To: | Castle Biosciences Incorporated (jdpetruzzi@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88471422 - CASTLE BIOSCIENCES - N/A |
Sent: | August 19, 2019 04:41:10 PM |
Sent As: | ecom108@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88471422
Mark: CASTLE BIOSCIENCES
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Correspondence Address:
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Applicant: Castle Biosciences Incorporated
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Reference/Docket No. N/A
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: August 19, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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) Refusal – Likelihood of Confusion
- Disclaimer Required
- Attorney Bar Information Required
- Attorney Attestation Required
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2095163 (CASTLE DENTAL CENTERS), 3031386 (CASTLE DENTAL), 3766361 (CASTLE OF CARE), 3989296 (CASTLE CONNOLLY TOP DOCTORS), and 3989297 (CASTLE CONNOLLY). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
The applicant’s mark is “CASTLE BIOSCIENCES”, in standard character form, for “Providing medical diagnostic testing services for diagnostic and prognostic purposes; and providing medical information” in International Class44.
The registrants’ marks are:
“CASTLE DENTAL CENTERS” U.S. Registration No. 2095163, in standard character form, for “dental and oral hygiene services” in International Class 44.
“CASTLE DENTAL” U.S. Registration No. 3031386, in standard character form, for “dental care, namely, orthodontic services, oral surgery, and dental hygienist services” in International Class 44.
“CASTLE OF CARE” U.S. Registration No. 3766361, in standard character form, for “Medical and health care services, namely, hospital, inpatient and outpatient services, clinical services, rehabilitation services, physician services, medical testing services, nursing care services, and medical diagnostic services” in International Class 44.
“CASTLE CONNOLLY TOP DOCTORS” U.S. Registration No. 3989296, in standard character form, for “services, namely, providing medical information and information on physicians via the internet” in International Class 44.
“CASTLE CONNOLLY” U.S. Registration No. 3989297, in standard character form, for “services, namely, providing medical information and information on physicians via the internet” in International Class 44.
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. In this case, the following factors are the most relevant: similarity of the marks and similarity of the services.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. 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)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
“CASTLE DENTAL CENTERS” U.S. Registration No. 2095163 & “CASTLE DENTAL” U.S. Registration No. 3031386
In this case, the applied-for mark, “CASTLE BIOSCIENCES”, and the registered marks, “CASTLE DENTAL CENTERS” and “CASTLE DENTAL”, are similar in appearance and sound, as the marks begin with the identical term, “CASTLE”, creating a similar overall commercial impression.
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 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). In this case, the registrant has disclaimed the wording “DENTAL CENTERS” and “DENTAL”, rendering the term “CASTLE” the dominant element of the registered marks.
In the present case, the attached evidence from the Collins English Dictionary (www.collinsdictionary.com), shows that the word “BIOSCIENCE” is defined as “any science that deals with the functions or problems of living organisms.” As such, the wording “BIOSCIENCES” merely describes the applied-for services, namely, diagnostic testing and providing information in the field of life science. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, rendering “CASTLE” the more dominant element of the applied-for mark.
Therefore, the marks are confusingly similar.
“CASTLE OF CARE” U.S. Registration No. 3766361, “CASTLE CONNOLLY TOP DOCTORS” U.S. Registration No. 3989296 & “CASTLE CONNOLLY” U.S. Registration No. 3989297
In this case, the applied-for mark, “CASTLE BIOSCIENCES”, and the registered marks, “CASTLE OF CARE”, “CASTLE CONNOLLY TOP DOCTORS”, and “CASTLE CONNOLLY”, are similar in appearance and sound, as both the marks begin with the identical term, “CASTLE”, creating a similar overall commercial impression.
Therefore, the marks are confusingly similar.
Similarity of the Services
Determining likelihood of confusion is based on the description of the 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)).
“CASTLE DENTAL CENTERS” U.S. Registration No. 2095163 & “CASTLE DENTAL” U.S. Registration No. 3031386
The attached Internet evidence, consisting of the websites of Eastland Dental Center (www.eastlanddental.com), Kilgore Family Dentist (www.kilgorefamilydentist.com), and Preferred Family Dental (www.pfdent.com), establishes that the same entity commonly provides both dental and orthodontic services and also medical diagnostic testing services and medical information and markets the services under the same mark. Thus, applicant’s and registrant’s 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).
“CASTLE OF CARE” U.S. Registration No. 3766361
In this case, the registration uses broad wording to describe “medical and health care services, namely, medical testing services and medical diagnostic services,” which presumably encompasses all services of the type described, including applicant’s more narrow “providing medical diagnostic testing services for diagnostic and prognostic purposes.” 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 aforementioned 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 services 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)). Thus, applicant’s and registrant’s services are related.
“CASTLE CONNOLLY TOP DOCTORS” U.S. Registration No. 3989296 & “CASTLE CONNOLLY” U.S. Registration No. 3989297
In this case, the application uses broad wording to describe “providing medical information,” which presumably encompasses all services of the type described, including registrant’s more narrow “providing medical information and information on physicians via the internet.” 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 aforementioned 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 services 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)). Thus, applicant’s and registrant’s services are related.
“CASTLE OF CARE” U.S. Registration No. 3766361, “CASTLE CONNOLLY TOP DOCTORS” U.S. Registration No. 3989296 & “CASTLE CONNOLLY” U.S. Registration No. 3989297
The attached Internet evidence, consisting of the websites of JenCare Senior Medical Center (www.jencaremed.com), Mercy Personal Physicians (http://mdmercy.com), and Bay Area OB/GYN (www.baobgyn.com), establishes that the same entity commonly provides both health care services and medical information and also medical diagnostic testing services and markets the services under the same mark. Thus, applicant’s and registrant’s 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).
Because applicant’s and registrants’ marks are similar and the services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “BIOSCIENCES” because it is not inherently distinctive. This unregistrable term is at best merely descriptive of a characteristic of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from the Collins English Dictionary (www.collinsdictionary.com), shows that the word “BIOSCIENCE” is defined as “any science that deals with the functions or problems of living organisms.” As such, the wording “BIOSCIENCES” merely describes the applied-for services, namely, diagnostic testing and providing information in the field of life science.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BIOSCIENCES” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ATTORNEY BAR INFORMATION REQUIRED
ATTORNEY ATTESTATION REQUIRED
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
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/Anna C. Burdecki/
Anna C. Burdecki
Trademark Examining Attorney
Law Office 108
Phone: (571)270-1941
anna.burdecki@uspto.gov
RESPONSE GUIDANCE