To: | Aledade, Inc. (ipprosecutionsf@orrick.com) |
Subject: | U.S. Trademark Application Serial No. 88746292 - CORE 4 - 44806.1 |
Sent: | April 02, 2020 11:28:30 AM |
Sent As: | ecom125@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88746292
Mark: CORE 4
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Correspondence Address: |
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Applicant: Aledade, Inc.
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Reference/Docket No. 44806.1
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: April 02, 2020
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. 3937028. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant’s mark is CORE 4 (in standard characters) for “Business and management consulting for healthcare providers and related businesses; business assistance services, namely, assisting health care facilities with patient follow-up to improve patient outcomes and satisfaction through the use of telecommunication devices and computer networks with automated interaction and data feedback, monitoring and compilation capacity; business services provided to the healthcare industry, namely, the collection, reporting, and analysis of healthcare quality data for business purposes; consulting in the fields of healthcare operations management and hospital operations management; consulting services in the field of patient relationship management for healthcare providers; electronic data collection and data submission services for business purposes in the fields of medicine and healthcare; healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; business management and consulting services for the health care industry, namely, providing industry expertise and supplier partnerships; cost containment services in the field of health care; medical cost management services” in International Class 35.
Registrant’s mark is HBM CORE FOUR (in standard characters) for “Business assistance, management and information services” in International Class 35.
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
Applicant’s mark is CORE 4 (in standard characters).
Registrant’s mark is HBM CORE FOUR (in standard characters).
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); 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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In the present case, applicant’s mark and registrant’s mark create similar commercial impressions because each of the marks feature the nearly identical wording “CORE 4” / “CORE FOUR”. Though applicant’s mark uses a variant in spelling of the term “4”, applicant’s “4” and registrant’s “FOUR” are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Moreover, incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are nearly identical in part as to “CORE 4” / “CORE FOUR”. As such, consumers encountering the marks may believe that applicant’s mark merely identifies a line of services from the same source as registrant’s mark.
Accordingly, applicant’s and registrant’s marks are confusingly similar.
Relatedness of the Services
Applicant’s services are for “Business and management consulting for healthcare providers and related businesses; business assistance services, namely, assisting health care facilities with patient follow-up to improve patient outcomes and satisfaction through the use of telecommunication devices and computer networks with automated interaction and data feedback, monitoring and compilation capacity; business services provided to the healthcare industry, namely, the collection, reporting, and analysis of healthcare quality data for business purposes; consulting in the fields of healthcare operations management and hospital operations management; consulting services in the field of patient relationship management for healthcare providers; electronic data collection and data submission services for business purposes in the fields of medicine and healthcare; healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; business management and consulting services for the health care industry, namely, providing industry expertise and supplier partnerships; cost containment services in the field of health care; medical cost management services” in International Class 35.
Registrant’s services are for “Business assistance, management and information services” in International Class 35.
The compared 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).
In this case, the registration uses broad wording to describe “Business assistance, management and information services”, which presumably encompasses all services of the type described, including applicant’s more narrow “Business and management consulting for healthcare providers and related businesses; business assistance services, namely, assisting health care facilities with patient follow-up to improve patient outcomes and satisfaction through the use of telecommunication devices and computer networks with automated interaction and data feedback, monitoring and compilation capacity; business services provided to the healthcare industry, namely, the collection, reporting, and analysis of healthcare quality data for business purposes; consulting in the fields of healthcare operations management and hospital operations management; consulting services in the field of patient relationship management for healthcare providers; electronic data collection and data submission services for business purposes in the fields of medicine and healthcare; healthcare management service organization (MSO) services, namely, providing practice organization, management and administrative support services to individual physicians or small group practices; business management and consulting services for the health care industry, namely, providing industry expertise and supplier partnerships; cost containment services in the field of health care; medical cost management services”. 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 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.
Section 2(d) Refusal – Conclusion
The marks are similar in overall commercial impression, and the services are highly related. It is likely that a consumer would mistakenly believe applicant’s services are offered by registrant or vice versa. For these reasons, registration is refused pursuant to Section 2(d) of the Trademark Act.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Melissa Sturman/
Melissa Sturman
Trademark Examining Attorney
Law Office 125
(571) 272-2781
melissa.sturman@uspto.gov
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