Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  September 05, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

 

• Section 2(d) Likelihood of Confusion Refusal
• Amendment to the Identification of Services Required
• Amendment to the Description of Mark

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5705993.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applicant has applied for the design mark having the literal element “EVOLUTIO” for services identified as “Design and produce human and animal anatomy figures for artistic, educational and medical reference.”

 

Registrant’s mark is a design mark having the literal element “EVOLUTIO” for the following goods and services:

 

Class 9: “Software for remote diagnostics of ophthalmology imaging; raster image processors for the operability of ophthalmology diagnostic images for laboratory use; image transmitting apparatus; image reproducing apparatus; image scanning apparatus, namely, scanners for ophthalmology diagnostic images for laboratory use; image recording apparatus; image setting apparatus, namely, optical coherance tomographers for diagnosing issues with the eyes, visual field analysers for use in diagnosing issues with the eyes, corneal topographers for use in diagnosing issues with the eyes, retinal cameras for use in diagnosing issues with the eyes, and anterior eye imaging devices for use in diagnosing issues with the eyes, all the foregoing for laboratory use; Computer programmes for image processing; software for processing digital images; apparatus for the optical processing of images, namely, central processing units for processing images; cloud computing software recorded on data media for the storage, management and manipulation of ophthalmology and medical records relating to ophthalmology, including the management, processing, storing and manipulation of ophthalmology diagnostic imaging and data; Downloadable cloud-computing software for the storage, management and manipulation of ophthalmology and medical records relating to ophthalmology, including the management, processing, storing and manipulation of ophthalmology diagnostic imaging and data; mobile software for the storage, management and manipulation of ophthalmology and medical records relating to ophthalmology, including the management, processing, storing and manipulation of ophthalmology diagnostic imaging and data; Computer application software for the storage, management and manipulation of ophthalmology and medical records relating to ophthalmology, including the management, processing, storing and manipulation of ophthalmology diagnostic imaging and data; Software and applications for mobile devices for the storage, management and manipulation of ophthalmology and medical records relating to ophthalmology, including the management, processing, storing and manipulation of ophthalmology diagnostic imaging and data; Software applications for use with mobile devices for the storage, management and manipulation of ophthalmology and medical records relating to ophthalmology, including the management, processing, storing and manipulation of ophthalmology diagnostic imaging and data; computer software to enable the transmission of photographs to mobile telephones; computer programs and software for image processing used for mobile phones;”

 

Class 10:“Diagnostic instruments for ophthalmology; apparatus for medical diagnostics for use in diagnosing issues with the eyes; nuclear medicine diagnostic imaging apparatus; diagnostic apparatus for medical purposes for use in diagnosing issues with the eyes; diagnostic instruments for medical use for use in diagnosing issues with the eyes; diagnostic, examination, and monitoring equipment for medical use for use in diagnosing issues with the eyes; medical diagnostic apparatus for medical purposes for use in diagnosing issues with the eyes; electromagnetic diagnostic imaging apparatus for medical use; apparatus for carrying-out diagnostic tests for medical purposes for use in diagnosing issues with the eyes; apparatus for analysing images for medical use for use in diagnosing issues with the eyes;”

 

Class 16: “Printed matter, namely, magazines in the field of eye medicine, optometry, science and ophthalmology; stationery; brochures in the field of eye medicine, optometry, science and ophthalmology; pamphlets in the field of eye medicine, optometry, science and ophthalmology; leaflets in the field of medicine, optometry, science and ophthalmology;”

 

Class 42: “Computer diagnostic services; product development of computer diagnostic apparatus; software as a service (SAAS) services, namely, hosting software for use by others for use in computer aided diagnostic testing for the interpretation and management of ophthalmology medical records, virtualised clinical interpretation, artificial intelligence and ophthalmology diagnostics; electronic scanning of ophthalmology medical records and diagnostic images; ophthalmology diagnostic image processing software design; ophthalmology diagnostic image processing software development; encryption of ophthalmology digital images and medical records; encoding of ophthalmology diagnostic digital images and medical records; electronic storage of ophthalmology diagnostic images and medical records; design and development of ophthalmology diagnostic image and recording processing software; cloud computing featuring computer database management software for use in the provision, management, integration, and delivery of ophthalmology services; providing virtual computer systems through cloud computing; programming of operating software for others for accessing and using a cloud computing network; data mining; design and development of software in the field of ophthalmology;” and  

 

Class 44: “Medical diagnostic testing services; ophthalmology and optometry services; human healthcare services; integrated medical care services with respect to opthalmologists, optometrists, and opticians”.

 

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.

 

SIMILARITY OF THE MARKS

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

With respect to the design elements in each of the marks, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Therefore, as applicant’s and registrant’s marks consist of the identical wording “EVOLUTIO,” the addition of design elements and stylization is insufficient to diminish the likelihood of confusion in the present case.

 

Due to the inclusion of identical wording in the marks, both applicant’s and registrant’s marks are nearly identical in sound, appearance, meaning, and overall commercial impression, and as such, the marks are considered similar for likelihood of confusion purposes.

 

RELATEDNESS OF THE GOODS AND SERVICES

 

In addition to the marks being substantially similar, the goods and/or services in this comparison are also related. In that regard, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses). Therefore, applicant’s medical diagnostic apparatus may be the subject of applicant’s design of anatomical figures for medical purposes. Therefore, as registrant’s goods may be featured or related to applicant’s services, the use of these nearly identical marks in connection therewith creates a likelihood of confusion.

 

The attached Internet evidence, consisting of webpages from Anatomy Warehouse, WhiteClouds, and 3B Scientific, establishes that the same entity commonly produces and provides the relevant goods and/or services and markets the goods and/or services under the same mark and the goods and/or services are similar or complementary in terms of purpose or function, namely, that each serve medical purposes.  Thus, applicant’s and registrant’s goods and/or services are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). See the attached internet evidence demonstrating that medical apparatus and printed materials pertaining to ophthalmology as well as design services relating to anatomical models commonly emanate from the same source such that use of nearly identical marks in connection therewith, as in the present case, creates a likelihood of confusion.

 

In that regard, the parties’ respective goods and/or services are related for likelihood of confusion purposes.

 

Upon encountering either applicant’s mark “EVOLUTIO” or registrant’s mark “EVOLUTIO” as used in connection with the parties’ goods and services, consumers are likely to be confused and mistakenly believe that the goods emanate from a single source. As such, applicant’s mark must be refused registration.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

AMENDMENT TO THE IDENTIFICATION OF SERVICES

 

The identification of services is indefinite and must be clarified because the wording does not clearly specify the nature of the design services being provided or the type of anatomy figures created thereby.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 

 

If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must amend the classification to International Class 42.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.

 

Full Suggested Identifications

 

In the recommendations below, the examining attorney sought to offer comprehensive proposals in instances where the identification of goods or recitations of services require clarification. Applicant is not required to accept these proposals, but any further changes must be within the scope of the identifications set out in the application. Please see below for a more thorough discussion.

 

Suggested amendments appear below. Please note that the suggestions are in bold, explanatory information is in brackets, suggested removal of language is in strikethrough typeface and notations are in italicized parentheses.

 

Applicant may substitute the following wording if acceptable and accurate:

 

In Class 42:

 

“Design and produce human and animal anatomy figures for artistic, educational and medical reference in the nature of design and development of computer-modeled versions of human beings and animals using computer animation for use in movies, television, internet, games and other applications”

 

OR

 

 “Design and produce human and animal anatomy figures for artistic, educational and medical reference in the nature of graphic design services”

 

OR

 

“Design and production services, namely, {specify nature of design and production services, e.g., design and development of tangible, design for others in the field of tangible, custom design and development of visual displays being, etc.} human and animal anatomy figures for artistic, educational and medical reference

 

Scope Advisory and Identification of Manual Reference

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

DESCRIPTION OF THE MARK

Applicant must submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

The following description is suggested, if accurate:  The mark consists of the wording “EVOLUTIO” in stylized uppercase lettering, with a DNA-like pattern formed from a stylized design of a double helix inside of the first letter O.

 

COMMUNICATIONS WITH THE TRADEMARK OFFICE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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 response to this nonfinal Office action  

 

 

/Lauren R. Roncoroni/

Lauren R. Roncoroni

Trademark Examining Attorney

Law Office 109

(571) 270-5661

Lauren.Roncoroni@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 and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• 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.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on September 05, 2019 for

U.S. Trademark Application Serial No. 88464791

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Lauren R. Roncoroni/

Lauren R. Roncoroni

Trademark Examining Attorney

Law Office 109

(571) 270-5661

Lauren.Roncoroni@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from September 05, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”