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:  December 17, 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.

 

SEARCH OF OFFICE’S DATABASE OF MARKS

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Prior Filed Application Advisory
• Identification Requirement – Class 36 Identification of Services Indefinite and Overbroad

 

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. 4907565.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

The applied-for mark is GBT PILLAR, in standard characters, and identifies the following services:

 

International Class 35:

Pharmacy referral services provided via a global computer network; specialized retail pharmacy referral services for patients with particular medical conditions; promoting public awareness of the interests of sickle cell disease patients

 

International Class 36:

Prescription drug claims administration services, namely, facilitating authorization of health care insurance coverage, insurance claim submission and payer reimbursement for prescription drugs; providing patients who have been prescribed a course of therapy that involves prescription pharmaceuticals with information on insurance benefits regarding pharmaceuticals, medical coverage, reimbursement options and financial support for that therapy

 

International Class 44:

Providing medical information regarding sickle cell disease, therapeutic properties of pharmaceuticals, and medical treatment for sickle cell disease via a website and call center; providing health information; providing a website featuring information in the medical and health fields; medical services, namely, assisting in the monitoring, adherence and compliance of patients to medical treatments

 

The registered marks is PILLAR DENTAL, in standard characters, for “Dentist services” 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 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 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

 

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).

 

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., __ F.3d __, 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).

 

In this case, the marks create a substantially similar commercial impression because both marks comprise the term PILLAR. The term is spelled identically in the applied-for and registered marks. Thus, the shared term renders the marks similar in terms of sound and appearance. Further, the term has the same meaning in the marks, referring to a column or support. Thus, the marks are confusingly similar.

 

Further, the addition of the term DENTAL in the registered mark does not obviate confusion. Specifically, the term DENTAL is generic for the identified services. 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). Thus, the term PILLAR is the most dominant element of the registered mark. Accordingly, consumers may confused as to the source of applicant’s and registrant’s services because both are provided under the PILLAR mark.

 

For the forgoing reasons, the marks are confusingly similar.

 

Relatedness of the Services

 

Next, the 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).

 

When analyzing an applicant’s and registrant’s services for similarity and relatedness, that determination is based on the description of the services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, applicant’s pharmacy referral services in Class 35 are highly related to registrant’s dental services in Class 44. The attached Internet evidence, consisting of screenshots from OHSU, Kaiser Permanente, and Open Door establishes that the same entity commonly provides the relevant services and markets the services under the same mark. See http://www.ohsu.edu/dental-clinics/dental-services-patients, http://www.ohsu.edu/pharmacy/patients, http://kaiserpermanentedentalnw.org/, http://healthy.kaiserpermanente.org/health/care/!ut/p/a0/HclNDoIwEEDhs3iAZkoJiu5Kgxdwoe1uMlRopD8ZkYTbKy7f98DBA1zCNYy4hJxw_rUlnxbPF8qrZz-I6IdA__0Wz8zxMyNvcAcH7lVuHpkmsGVCjkjbroVxjAg2ZUFIk98NeQk0e7CqaYzpZC-0Vr2oqr4V52sthalkczoqqTtloMTY1lEfvjAqrpM!/, http://opendoorhealth.com/opendoor/services/dental/, http://opendoorhealth.com/opendoor/specialty-pharmacy-partners/. 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).

 

Further, applicant’s insurance services in Class 36 are highly related to registrant’s dental services in Class 44. The attached Internet evidence, consisting of screenshots from OHSU, Kaiser Permanente, and Aspen Dental establishes that the same entity commonly provides the relevant services and markets the services under the same mark. See http://www.ohsu.edu/dental-clinics/dental-services-patients, http://www.ohsu.edu/dental-clinics/costs-and-insurance, http://kaiserpermanentedentalnw.org/, http://healthy.kaiserpermanente.org/maryland-virginia-washington-dc/get-care/traveling/after-your-trip?kpSearch=claims, http://www.aspendental.com/dental-services, http://www.aspendental.com/dentist/oh/beavercreek/3286-pentagon-park-blvd/insurance-and-financing. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. 

 

And, applicant’ medical information services in Class 44 are highly related to registrant’s dental services in Class 44. The attached Internet evidence, consisting of screenshots from OHSU, Kaiser Permanente, Open Door, and Aspen Dental establishes that the same entity commonly provides the relevant services and markets the services under the same mark. See http://www.ohsu.edu/dental-clinics/dental-services-patients, http://www.ohsu.edu/dental-clinics/orthodontic-services, http://kaiserpermanentedentalnw.org/, http://healthy.kaiserpermanente.org/maryland-virginia-washington-dc/health-wellness, http://opendoorhealth.com/opendoor/services/dental/, http://opendoorhealth.com/opendoor/rxw/, http://www.aspendental.com/dental-services, http://www.aspendental.com/oral-health/cavities. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes. 

 

Therefore, the services are highly related.

 

For the forgoing reasons, the marks create substantially similar commercial impressions and the services are related such that they are likely to be encountered by the same consumers. Therefore, registration of the applied for mark is refused based on Section 2(d) of the Trademark Act.

 

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

 

PRIOR FILED APPLICATION ADVISORY

 

The filing date of pending U.S. Application Serial No. 88066844 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

IDENTIFICATION REQUIREMENT – CLASS 36 IDENTIFICATION OF SERVICES INDEFINITE AND OVERBROAD

 

Applicant has identified “Prescription drug claims administration services, namely, facilitating authorization of health care insurance coverage, insurance claim submission and payer reimbursement for prescription drugs; providing patients who have been prescribed a course of therapy that involves prescription pharmaceuticals with information on insurance benefits regarding pharmaceuticals, medical coverage, reimbursement options and financial support for that therapy” in International Class 36.

 

Applicant must clarify the wording “Prescription drug claims administration services, namely, facilitating authorization of health care insurance coverage, insurance claim submission and payer reimbursement for prescription drugs” in the identification because it is indefinite and too broad.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  This wording is indefinite because the nature of the services is unclear.  Further, this wording could identify services in more than one international class.  Specifically, the wording “facilitating authorization of health care insurance coverage” may encompass “Tracking and monitoring insurance compliance for business purposes” or “Data compiling and analyzing in the field of insurance” in Class 35, as well as insurance services in Class 36. 

 

Applicant may substitute the following wording, if accurate: 

 

International Class 35:

Prescription drug claims administration services, namely, facilitating authorization of health care insurance coverage in the nature of {specify Class 35 services, e.g. tracking and monitoring insurance compliance for business purposes}

 

International Class 36:

Prescription drug claims administration services, namely, insurance claims processing in the nature of claim processing and payer reimbursement processing for prescription drugs; providing patients who have been prescribed a course of therapy that involves prescription pharmaceuticals with information on insurance benefits regarding pharmaceuticals, medical coverage, reimbursement options and financial support for that therapy

 

Identification Amendment Advisories

 

Applicant may amend the identification to clarify or limit the services, but not to broaden or expand the 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 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.

 

ASSISTANCE

 

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 and requirements 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.    

 

 

/Rebecca Eubank/

Rebecca Eubank

Examining Attorney

Law Office 116

571-270-5577

rebecca.eubank@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 December 17, 2019 for

U.S. Trademark Application Serial No. 88607386

 

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. 

 

 

/Rebecca Eubank/

Rebecca Eubank

Examining Attorney

Law Office 116

571-270-5577

rebecca.eubank@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 December 17, 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.”