physical fitness, strength, conditioning, and exercise improvement in their daily living; and CLASS 44:
Nutrition counseling; Advisory services relating to nutrition; Bodywork therapy; Bodywork therapy services, namely, structural integration therapy and movement therapy; Consulting services in the
fields of diagnostic medical testing and nutrition; Consulting services in the fields of health and nutrition; Counseling services in the fields of health, nutrition and lifestyle wellness; Dietary
and nutritional guidance; Food nutrition consultation; Health assessment services, namely, providing metabolic assessment profiles (MAP) to clients obtained by using a portable metabolic measurement
system in the nature of a unique, heart-rate based overview of their own metabolism in order to assist in reaching weight loss sports performance, health, fitness, and wellness-related goals;
Providing nutritional information about drinks; Providing nutritional information about food; Providing a website featuring information about health, wellness and nutrition; Providing healthy
lifestyle and nutrition services, namely, personal assessments, personalized routines, maintenance schedules, and counseling; Providing information about dietary supplements and nutrition; Providing
information in the field of nutrition.”
The Office Action has also refused registration of the instant mark on the grounds that it is confusingly similar to marks for PROGRESSIVE HEALTH SERVICES, U.S. Registration
No. 5,495,653 and U.S. Registration No. 5,646,603, for “providing in-person holistic healthcare services.” In considering whether there is a likelihood of confusion between an applied for mark
and a registered mark, the examiner must consider not only the similarity of the marks and the similarity of the products or services, but also other factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), including, but not limited to the overall similarity or dissimilarity in the marks in their entireties in appearance, sound,
connotation and commercial impression, the similarity or dissimilarity of established, likely-to-continue trade channels, the number and nature of similar marks in use on similar goods or services,
and the length of time during and the conditions under which there has been concurrent use without evidence of actual confusion. When compared as a whole, the marks are not confusingly
similar.
When considered in their entireties, applicant’s mark is dissimilar to the registered marks in appearance, connotation and commercial impression
Determining whether there is a likelihood of confusion requires careful consideration of the nature of the common elements of the marks at issue, as well as the overall commercial
impression created by each mark. TMEP 1207.01(b)(iii). Where a mark in standard characters is compared to a mark that includes a pictorial representation as part of the mark “the fact that the
word + design mark includes such a pictorial representation will be taken into account to determine likelihood of confusion in terms of the marks’ overall connotation and commercial impression.” In
re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018).
Additions or deletions to marks may be sufficient to avoid a likelihood of confusion if: (1) the marks in their entireties convey significantly different commercial
impressions; or (2) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted. See e.g. Safer, Inc. v. OMS Invs.,
Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010) (holding DEER-B-GON for animal repellant used to repel deer, other ruminant animals, and rabbits, and DEER AWAY and DEER AWAY PROFESSIONAL for repellant for
repelling deer, other big game, and rabbits, not likely to cause confusion, noting that "DEER" is descriptive as applied to the relevant goods and thus has no source-indicating significance); Bass
Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844, 1857-58 (TTAB 2008) (finding that, although cancellation petitioner’s and respondent’s marks were similar by virtue of the
shared descriptive wording "SPORTSMAN’S WAREHOUSE," this similarity was outweighed by differences in terms of sound, appearance, connotation, and commercial impression created by other matter and
stylization in the respective marks); In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985) (holding GOLDEN CRUST for flour, and ADOLPH’S GOLD’N CRUST and design (with "GOLD’N CRUST" disclaimed)
for coating and seasoning for food items, not likely to cause confusion, noting that, because "GOLDEN CRUST" and "GOLD’N CRUST" are highly suggestive as applied to the respective goods, the addition
of "ADOLPH’S" is sufficient to distinguish the marks); In re S.D. Fabrics, Inc., 223 USPQ 54, 55-56 (TTAB 1984) (holding DESIGNERS/FABRIC (stylized) for retail fabric store services, and DAN RIVER
DESIGNER FABRICS and design for textile fabrics, not likely to cause confusion, noting that, because of the descriptive nature of "DESIGNERS/FABRIC" and "DESIGNER FABRICS," the addition of "DAN
RIVER" is sufficient to avoid a likelihood of confusion).
The present case is similar to those listed above in that the words PROGRESSIVEHEALTH in both applicant’s mark and the registered marks are merely descriptive of the goods and
services provided by both entities under the marks. The same is true for the services of the registrant as indicated in the specimen that was submitted with their mark. It is the addition
of the word SERVICES in registrant’s mark and the addition of the human-shaped figure with outstretched arms in applicant’s mark that distinguish their marks from each other and from other marks in
use.
Furthermore, in evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific,
impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353
(Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013)); see also San Fernando Elec. Mfg.
Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2-3 (CCPA 1977) ("Obviously, the marks here are constructed of old linguistic elements, but they must be considered as wholes, and
not on the basis of side-by-side comparison, and in the light of the fallibility of memory."); Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA 1969) (many consumers "may
have but dim recollections from having previously seen or heard one or the other of the involved marks.”).
Dissimilarity of Established, Likely-to-Continue Trade Channels Suggests There is No Likelihood of Confusion between Applicant’s Mark and the Registered Marks
Applicant’s services under the mark are primarily offered to patients indirectly through established trade channels to hospitals, health systems and medium and large
employers. In the clinical solutions trade channels, applicant partners with hospitals and health systems nationwide to provide a broad spectrum of clinical and occupational health solutions
including rehabilitation management while expanding market share. In the employer solutions trade channels, applicant partners with medium and large employers to provide Optimal Placement,
Proactive Prevention, individual and group health improvement, onsite medical and rehabilitation management solutions onsite.
In sharp contrast, services under the PROGRESSIVE HEALTH SERVICES marks are in the nature of in-person holistic health care services. Rather than providing services to
hospitals, health systems and employers, PROGRESSIVE HEALTH SERVICES provides services directly to individual consumers of medical services. According to their website, PROGRESSIVE HEALTH SERVICES
offers “a wide range of health services from STD testing, HIV testing and HPV testing to comprehensive wellness services including women's health care, men's health care, donor
insemination, LGBTIQ health care, acupuncture, nutrition, herbs and much more.” Clearly these services are not offered in the same channels of trade as applicant’s services.
Similarly, PROGRESSIVE HEALTH & PERFORMANCE offers a variety of services relating to personal fitness training and nutrition counseling directly to individual consumers.
On their website, they specifically indicate that their services are offered directly to individual consumers rather than to hospitals, heath systems and employers:
Every person in our community gets a unique fitness and health experience because we know that each person's situation and goals require it. At Progressive Health & Performance
(PHP), you will never get lost in the crowd or stuck doing the same workout as everyone else. We know that athletes and tactical service members looking to improve performance need to train
differently than someone looking to manage or prevent health conditions. We know that those who in need of pain relief and rehabilitation need to train differently than those looking to get back in
shape for summer. At PHP, you get the expertise you need and deserve to get you to your goals efficiently and effectively.
Significant Third-Party Use of Similar Marks Suggests There is No Likelihood of Confusion between Applicant’s Mark and the Registered Marks
Evidence of third-party use falls under the sixth du Pont factor – the "number and nature of similar marks in use on similar goods." In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it "is relevant to show that
a mark is relatively weak and entitled to only a narrow scope of protection." Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693
(Fed. Cir. 2005); see also In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018) (finding the component term SMOKING HOT in the marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be "somewhat
weak" based in part on evidence of third-party use of the term on similar cosmetics goods, noting that such uses "tend to show consumer exposure to third-party use of the term on similar goods");
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (noting that evidence that third parties had adopted marks that were the same as or similar to opposer’s mark for use in
connection with food products "may show that a term carries a highly suggestive connotation in the industry and, therefore, may be considered weak").
Applicant conducted a cursory internet search for the words “progressive health” and discovered at least the following businesses that use those descriptive words as part of
their name:
|
Mark/Business
|
Website/Domain
|
|
Progressive Community Health Centers
|
http://progressivechc.org/
|
|
Progressive Health Services of FL
|
http://www.google.com/search?q=progressive+health&client=firefox-b-1-d&sxsrf=ACYBGNSImqGakvsdbmxfT6E2LLEO7iYOYg:1574368018372&ei=EvPWXZKlFtDE0PEPlMOeqAo&start=10&sa=N&ved=2ahUKEwiS9uvzkfzlAhVQIjQIHZShB6UQ8NMDegQICxBA&biw=2560&bih=1229
|
|
Progressive Healthcare Group
|
http://phgaz.com/
|
|
Progressive Healthcare Solutions
|
http://www.phsteam.com/our-company/
|
|
Progressive Health Services of CA
|
http://npin.cdc.gov/organization/progressive-health-services
|
|
Progressive Health of PA
|
http://www.progressivehealthofpa.com/jobs/
|
|
Progressive Health Options
|
http://progressivehealthoptions.org/
|
|
Progressive Health Project
|
http://www.progressivehealthproject.com/blog
|
|
Progressive Health Dental
|
http://www.progressivehealthdental.com/
|
The existence of these similar marks that all employ the words “PROGRESSIVE HEALTH” in conjunction with additional words indicates that the term PROGRESSIVE HEALTH is highly
suggestive or descriptive in the industry and the words themselves are considered weak and not entitled to broad protection.
Concurrent use without actual confusion
Applicant has been using its mark in interstate commerce for over twenty years - since 1998. The PROGRESSIVE HEALTH SERVICES marks have been in use since January, 1993, while
the PROGRESSIVE HEALTH & PERFORMANCE mark, which was recently granted registration on the Supplemental Register, has only been in use since sometime in 2018. Applicant is unaware of even a
single instance of confusion in the fifteen (15) years of concurrent use with the PROGRESSIVE HEALTH SERVICES marks. Similarly, applicant is unaware of any instance of confusion in the one plus
year of concurrent use with the PROGRESSIVE HEALTH & PERFORMANCE mark.
CONCLUSION
Applicant respectfully requests registration of the PROGRESSIVEHEALTH & Design mark on the Principal Register as being
capable of distinguishing applicant’s goods and services from those of others. As shown above, PROGRESSIVEHEALTH & Design is not confusingly similar to PROGRESSIVE HEALTH SERVICES, U.S.
Registration No. 5,646,603, PROGRESSIVE HEALTH SERVICES & Design, U.S. Registration No. 5,495,653, or PROGRESSIVE HEALTH & PERFORMANCE, Application Serial No. 88/167,836, which issued as U.S.
Registration No. 5,766,122.
For the foregoing reasons, applicant requests registration of PROGRESSIVEHEALTH & Design on the Principal Register as being
capable of distinguishing applicant’s services. Should the Examiner have any questions, comments or suggestions, he is invited to contact applicant’s representative.
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 041 for Physical fitness conditioning classes
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, or certification mark
application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the
application filing date.
For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to
advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 06/30/2012
and first used in commerce at least as early as 06/30/2012 , and is now in use in such commerce.
Proposed: Class 041 for Physical fitness conditioning classes
Filing Basis: Section 1(a), Use in Commerce:For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, or certification mark
application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the
application filing date.
For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to
advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 06/30/2012
and first used in commerce at least as early as 06/30/2012 , and is now in use in such commerce.
Applicant hereby submits one(or more) specimen(s) for Class 041 . The specimen(s) submitted consists of brochure detailing applicant's services provided under the mark .
"
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based
on Section 1(a), Use in Commerce] OR "
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to
Allege Use or expiration of the filing deadline for filing a Statement of Use"
[for an application based on Section 1(b) Intent-to-Use].
OR "The attached specimen is a true copy
of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPU1-1-9627226121-20191122154741734279_._ProgressiveHealth_Industrial_Solutions.pdf
Converted PDF file(s) ( 2 pages)
Specimen File1
Specimen File2
Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for ergonomic monitoring in the nature of correcting performance issues to promote optimal physical function preventing the onset, symptoms and progression of impairments,
functional limitations, and disabilities resulting from workplace injuries
Filing Basis: Section 1(a), Use in Commerce: For all applications: The mark is in use in commerce and was in use in commerce as of the application filing date. The provided
specimen shows the mark in use in commerce (see specimen statement below).
For a collective trademark, collective service mark, collective membership mark, or certification mark
application: The applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the
application filing date.
For a certification mark application: The applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to
advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. The mark was first used at least as early as 08/07/1998
and first used in commerce at least as early as 08/07/1998 , and is now in use in such commerce.
Applicant hereby submits a specimen for Class 042 . The specimen(s) submitted consists of screenshot of website .
"
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application"[for an application based
on Section 1(a), Use in Commerce] OR "
The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce prior either to the filing of the Amendment to
Allege Use or expiration of the filing deadline for filing a Statement of Use"
[for an application based on Section 1(b) Intent-to-Use].
OR "The attached specimen is a true copy
of the specimen that was originally submitted with the application, amendment to allege use, or statement of use" [for an illegible specimen].
Original PDF file:
SPN0-9627226121-20191121121853617194_._ProgressiveHealth_Homepage.pdf
Converted PDF file(s) ( 1 page)
Specimen File1
The applicant's current attorney information: C. Richard Martin. C. Richard Martin of MARTIN IP LAW GROUP, PC, is located at
318 MAIN ST., STE. 503
EVANSVILLE, Indiana 47708
US
The docket/reference number is PHR:011.
The phone number is 812-492-4478.
The email address is rick@ipsolutionslaw.com
The applicants proposed attorney information: C. Richard Martin. C. Richard Martin of MARTIN IP LAW GROUP, PC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is
located at
318 MAIN ST., STE. 503
EVANSVILLE, Indiana 47708
United States
The docket/reference number is PHR:011.
The phone number is 812-492-4478.
The email address is rick@ipsolutionslaw.com
C. Richard Martin submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S.
Commonwealth or territory.
The applicant's current correspondence information: C. RICHARD MARTIN. C. RICHARD MARTIN of MARTIN IP LAW GROUP, PC, is located at
318 MAIN ST., STE. 503
EVANSVILLE, Indiana 47708
US
The docket/reference number is PHR:011.
The phone number is 812-492-4478.
The email address is rick@ipsolutionslaw.com; admin@ipsolutionslaw.com
The applicants proposed correspondence information: C. Richard Martin. C. Richard Martin of MARTIN IP LAW GROUP, PC, is located at
318 MAIN ST., STE. 503
EVANSVILLE, Indiana 47708
United States
The docket/reference number is PHR:011.
The phone number is 812-492-4478.
The email address is rick@ipsolutionslaw.com; admin@ipsolutionslaw.com
FEE(S)
Fee(s) in the amount of $225 is being submitted.
SIGNATURE(S)
Declaration Signature
DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful
false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or
allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this
submission made on information and belief are believed to be true.
STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally
believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in
connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of
the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective
membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over
the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the
goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.
To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either
in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion
or mistake, or to deceive.
STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C.
§§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark
application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the
mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or
certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention,
and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of
the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise
or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other
persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be
likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.
Signature: /C. Richard Martin/ Date: 11/22/2019
Signatory's Name: C. Richard Martin
Signatory's Position: Attorney of Record
Signatory's Phone Number: 812-492-4478
Response Signature
Signature: /C. Richard Martin/ Date: 11/22/2019
Signatory's Name: C. Richard Martin
Signatory's Position: Attorney of Record
Signatory's Phone Number: 812-492-4478
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.
Mailing Address: C. RICHARD MARTIN
MARTIN IP LAW GROUP, PC
318 MAIN ST., STE. 503
EVANSVILLE, Indiana 47708
Mailing Address: C. Richard Martin
MARTIN IP LAW GROUP, PC
318 MAIN ST., STE. 503
EVANSVILLE, Indiana 47708
RAM Sale Number: 88340533
RAM Accounting Date: 11/22/2019
Serial Number: 88340533
Internet Transmission Date: Fri Nov 22 17:46:47 EST 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019112217464706
8912-88340533-700ae18361cbe2d6733e0e9696
83aff3674de6cf18cb75723ccec0aa6e2b3a66b-
CC-46453346-20191122174456860751
