| To: | Duke University (emailboxtm@oliveandolive.com) |
| Subject: | U.S. Trademark Application Serial No. 88462474 - NC REGISTRY FOR BRAIN HEALTH - DUKU1402 |
| Sent: | August 28, 2019 11:01:21 AM |
| Sent As: | ecom117@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88462474
Mark: NC REGISTRY FOR BRAIN HEALTH
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Correspondence Address:
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Applicant: Duke University
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Reference/Docket No. DUKU1402
Correspondence Email Address: |
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THE USPTO MUST RECEIVE APPLICANT’S RESPONSE TO THIS LETTER WITHIN SIX (6) 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: August 28, 2019
The referenced application has been reviewed by the assigned trademark examining attorney.
Applicant should note the following issues with this application:
(1) Registration is refused on the ground that the applied-for mark is likely to be confused with the mark BRAINHEALTH REGISTRY in U.S. Registration No. 4876765; and
(2) A disclaimer of “NC REGISTRY FOR BRAIN HEALTH” is required because it is primarily geographically descriptive.
Applicant must respond timely and completely to these two issues. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – 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.
For the reasons set forth below, the examining attorney submits that there is a likelihood of confusion between applicant’s mark NC REGISTRY FOR BRAIN HEALTH [and design] for “Maintaining a registry of brain health research projects and providers” in International Class 35 and “Providing a website featuring information in the field of brain health” in International Class 44, and registrant’s mark:
In this case, applicant and registrant offer the following identical services in International Class 44: providing a website featuring information about brain health. Neither the application nor the registration contains any limitations regarding trade channels for these services. Because applicant and registrant offer identical services, absent restrictions in the application and/or registration, the identical services 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)).
Moreover, both applicant and registrant maintain registries in the field of brain health in International Class 35: applicant maintains a registry of brain health projects and providers, and registrant maintains a registry of participants for brain health projects. These registries are complementary, in that users of applicant’s registry would be connected with the entities in registrant’s registry, and vice versa. Indeed, applicant’s specimen states that its registry “connects [users] with research” and keeps users “informed … about opportunities to get involved in research,” and this “research” could be research performed by the entities in registrant’s registry. Given the complementary nature of the services at issue, they are considered closely related. Cf. In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).
As such, consumer confusion as to the source of the services being provided is likely since applicant’s services are closely related if not identical to the registrant’s services.
COMPARISON OF THE MARKS
Because applicant and registrant offer closely related if not identical services, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); TMEP §1207.01(b).
In the present case, the applied-for mark includes of the wording “REGISTRY FOR BRAIN HEALTH”, and the registered mark includes the wording “BRAINHEALTH REGISTRY”. Confusion is likely between the two marks because they consist of reverse combinations of the same elements that convey the same meaning and create substantially similar commercial impressions. TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals).
Moreover, both marks consist of a stylized design of a brain next to the wording, such that the marks as a whole have similar overall appearances.
The fact that applicant has added the term “NC” to the wording, as well as the design of the State of North Carolina behind the design of the brain, will not prevent a finding that the marks are confusingly similar. The term “NC” is an abbreviation for “North Carolina.” The American Heritage® Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/word/search.html?q=nc. Thus, the addition of “NC” and the design of the State of North Carolina merely indicate that the services originate in North Carolina. The registered mark, however, has no indication as to where the services originate, and thus there is nothing to prevent viewers of the registered mark in believing that the services provided under the registered mark also originate in North Carolina.
In any event, when comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
As such, the marks are confusingly similar because the marks are similar in appearance and commercial impression.
CONCLUSION
Because applicant’s services are closely related if not identical to the registrant’s services, and because the marks are similar in appearance and commercial impression, the applied-for mark must be refused registration under Trademark Act Section 2(d) on the ground that the marks are likely to be confused.
A term is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the term is a generally known geographic place;
(2) The services for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a services-place association; that is, purchasers would be likely to believe that the services originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014).
As noted in the Section 2(d) refusal previously, the term “NC” is an abbreviation for “North Carolina.” North Carolina is one of the 50 states that make up the United States of America and has a population of over 8.8 million people. The Columbia Gazetteer of the World, http://www.columbiagazetteer.org/main/ViewPlace/0/99946. Thus, the primary significance of the term “NC” is that of a generally known geographic place. TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715-16 (TTAB 2011) (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)).
The addition of highly descriptive or generic wording to a geographic term does not diminish that geographic term’s primary geographic significance. TMEP §1210.02(c)(ii); see, e.g., In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853-54 (TTAB 2014) (holding HOLLYWOOD LAWYERS ONLINE primarily geographically descriptive of attorney referrals, online business information, and an online business directory). Here, applicant “maintain[s] a registry of brain health research projects and providers.” Thus, the wording “REGISTRY FOR BRAIN HEALTH” in the applied-for mark is highly descriptive if not generic when considered in relation to applicant’s services.
As such, the primary significance of the wording “NC REGISTRY FOR BRAIN HEALTH” is that of a generally known geographic place.
According to the application, applicant is located in North Carolina. Moreover, applicant’s specimen states that the services being offered feature “the first registry of its kind in the State of North Carolina.” Thus, the services for which applicant seeks registration originate in the geographic place identified in the mark.
Therefore, all three factors have been satisfied, and the wording “NC REGISTRY FOR BRAIN HEALTH” is not inherently distinctive and is an unregistrable part of the applied-for mark because it is primarily geographically descriptive of the origin of applicant’s services. See In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1451-52 (Fed. Cir. 1987); TMEP §§1210.01(a), 1210.06(a), 1213.03(a).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “NC REGISTRY FOR BRAIN HEALTH” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
Applicant may not claim exclusive rights to terms that others may need to use to describe their services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). Therefore, failure to comply with a disclaimer requirement will result in a refusal to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
RESPONSE REQUIRED
For this application to proceed, applicant must:
(1) Respond to the Section 2(d) refusal by providing written arguments and evidence against the refusal; and
(2) Enter a disclaimer of “NC REGISTRY FOR BRAIN HEALTH”.
Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Click to file a response to this non-final Office action
Andrew Leaser
Trademark Examining Attorney
Law Office 117
(571) 272-1911
andrew.leaser@uspto.gov
RESPONSE GUIDANCE
Missing the response deadline to this letter will cause the application to abandon. A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.
Informal communications will not be accepted as responses to Office actions and will not be considered; therefore, do not respond to this Office action by telephone or e-mail. All informal communications relevant to this application will be placed in the official application record.
Responses signed by an unauthorized party are not accepted and can cause the application to abandon. If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant. If applicant has an attorney, the response must be signed by the attorney.
TEAS PLUS 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 must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(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); TMEP §819. TEAS Plus applicants who do not meet these requirements must submit an additional processing fee of $125 per class of services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c); TMEP §819.04. However, in certain situations, TEAS Plus applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
If needed, find contact information for the supervisor of the office or unit listed in the signature block.
