To: | The Trustees of the University of Pennsy ETC. (trademarks@schnader.com) |
Subject: | U.S. Trademark Application Serial No. 90339065 - PENN MEDICINE LANCASTER GENERAL - N/A |
Sent: | May 10, 2021 03:53:45 PM |
Sent As: | ecom105@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90339065
Mark: PENN MEDICINE LANCASTER GENERAL
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Correspondence Address: SCHNADER HARRISON SEGAL & LEWIS LLP 1600 MARKET STREET, SUITE 3600
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Applicant: The Trustees of the University of Pennsy ETC.
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Reference/Docket No. N/A
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: May 10, 2021
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.
PARTIAL SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION—CLASS 44
Registration of the applied-for mark is partially refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2009652, 4088401, 3845997, and 4077738. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Comparison of Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark PENN STATE LANCASTER GENERAL HEALTH with a design element. Registrant’s marks are LANCASTER GENERAL HEALTH EXPRESS, LANCASTER GENERAL HEALTH, LANCASTER GENERAL HEALTH URGENT CARE, and LANCASTER GENERAL HOSPITAL.
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). 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).
Both applicant and registrant’s marks prominently feature the phrase LANCASTER GENERAL. Because of this, the marks as a whole are highly similar in sound and appearance. They also give off a highly similar commercial impression of a general health hospital located in Lancaster.
The fact that applicant’s mark contains a design element does not obviate confusion. 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 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)).
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Services
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).
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 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 the present case, applicant has applied for the mark, in relevant part, for use in connection with:
Class 44: Health care, medical and hospital services
Registrant has registered the cited marks for use in connection with:
Class 44: services consisting of health care and hospital services
Class 44: urgent medical care center
Class 44: Health care services provided within a retail store location
Unrestricted and broad identifications are presumed to encompass all services of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Applicant broadly identifies health care, medical, and hospital services in a manner that encompasses, is identical to, or is encompassed by services listed by registrant, so the services are essentially identical and related for likelihood of confusion purposes.
Conclusion
Because applicant and registrant's goods are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the goods of applicant and registrant. Accordingly, the proposed mark creates a likelihood of confusion with a registered mark, and registration is partially refused on the Principal Register under 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.
DISCLAIMER REQUIRED
Applicant must disclaim the wording “MEDICINE LANCASTER GENERAL HEALTH” because it is geographically descriptive and merely descriptive of the type and features of the services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). Applicant’s own identification of services uses the terms “medicine” and “health” to describe the genus of the services, so these terms are generic and must be disclaimed.
The attached evidence shows that Lancaster is a cityin Pennsylvania that is home to nearly 60,000 people and is a generally known geographic place or location. See TMEP §§1210.02 et seq; http://en.wikipedia.org/wiki/Lancaster,_Pennsylvania. The services for which applicant seeks registration originate in this geographic place or location as shown by applicant’s website. See TMEP §1210.03; http://lancastergeneralhealth.org/patient-and-visitor-information/find-a-location. Because the services originate in this place or location, a public association of the services with the place is presumed. See In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1858 (TTAB 2014) (citing In re Spirits of New Merced, LLC, 85 USPQ2d 1614, 1621 (TTAB 2007)); TMEP §§1210.02(a) 1210.04.
Additionally, the term “general” is descriptive in the context of the health and medicine services identified in the application. “General” means affecting the whole body. http://www.ahdictionary.com/word/search.html?q=general. The term “general health” in the mark merely describes applicant’s services as relating to the health of the whole body. The attached internet evidence shows that the term “general” is commonly used to describe services like those identified by applicant. http://www.swgeneral.com/patients-visitors/healthelife/; http://bonnergeneral.org/; http://www.atlanticgeneral.org/.
Therefore, the phrase “MEDICINE LANCASTER GENERAL HEALTH” is geographically descriptive and merely descriptive and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “MEDICINE LANCASTER GENERAL HEALTH” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ASSISTANCE
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.
Robert N. Guliano
/Robert N. Guliano/
robert.guliano@uspto.gov
571-272-0174
Examining Attorney
Law Office 105
RESPONSE GUIDANCE