United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88607386
Mark: GBT PILLAR
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Correspondence Address: SHEPPARD MULLIN RICHTER & HAMPTON LLP
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Applicant: Global Blood Therapeutics, Inc.
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Reference/Docket No. 57LZ-263366
Correspondence Email Address: |
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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
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).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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
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.
PRIOR FILED APPLICATION ADVISORY
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 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
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
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