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:  February 22, 2021

 

 

The referenced application has been reviewed by the assigned trademark examining attorney, and the voluntary amendment dated October 12, 2020 has been entered.  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.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal as to International Class 44 Only
• Prior-Filed Application Advisory
• Mark Drawing Requirement
• Mark Description Amendment
• Identification of Goods and Services

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL AS TO INTERNATIONAL CLASS 44 ONLY

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4288713 and 4651505.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The stated refusal refers to International Class 44 only and does not bar registration in the other class.

 

Applicant’s mark is ICARE (stylized) for, in relevant part:

• International Class 44: Viruses testing services for medical use, namely, by collecting, preserving and protecting saliva, using PCR (polymerase chain reaction) and electrophoresis assay analyses for the diagnosis of viruses; Medical diagnostic testing, monitoring, and reporting services; Medical testing for diagnostic or treatment purposes; Consulting services in the fields of diagnostic medical testing

 

The cited registrations are

1.  ICARE WOMEN’S HEALTH CENTER, Reg. No. 4288713, for Medical services, namely, obstetrics and gynecology, owned by Lisa Chang.

2.     I CARE I CARE CLINIC, Reg. No. 4651505, for, in relevant part, medical clinics; health care, owned by I Care Clinic.

 

Standard of Law

 

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 goods and/or 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

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).

 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

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/or services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). Similarly, matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

Here, applicant’s ICARE DX & Design, ICARE WOMEN’S HEALTH CENTER, and I CARE I CARE CLINIC share the same dominant phrase “ICARE”, resulting in similar meanings, appearances, sounds, and resulting similar commercial impressions.

 

In applicant’s mark, “DX” would be seen as the abbreviation of diagnosis or diagnostic and therefore would describe the nature of applicant’s goods and services as being diagnostic devices or services, rendering ICARE the dominant element in creating the mark’s commercial impression. http://www.merriam-webster.com/dictionary/dx; http://www.medpagetoday.com/publichealthpolicy/publichealth/83303 (using “DX” to refer to diagnoses);  http://www.finddx.org/covid-19/ (“DX” used as abbreviation for “diagnostics” in relation to medical testing). With respect to the registered marks “WOMEN’S HEALTH CENTER” and “CLINIC” are disclaimed, such that ICARE is the dominant element in creating the commercial impression of that mark. Due to the combination of the identical dominant element with wording with descriptive meanings in the medical field, applicant’s and registrant’s mark have similar meanings related to internet-related medical care or services.

 

Moreover, the stylization of applicant’s mark does not serve to distinguish the marks because registrant’s mark is in standard characters. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Therefore, the marks have closely similar appearances, sound, meanings, and overall commercial impressions, such that this factor weighs in favor of a likelihood of confusion.

 

Comparison of the Services, Trade Channels, and Classes of Consumers

 

Applicant’s services are: Viruses testing services for medical use, namely, by collecting, preserving and protecting saliva, using PCR (polymerase chain reaction) and electrophoresis assay analyses for the diagnosis of viruses; Medical diagnostic testing, monitoring, and reporting services; Medical testing for diagnostic or treatment purposes; Consulting services in the fields of diagnostic medical testing

 

The registered services are: Medical services, namely, obstetrics and gynecology (ICARE WOMEN’S HEALTH CENTER) and health care (I CARE I CARE CLINIC).

 

The compared goods and/or 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).

 

As to the medical services identified in the ICARE WOMEN’S HEALTH CENTER, these services are related to applicant’s medical testing services because these services are commonly rendered by the same healthcare organizations, and obstetrics and gynecology medical services often include testing and diagnostic testing. The attached Internet evidence, consisting of printouts of websites of medical centers which offer the medical services in the ICARE WOMEN’S HEALTH CENTER registration, establishes that the same entity commonly manufactures, produces, or provides the relevant services and markets services under the same mark and that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See http://www.universityhealthsystem.com/services/gynecology/testing#:~:text=We%20offer%20routine%20screenings%20like,Hormonal%20Abnormalities (UNIVERSITY HEALTH system offering gynecology testing); http://www.urmc.rochester.edu/encyclopedia/collection.aspx?subtopicid=30935 (same); http://www.medicalnewstoday.com/articles/324292#when-should-someone-see-an-ob-gyn (explaining that OBGYN services include medical testing and diagnostic functions). 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).

 

Similarly, diagnostic medical testing is considered part of healthcare services, and therefore, would be rendered by the same entities providing health care services. http://familypracticecenterpc.com/what-diagnostic-testing-does-family-practice-center-offer/; http://www.virginiahospitalcenter.com/medical-services/heart-vascular-care/diagnostic-tests/, http://www.virginiahospitalcenter.com/about-us/at-a-glance/ (health care organization offering diagnostic testing); http://www.brighamandwomens.org/patients-and-families/patients/laboratory-and-diagnostic-tests, http://www.brighamandwomens.org/.

 

Therefore, applicant’s services are related to registrants’ services which weighs in favor of a likelihood of confusion.

 

Conclusion

 

In sum, the similarities between the marks’ appearances, sounds, meanings, and overall commercial impressions combined with the close relationship between the goods and/or services, trade channels and consumers results in a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.

 

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

 

SEARCH OF USPTO DATABASE OF MARKS – PRIOR-FILED APPLICATION

 

The filing dates of pending U.S. Application Serial No. 88896827 precede applicant’s filing date.  See attached referenced application.  If the mark in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  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 marks in the referenced applications.  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.

 

DRAWING REQUIREMENT

 

The drawing is not acceptable because it will not create a high quality image when reproduced.  See TMEP §807.04(a).  Specifically, the drawing contains a yellow rectangle above the letter “R”, which appears to be the result of a low quality image rather than an intentional design element.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52. 

 

Therefore, applicant must submit a new drawing showing a clear depiction of the mark.  All lines must be clean, sharp and solid, and not fine or crowded.  37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a).  Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark.  37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.

 

For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.

 

AMENDED MARK DESCRIPTION

 

Applicant must submit an amended description of the mark because the current one contains extraneous information that is unnecessary, as well as omits a yellow rectangle above the letter “R”.  37 C.F.R. §2.37; see TMEP §§808.01, 808.02.  Descriptions must be accurate and identify all the literal and design elements in the mark.  See 37 C.F.R. §2.37; TMEP §§808 et seq.  To the extent that the yellow rectangle is the result of a low quality image, the proposed amended mark description omits this element.

 

The following description is suggested, if accurate:  The mark consists of the stylized wording “ICARE DX”.

 

IDENTIFICATION OF GOODS AND SERVICES

 

Applicant must clarify the following wording in the identification of goods and/or services in International Class(es) 10 because it is indefinite for the reasons set out below.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

Class 10: Medical diagnostic systems used to measure and test saliva and other biological samples and generate diagnostic test results, comprised of analyzers, computer hardware, software and documentation for analyzing, testing of infectious disease, viral disease and respiratory diseases; this wording requires clarification as to (1) the type of “analyzers,” (2) whether the software is recorded or downloadable, and (3) what the “documentation” is, whether printed instruction manuals, downloadable instruction manuals.

 

Applicant may substitute the following wording, if accurate (the wording in bold has been added by the examining attorney for the purposes of clarification/example, and may be replaced with other accurate wording that follows the level of specificity as required by the Office):

International Class 10:

Medical diagnostic device for testing for viruses; Medical diagnostic systems used to measure and test saliva and other biological samples and generate diagnostic test results, comprised of {indicate what is being tested, e.g., saliva and body fluid} analyzers, computer hardware, recorded software and documentation in the nature of printed instruction manuals for analyzing, testing of infectious disease, viral disease and respiratory diseases; Medical diagnostic apparatus for the detection of infectious disease, viral disease and respiratory diseases; Medical apparatus and instruments for test and analyzing of body fluids such as saliva   

International Class 44: no change

Viruses testing services for medical use, namely, by collecting, preserving and protecting saliva, using PCR (polymerase chain reaction) and electrophoresis assay analyses for the diagnosis of viruses; Medical diagnostic testing, monitoring, and reporting services; Medical testing for diagnostic or treatment purposes; Consulting services in the fields of diagnostic medical testing

Scope Advisory

 

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

 

RESPONSE GUIDELINES

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by a U.S.-licensed attorney authorized to practice before the USPTO, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a).  If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  In all cases, the signer must be identified by first and last name and title or position.  37 C.F.R. §2.193(d).

 

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(s) and/or requirement(s) 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.    

 

 

Erica Dickey

/Erica Jeung Dickey/

Trademark Examining Attorney

Law Office 112

571.270.3517

erica.dickey@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 February 22, 2021 for

U.S. Trademark Application Serial No. 90208812

 

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. 

 

 

Erica Dickey

/Erica Jeung Dickey/

Trademark Examining Attorney

Law Office 112

571.270.3517

erica.dickey@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 February 22, 2021, 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.”