To: | Innovative Perioperative Technologies, L ETC. (bnabulsi@mccarter.com) |
Subject: | U.S. Trademark Application Serial No. 88780207 - LIMELIGHT - 129662-00003 |
Sent: | May 01, 2020 09:11:01 AM |
Sent As: | ecom104@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88780207
Mark: LIMELIGHT
|
|
Correspondence Address: |
|
Applicant: Innovative Perioperative Technologies, L ETC.
|
|
Reference/Docket No. 129662-00003
Correspondence Email Address: |
|
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: May 01, 2020
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.
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In the present case, the applicant seeks registration of LIMELIGHT in standard character form for:
· “Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process, including capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management; computer hardware in the nature of wireless transceivers; firmware for wireless transceivers; near field communication tags for storing information about medical devices that can be transmitted to wireless transceivers and software applications” in Class 9; and
· “Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process, including capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management” in Class 42.
The cited registered mark is LIMELIGHT PERFORMANCE with a design element for “Computer application software for tablets/mobile phones, namely, software for measuring performance of a service sector” in Class 9.
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 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.
Comparison 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)), 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).
Here, applicant’s mark is LIMELIGHT in standard character form, and registrant’s mark is LIMELIGHT PERFORMANCE with a design element. In this case, the applied-for mark, LIMELIGHT, is identical in sound and highly similar in appearance and commercial impression to the dominant word portion of the registered mark, LIMELIGHT.
In this case, the registered mark contains a design element. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Nothing about the design element changes the meaning or commercial impression of the shared wording, which is LIMELIGHT.
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 goods and 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). Here, registrant disclaimed the wording “PERFORMANCE” apart from its mark as shown. Thus, the examining attorney must closely examine the dominant portion of the registered mark, LIMELIGHT, against the applied-for mark, LIMELIGHT.
The only differences between the respective marks are the descriptive wording “PERFORMANCE” and the design element in the registered mark. These differences do not change the identical nature in sound and highly similar nature in appearance and commercial impression between the applied-for mark, LIMELIGHT, and the dominant word portion of the registered mark, LIMELIGHT.
Considering the above, the marks are sufficiently similar to cause a likelihood of confusion under Trademark Act Section 2(d).
Relatedness of the Goods and Services
In this case, applicant’s mark is LIMELIGHT in standard character form for, inter alia:
· “Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process” in Class 9; and
· “Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process” in Class 42.
The cited registered mark is LIMELIGHT PERFORMANCE with a design element for “Computer application software for tablets/mobile phones, namely, software for measuring performance of a service sector” in Class 9.
Here, the respective goods and services are closely related because they travel through similar channels of trade to the same class of consumer. The examining attorney has attached Internet website evidence demonstrating that “Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process,” “Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process,” and “Computer application software for tablets/mobile phones, namely, software for measuring performance of a service sector” are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and services and markets the goods and services under the same mark and that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and 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). See attached evidence from:
· TMASYSTEMS:
o http://tmasystems.com/industries/healthcare/;
o http://tmasystems.com/services/tma-implementation-portal-iportal/
· Tiger Connect:
o http://get.tigerconnect.com/capterra-demo-page-step1/;
o http://tigerconnect.com/newsroom/tigertext-ties-cloud-contact-software-provider/;
· TeamDesk:
o http://www.teamdesk.net/medical_practice_manager.
Thus, upon encountering LIMELIGHT for “Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process” and “Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process,” and LIMELIGHT PERFORMANCE for “Computer application software for tablets/mobile phones, namely, software for measuring performance of a service sector,” consumers are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source. As such, registration must be refused under Trademark Act Section 2(d).
IDENTIFICATION OF GOODS AND SERVICES
The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d).
Finally, the following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions in bold and/or brackets so long as they are accurate. Applicant should note that the brackets indicate where applicant must insert specific types of goods or services. The brackets should NOT appear in the amended identification; only the specific goods or services inserted by applicant. Applicant need not amend identifications other than where specified.
Applicant may adopt the following wording, if accurate:
Class 9: Downloadable computer software platform for providing data-driven insights into all aspects of the perioperative process, including
namely, capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility, compliance adherence to hospital and
regulatory policies, analytics and dashboard capabilities, and billing management; computer hardware in the nature of wireless transceivers; [specify downloadable or recordable
computer] firmware for [further clarify function of firmware, e.g., operating systems] for wireless transceivers; near field communication tags for storing information about
medical devices that can be transmitted to wireless transceivers and software applications
Class 42: Providing temporary use of non-downloadable software for providing data-driven insights into all aspects of the perioperative process, including namely, capabilities for surgery scheduling, asset inventory management for tracking medical devices within and outside a medical facility,
compliance adherence to hospital and regulatory policies, analytics and dashboard capabilities, and billing management; Providing temporary use of on-line non-downloadable
firmware for [further clarify function of firmware, e.g., operating systems] for wireless transceivers
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal and requirement in this Office action. See TMEP §§705.02, 709.06.
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.
/Andrew Crowder-Schaefer/
Trademark Examining Attorney
Law Office 104
(571) 272-0087
andrew.crowderschaefer@uspto.gov
RESPONSE GUIDANCE