To: | Western Governors University (alissa.owen@wgu.edu) |
Subject: | U.S. Trademark Application Serial No. 88429935 - MCCAP - MCCAP |
Sent: | July 31, 2019 09:54:13 AM |
Sent As: | ecom105@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88429935
Mark: MCCAP
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Correspondence Address: |
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Applicant: Western Governors University
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Reference/Docket No. MCCAP
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: July 31, 2019
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.
LIKELIHOOD OF CONFUSION:
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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’s mark is MCCAP for “educational program and degree in the health services field; Providing education courses relating to the health industry”.
The cited marks are:
MCAP for “Education and training services, namely, providing courses, seminars, workshops and on-line training provided via the Internet, in the fields of computer software used in the healthcare industry and business management and decision support in the healthcare industry” and other services. (Reg. No. 3519285).
MCAP MEDICAL INTELLIGENCE featuring a circular design for “Education and training services, namely, providing courses, seminars, in-house training and on-line training provided via the Internet, in the fields of computer software used in the healthcare industry and business management and decision support for clinical utilization in the healthcare industry; Providing courses, seminars and training for health care staff in the field of health care cost containment” and other goods and services. (Reg. No. 5304702).
Both registrations are owned by VITALHUB CORPORATION.
Applicant’s MCCAP and registrant’s MCAP portions are highly similar. Applicant has simply adopted that portion of registrant’s marks and added an extra letter “C”.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Reg. No. 5304702 has disclaimed MEDICAL INTELLIGENCE.
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)). As such, the presence of the circular design in Reg. No. 5304702 does not diminish the overall similarities of the marks at issue. Here, the dominant portions of all the marks are highly similar, that being applicant’s MCCAP and registrant’s MCAP portions. Indeed, Reg. No. 5304702 MCAP is the largest element in registrant’s mark and thus has the most significant commercial impact on consumers.
The services of the respective parties are closely related. Applicant’s educational services are in the broad field of “health services” and “relating to the health industry”. Registrant’s educational services are in the field of “computer software used in the healthcare industry”. Applicant’s educational services are about “medical coding”. See attachments from <http://www.wgu.edu/lp/programs/mccap.html>. In fact, applicant trains and teaches students about “encoder software”. See attachments from <http://www.wgu.edu/content/dam/western-governors/documents/programguides/2017-guides/health/MCCAP-Student-Guide.pdf>. Both parties teach individuals how to use software relating to the healthcare field.
For the reasons discussed above, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
IDENTIFICATION OF SERVICES:
Class 41 -
In Class 41, applicant’s identification is: “Educational program and degree in the health services field; Providing education courses relating to the health industry.”
The following wording is unacceptable:
“Educational program and degree in the health services field” is indefinite. More specificity is required. The mode of instruction for the degree must be stated. See below for suggestion.
“Providing education courses relating to the health industry” is indefinite. The subject matter of the courses must be stated. It is unclear what the courses are about in relation to the health industry. More specificity is required. See below for suggestion.
Taking the above together, applicant may adopt the following:
Class 41: Educational degree program services, namely, providing courses of instruction and classes in the field of healthcare services; educational services, namely, providing education courses in the field of healthcare and medical care relating to the health industry
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
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.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
How to respond. Click to file a response to this nonfinal Office action
/Simon Teng/
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@uspto.gov
RESPONSE GUIDANCE