| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88474598 |
| LAW OFFICE ASSIGNED | LAW OFFICE 128 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88474598/mark.png |
| LITERAL ELEMENT | HIGH POINT |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Dear Examining Attorney Scleidorovich:
This Amendment/Request for Reconsideration is filed in response to the Office action dated September 5, 2019 for the mark HIGH POINT. In that Office action, the USPTO rejected Applicant’s application under Trademark Act Section 2(d), 15 U.S.C. §1052(d) as causing a likelihood of confusion with the trademark of Registration No. 2,392,060 for the mark HIGH POINTE. Applicant concedes that the marks are phonetically the equivalent; however Applicant respectfully submits that there is no likelihood of confusion between the applied for mark and the ‘060 registration. In particular, Applicant’s services are listed as “Dental hygienist services; Dental services, namely, performing restorative and cosmetic procedures; Dentistry services; Cosmetic dentistry; Pediatric dentistry” whereas the ‘060 registration is for “Healthcare Specialty Services, Medical and Healthcare Research, providing Medical Information, Medical Consulting and Surgery Services.” Applicant is a dentist whereas the ‘060 mark relates to non-dental services. Applicant and the ‘060 registration owner are both professional providing licensed procedures. The consuming public is not likely to confuse a dental practice with a medical practice. In particular, the highly sophisticated nature of the services provided by both Applicant and the ‘060 registration owner removes any potential likelihood of confusion issue. In particular, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (finding that, "even in the case of the least sophisticated purchaser, a decision as important as choosing a senior living community will be made with some thought and research, even when made hastily"); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006). Applicant submits that the same level of care is exercised by both the consumer of dental services and the consumer of medical services. Finally, while Applicant concedes that each application filed in the USPTO is reviewed independently, U.S. Registration No.: 5,880,735 for the mark HIGHPOINT HEALTH for “medical services” is owned by a different entity than the owner of the ‘060 registration. This demonstrates that no one single party has broad protection over the terms HIGH and POIINT in the medical field. Applicant requests that their application be forwarded to publication wherein all interested parties, including the owner of the No. 2,392,060 registration, will be given the opportunity to oppose Applicant’s application should they feel such action is appropriate. Applicant respectfully requests that the following Amendments be acknowledged. If, however, any outstanding issues remain, Applicant urges the Trademark Office to telephone Applicant’s attorney so that the same may be resolved.
Respectfully submitted,
Justin Lampel |
|
| ATTORNEY SECTION (current) | |
| NAME | Justin Lampel |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | LAMPEL & ASSOCIATES, P.C. |
| STREET | 555 SKOKIE BLVD #500 |
| CITY | NORTHBROOK |
| STATE | Illinois |
| POSTAL CODE | 60062 |
| COUNTRY | US |
| PHONE | 847-845-4345 |
| FAX | 8477250077 |
| jlampel@lampellaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | HPD-T-19-01 |
| ATTORNEY SECTION (proposed) | |
| NAME | Justin Lampel |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | LAMPEL & ASSOCIATES, P.C. |
| STREET | 555 SKOKIE BLVD #500 |
| CITY | NORTHBROOK |
| STATE | Illinois |
| POSTAL CODE | 60062 |
| COUNTRY | United States |
| PHONE | 847-845-4345 |
| FAX | 8477250077 |
| jlampel@lampellaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | HPD-T-19-01 |
| CORRESPONDENCE SECTION (current) | |
| NAME | JUSTIN LAMPEL |
| FIRM NAME | LAMPEL & ASSOCIATES, P.C. |
| STREET | 555 SKOKIE BLVD #500 |
| CITY | NORTHBROOK |
| STATE | Illinois |
| POSTAL CODE | 60062 |
| COUNTRY | US |
| PHONE | 847-845-4345 |
| FAX | 8477250077 |
| jlampel@lampellaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | HPD-T-19-01 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Justin Lampel |
| FIRM NAME | LAMPEL & ASSOCIATES, P.C. |
| STREET | 555 SKOKIE BLVD #500 |
| CITY | NORTHBROOK |
| STATE | Illinois |
| POSTAL CODE | 60062 |
| COUNTRY | United States |
| PHONE | 847-845-4345 |
| FAX | 8477250077 |
| jlampel@lampellaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | HPD-T-19-01 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Justin Lampel/ |
| SIGNATORY'S NAME | Justin Lampel |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 12/03/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Dec 03 21:51:36 EST 2019 |
| TEAS STAMP | USPTO/ROA-XXXX:XXXX:XXXX: XXXX:XXXX:XX:XXXX:XXXX-20 191203215136049819-884745 98-70053b749e7f238e349b63 2612896962e59329fd35d55c9 930ded1442a9787896-N/A-N/ A-20191203214918660403 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Dear Examining Attorney Scleidorovich:
This Amendment/Request for Reconsideration is filed in response to the Office action dated September 5, 2019 for the mark HIGH POINT. In that Office action, the USPTO rejected Applicant’s application under Trademark Act Section 2(d), 15 U.S.C. §1052(d) as causing a likelihood of confusion with the trademark of Registration No. 2,392,060 for the mark HIGH POINTE.
Applicant concedes that the marks are phonetically the equivalent; however Applicant respectfully submits that there is no likelihood of confusion between the applied for mark and the ‘060 registration. In particular, Applicant’s services are listed as “Dental hygienist services; Dental services, namely, performing restorative and cosmetic procedures; Dentistry services; Cosmetic dentistry; Pediatric dentistry” whereas the ‘060 registration is for “Healthcare Specialty Services, Medical and Healthcare Research, providing Medical Information, Medical Consulting and Surgery Services.”
Applicant is a dentist whereas the ‘060 mark relates to non-dental services. Applicant and the ‘060 registration owner are both professional providing licensed procedures. The consuming public is not likely to confuse a dental practice with a medical practice.
In particular, the highly sophisticated nature of the services provided by both Applicant and the ‘060 registration owner removes any potential likelihood of confusion issue. In particular, circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1039 (TTAB 2016) (finding that, "even in the case of the least sophisticated purchaser, a decision as important as choosing a senior living community will be made with some thought and research, even when made hastily"); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006). Applicant submits that the same level of care is exercised by both the consumer of dental services and the consumer of medical services.
Finally, while Applicant concedes that each application filed in the USPTO is reviewed independently, U.S. Registration No.: 5,880,735 for the mark HIGHPOINT HEALTH for “medical services” is owned by a different entity than the owner of the ‘060 registration. This demonstrates that no one single party has broad protection over the terms HIGH and POIINT in the medical field.
Applicant requests that their application be forwarded to publication wherein all interested parties, including the owner of the No. 2,392,060 registration, will be given the opportunity to oppose Applicant’s application should they feel such action is appropriate.
Applicant respectfully requests that the following Amendments be acknowledged. If, however, any outstanding issues remain, Applicant urges the Trademark Office to telephone Applicant’s attorney so that the same may be resolved.
Respectfully submitted,
Justin Lampel