To: | Integrative Medicine Institute (IMI) (tcole@rmsc2.com) |
Subject: | U.S. Trademark Application Serial No. 88383702 - CARE - N/A |
Sent: | December 20, 2019 04:53:35 PM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88383702
Mark: CARE
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Correspondence Address: ROBERTS MLOTKOWSKI SAFRAN COLE & CALDERO 7918 JONES BRANCH DRIVE, SUITE 500
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Applicant: Integrative Medicine Institute (IMI)
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: December 20, 2019
This Office action is in response to applicant’s communication filed on December 8, 2019.
In a previous Office action dated June 11, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal – Likelihood of Confusion. In addition, applicant was required to satisfy the following requirement: Classification and Identification of Goods and Services and Multiple-Class Application Requirements.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been obviated and/or satisfied: Classification and Multiple-Class Application Requirements. See TMEP §§713.02, 714.04.
For the reasons discussed below, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – FINAL
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Applicant has applied to register the mark CARE in standard characters for “Downloadable health research reporting guidelines, checklists and publications in the nature of medical journals and preprint servers for clinicians, researchers, educators, and patients all in the field of healthcare” in International Class 009. The registered mark is CARE with design for “printed and electronic publications pertaining to medical care, treatment, technology, research and practice” in International Class 016 and “educational services in the field of medical care, treatment, technology, research and practice; educational workshops and symposiums in the field of medicine” in International Class 041.
Similarity of the Marks
In the present case, the literal portions of the marks, namely, CARE, are identical in appearance, sound, connotation, and commercial impression. Furthermore, the fact that registrant’s mark includes a design element does not obviate a finding of likelihood of confusion. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Therefore, the marks are confusingly similar.
Similarity of the Goods
In the present case, despite applicant’s amendment to the identification of goods, the goods are identical in part. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registration uses broad wording to describe its electronic publications pertaining to medical care, which presumably encompasses all goods of the type described, including applicant’s more narrowly identified publications in the field of healthcare. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods and services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Therefore, the goods are considered to be related.
Summary
In sum, the similarities between the marks and the relatedness of the respective goods are such that it is likely consumers will mistakenly believe the goods emanate from the same source.
Accordingly, the refusal of registration pursuant to Section 2(d) of the Trademark Act is made final.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
IDENTIFICATION OF GOODS
In this case, the application originally identified the relevant goods as follows: “Downloadable printed instructional materials, templates and printed writing guidelines and checklists for clinicians, researchers, educators, and patients.”
However, the proposed amendment identifies the following goods: “Downloadable health research reporting guidelines, checklists and publications in the nature of medical journals and preprint servers for clinicians, researchers, educators, and patients all in the field of healthcare.”
This portion of the proposed amendment is beyond the scope of the original identification because applicant has deleted the wording “writing” with regard to the “guidelines” and applicant must make clear that the “publications” are “instructional materials” as identified in the original identification.
Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows
the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or
services which should be removed, it will be shown with a double line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL
CAPS.
Applicant may adopt the following identification, if accurate:
International Class 009: Downloadable health research REPORT WRITING reporting guidelines, checklists and DOWNLOADABLE INSTRUCTIONAL MATERIALS, NAMELY, publications in the nature of medical journals and preprint
servers BEING SCHOLARLY ARTICLES AND PAPERS; ALL OF THE FOREGOING for clinicians, researchers, educators, and patients AND all in the field
of healthcare
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Mariam Aziz Mahmoudi/
Trademark Examining Attorney
LO 115
United States Patent & Trademark Office
Tel. (571) 272-9733
mariam.mahmoudi@uspto.gov
RESPONSE GUIDANCE