UNITED STATES PATENT AND TRADEMARK OFFICE
`
`SERIAL NO:
`
`77/663296
`
`MARK: THE PREVENTIVE MEDICINE PLAN
`
`CORRESPONDENT ADDRESS:
`THOMAS F. BERGERT
`
`WILLIAMS MULLEN, C/0 IP DOCKETING
`
`*77663296*
`
`222 CENTRAL PARK AVENUE SUITE 1700
`
`GENERAL TRADEMARK INFORMATION:
`
`VIRGINIA BEACH: VA 234623035
`
`htt
`
`
`
`://www.us )to.0ov/main/trademarks.htm
`
`APPLICANT:
`
`U.S. Preventive Medicine, Inc.
`
`CORRESPONDENT’S REFERENCE/DOCKET
`NO:
`
`044 1 03 .0047
`CORRESPONDENT E-MAIL ADDRESS:
`
`REQUEST FOR RECONSIDERATION DENIED
`
`ISSUE/MAILING DATE:
`
`Applicant is requesting reconsideration ofa final refusal mailed October 18, 2009.
`
`After careful consideration of the law and facts of the case, the examining attorney must deny the request
`for reconsideration and adhere to the final action as written since no new facts or reasons have been
`
`presented that are significant and compelling with regard to the point at issue.
`
`Applicant based it argument that the term “PLAN” is not descriptive on the fact that the Office has, in the
`past, registered the term on the Principal Register without a disclaimer. However, the case law is clear
`that third-party registrations are not conclusive on the question of descriptiveness. Each case must be
`considered on its own merits. An applied-for mark that is merely descriptive does not become rcgistrable
`simply because other similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ
`517 (TTAB 1977); TMEP §l209.03(a).
`
`On the other hand, the Office has also issued numerous third party registrations for similar services in
`which the term “plan" was disclaimed. See attached thirdparty registrations.
`In this regard, third-party
`registrations, where the relevant word or term has been disclaimed for similar or related services, are
`probative evidence on the issue of descriptiveness. See Sweats Fashions, Inc. v. Pannill Knitting Co., 833
`F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953,
`1955 (TTAB 2006); In re Finisar Corp, 78 USPQ2d 1618, 1621 (TTAB 2006).
`
`
`
`SERIAL NO:
`
`77/663296
`
`MARK: THE PREVENTIVE MEDICINE PLAN
`
`CORRESPONDENT ADDRESS:
`THOMAS F. BERGERT
`
`WILLIAMS MULLEN, C/0 IP DOCKETING
`
`*77663296*
`
`222 CENTRAL PARK AVENUE SUITE 1700
`
`GENERAL TRADEMARK INFORMATION:
`
`VIRGINIA BEACH: VA 234623035
`
`htt
`
`
`
`://www.us )to.0ov/main/trademarks.htm
`
`APPLICANT:
`
`U.S. Preventive Medicine, Inc.
`
`CORRESPONDENT’S REFERENCE/DOCKET
`NO:
`
`044 1 03 .0047
`CORRESPONDENT E-MAIL ADDRESS:
`
`REQUEST FOR RECONSIDERATION DENIED
`
`ISSUE/MAILING DATE:
`
`Applicant is requesting reconsideration ofa final refusal mailed October 18, 2009.
`
`After careful consideration of the law and facts of the case, the examining attorney must deny the request
`for reconsideration and adhere to the final action as written since no new facts or reasons have been
`
`presented that are significant and compelling with regard to the point at issue.
`
`Applicant based it argument that the term “PLAN” is not descriptive on the fact that the Office has, in the
`past, registered the term on the Principal Register without a disclaimer. However, the case law is clear
`that third-party registrations are not conclusive on the question of descriptiveness. Each case must be
`considered on its own merits. An applied-for mark that is merely descriptive does not become rcgistrable
`simply because other similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ
`517 (TTAB 1977); TMEP §l209.03(a).
`
`On the other hand, the Office has also issued numerous third party registrations for similar services in
`which the term “plan" was disclaimed. See attached thirdparty registrations.
`In this regard, third-party
`registrations, where the relevant word or term has been disclaimed for similar or related services, are
`probative evidence on the issue of descriptiveness. See Sweats Fashions, Inc. v. Pannill Knitting Co., 833
`F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953,
`1955 (TTAB 2006); In re Finisar Corp, 78 USPQ2d 1618, 1621 (TTAB 2006).
`
`
`
`Accordingly, applicant’s request for reconsideration is denied. The time for appeal runs from the date the
`final action was mailed. 37 C.F.R. Section 2.64(b); TMEP Section 7l5.03(c). If applicant has already
`filed a timely notice of appeal, the application will be forwarded to the Trademark Trial and Appeal Board
`(TTAB).
`
`/Russ Herman!
`
`Attorney
`Law Office 101
`
`571-272-9172 (phone)
`571-273-9101 (fax)
`
`STATUS CHECK: Check the status of the application at least once every six months from the initial
`filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system
`
`at hlt
`:7//tari'.us to. ~o\'. When conducting an online status check, print and maintain a copy of the
`complete TARR screen. If the status of your application has not changed for more than six months, please
`Contact the assigned examining attorney.
`
`
`
`Print: May 14, 2010
`
`76027705
`
`DESIGN MARK
`
`Serial Number
`76027705
`
`Status
`SECTION a—AccE PTED
`
`Word Mark
`PROMEDICAL PLAN,
`
`INC.
`
`standard Character Mark
`NO
`
`Registration Number
`2727569
`
`Date Registered
`2003/O6/17
`
`Type of Mark
`SERVICE MARK
`
`Register
`PRINCIPAL
`
`Mark Drawing code
`(3) DESIGN PLUS WORDS, LETTERS AND/OR NUMBERS
`
`Owner
`PROMEDICAL PLAN PHC,
`WESTON FLORIDA 33326
`
`INC CORPORATION 2300 N. COMMERCE PKWY, #302
`
`Goodslservices
`G & S: Healthcare.
`100 101.
`US
`IC 042.
`Class Status —— ACTIVE.
`First Use: 2000/O8/O1. First Use In Commerce: 2000/O8/01.
`
`Disclaimer Statement
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "PLAN,
`THE MARK AS SHOWN.
`
`INC." APART FROM
`
`Name!PorIrait Statement
`Applicant disclaims any right to use the Cross design portion of its
`mark in whole Or in part in shades of red or orange, or in whole or in
`part in white on a background solely of shades of red or orange, or in
`any Combination thereof.
`
`Filing Date
`2000/04/17
`
`Examining Attorney
`
`
`
`Print: May 14, 2010
`
`76027705
`
`CAPS}-IAW, DANIEL
`
`
`
`Pr0Med'{cal Plan, Inc.
`
`
`
`Print: May 14, 2010
`
`7?153755
`
`DESIGN MARK
`
`Serial Number
`77153755
`
`Status
`REGISTERED
`
`Word Mark
`THE OTHER HEALTH PLAN
`
`Standard Character Mark
`Yes
`
`Registration Number
`3547524
`
`Date Registered
`2008/l2/l6
`
`Type of Mark
`SERVICE MARK
`
`Register
`PRINCIPAL
`
`Mark Drawing code
`(4:
`STANDARD CHARACTER MARK
`
`OWDBT
`GROUP BENEFITS, LTD. CORPORATION IOWA 12006 RIDGEMONT DRIVE URBANDALE
`IOWA 50323
`
`Goodslservices
`Class Status —— ACTIVE.
`
`IC 041.
`
`US
`
`100 101 107.
`
`G & S: Personal
`
`coaching services provided online and in person in the fields of
`health and wellness, nutrition, physical fitness, disease prevention,
`injury prevention, weight loss, and smoking cessation; one-on—one
`mentoring in the fields of health and wellness, nutrition, physical
`fitness, disease prevention,
`injury prevention, weight loss, and
`smoking cessation; conducting seminars and workshops in the fields of
`health and wellness, nutrition, physical fitness, disease prevention,
`injury prevention, weight loss, and smoking cessation and course
`materials in connection therewith; providing online publications of
`electronic books, magazines,
`reviews, brochures, and newsletters in
`the fields of health and wellness, nutrition, physical fitness,
`disease prevention,
`injury prevention, weight loss, and smoking
`cessation; providing consulting services in the field of physical
`fitness. First Use: 2UO7fO6/30. First Use In Commerce: 2007/O6/30.
`
`Goodsfservices
`
`
`
`Print: May 14, 2010
`
`77153755
`
`G & 9: Web based
`100 l0l.
`US
`IC 044.
`Class Status —— ACTIVE.
`medical evaluation services, namely, health screenings and health risk
`assessments; medical consultation, namely, providing consulting
`services in the fields of health and wellness; providing a website
`featuring health information and news in the fields of health and
`Wellness, nutrition, physical fitness, disease prevention,
`injury
`prevention, weight loss, and smoking cessation; maintaining files and
`records in both electronic format and hard copy format stored in
`folders concerning the personal health and medical histories, medical
`records, medical conditions, health risk assessments, disease
`management and wellness programs of participants; providing an online
`database of personal health and medical histories, medical records,
`medical conditions, health risk assessments, disease management and
`wellness programs of participants. First Use: 2007/O6/30. First Use
`In Commerce: 2007/O6/30.
`
`Disclaimer Statement
`No CLAIM IS MADE To THE EXCLUSIVE RIGHT To USE "HEALTH PLAN" APART
`FROM THE MARK AS SHOWN.
`
`Filing Date
`2007/04K11
`
`Examining Attorney
`PARADEWELAI , BENJI
`
`Attorney of Record
`Timothy J. Zarley
`
`
`
`THE OTHER HEALTH PLAN
`
`
`
`Print: May 14, 2010
`
`77528393
`
`DESIGN MARK
`
`Serial Number
`77528393
`
`Status
`REGISTERED
`
`Word Mark
`ONCOLIFE SURVIVORSHIP CARE PLAN
`
`Standard Character Mark
`No
`
`Registration Number
`3605425
`
`Date Registered
`2009/O4/14
`
`Type of Mark
`SERVICE MARK
`
`Register
`PRINCIPAL
`
`Mark Drawing code
`:3: DESIGN PLUS WORDS, LETTERS AND/OR NUMBERS
`
`Chuner
`The Trustees of the University of Pennsylvania CORPORATION
`PENNSYLVANIA Office of the General Counsel 133 S. 36th Street, Suite
`300 Philadelphia PENNSYLVANIA 19104
`
`Goodslservices
`G & S: Providing an
`100 101.
`US
`IC 044.
`Class Status -— ACTIVE.
`on-line, pat1ent—in1tiated medical Service designed to provide cancer
`survivors with an individualized Care plan. First Use: 2007/O5/15.
`First Use In Commerce: 2007/05/15.
`
`Prior Reglstratlon(s)
`l9l5677;305272l;3179l43
`
`Disclaimer Statement
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "SURVIVORSI-IIP CARE
`PLAN" APART FROM THE MARK AS SHOWN.
`
`Description of Mark
`the Color
`The mark Consists of the color yellow in the letter "O";
`brown in the trunk and branches of the tree; the Color green in the
`leaves;
`the color purple in the stethoscope wrapped around the letter
`
`-1-
`
`
`
`Print: May 14, 2010
`
`77528393
`
`"0" and in the wording "SURVIVORSHIP CARE PLAN"; and the color black
`appears in the lettering "ONCOLIFE".
`
`colors Claimed
`Color is not claimed as a feature of the mark.
`
`Filing Date
`2008/07/22
`
`Examlnlng Attorney
`SPILS, CAROL
`
`Attorney of Record
`JAMES R MEYER
`
`
`
`
`
`
`
`Print: May 14, 2010
`
`77823505
`
`DESIGN MARK
`
`Serial Number
`77823505
`
`Status
`REGISTERED
`
`Word Mark
`THE ELITE COMP PLAN
`
`standard character Mark
`Yes
`
`Registration Number
`3780757
`
`Date Registered
`2010/O4/27
`
`Type of Mark
`sERvIcE MARK
`
`Register
`PRINCIPAL
`
`Mark Drawing code
`(4) STANDARD CHARACTER MARK
`
`OWDBP
`
`Elite Cosmetique, LLC LIMITED LIABILITY COMPANY TEXAS Suite 300 15305
`Dallas Parkway Addison TEXAS 75001
`
`Goodsfservices
`Class Status —— ACTIVE.
`
`Ic 035.
`
`US
`
`100 101 102.
`
`G 5, s:
`
`Administering discount medical, cosmetic and aesthetic service
`programs, namely, negotiating contracts with providers of medical,
`cosmetic and aesthetic services,
`to enable participant members to
`obtain discounts on the purchase of medical, cosmetic and aesthetic
`products and services through the use of discount membership cards.
`First Use: 2009/O8/O1. First Use In Commerce: 2009/08/01.
`
`Disclaimer statement
`No CLAIM IS MADE To THE EXCLUSIVE RIGHT To USE "COMP PLAN" APART FROM
`THE MARK AS snow.
`
`Filing Date
`2009/09/10
`
`Examining Attorney
`CASTRO, GIANCARLO
`
`
`
`Print: May 14, 2010
`
`77823505
`
`Attorney of Record
`Joseph S. Benbenek III
`
`
`
`The Elite Comp Plan
`
`
`
`Print: May 14. 2010
`
`78316046
`
`DESIGN MARK
`
`Serial Number
`7 8 3 1 6 0 4 6
`
`Status
`REGISTERED
`
`Word Mark
`HEART SURGEONS HEALTH PLAN
`
`standard Character Mark
`Yes
`
`Regisiration Number
`2980244
`
`Date Registered
`2005/O7/26
`
`Type of Mark
`TRADEMARK; SERVICE MARK
`
`Register
`SUPPLEMENTAL
`
`Mark Drawing code
`[4] STANDARD CHARACTER MARK
`
`Chuner
`
`Lundell, Dwight C INDIVIDUAL UNITED STATES Suite 504 6750 E Baywood
`Ave Mesa ARIZONA 85206
`
`Goodslservices
`Class Status —— ACTIVE.
`
`IC 005.
`
`US
`
`O06 O18 O44 O46 O51 052.
`
`G & S:
`
`Nutritional supplements, diet pills, and meal replacement shakes.
`First Use: 2004/10/01. First Use In Commerce: 2004/10/Oi.
`
`Goodslservices
`G S: 8: Health care
`lOO 101.
`US
`IC 044.
`Class Status —— ACTIVE.
`services relating to weight reduction, namely, medical evaluations and
`followups, and weight reduction diet planning and supervision. First
`Use: 2004/10/O1. First Use In Commerce: 2004XlOJ0l.
`
`Dlcclalmer statement
`NO CLAIM Is MADE TO THE EXCLUSIVE RIGHT To USE "PLAN" APART FROM THE
`MARK AS SHOWN.
`
`Flllng Date
`2003/10/20
`
`
`
`Print: May 14, 2010
`
`78316046
`
`Amended Register Date
`2005/05/05
`
`Examining Attorney
`BELENKER, ESTHER
`
`Attorney of Record
`Bethany L. Jacobs
`
`
`
`HEART SURGEONS HEALTH PLAN
`
`
`
`Print: May 14, 2010
`
`78369274
`
`DESIGN MARK
`
`Serial Number
`7 8 3 6 9 2 '3‘ 4
`
`Status
`REGISTERED
`
`Word Mark
`CHAUTAUQUA PLAN
`
`Standard Character Mark
`Yes
`
`Registration Number
`2914028
`
`Date Registered
`2004/l2J2l
`
`Type of Mark
`SERvIcE MARK
`
`Reisier
`SUPPLEMENTAL
`
`Mark Drawing code
`[4]
`STANDARD CHARACTER MARK
`
`Owner
`
`Chautauqua Plan, Inc. CORPORATION NEW YORK 300 Foote Avenue Jamestown
`NEW YORK 14701
`
`Goodslservices
`Class Status —— ACTIVE.
`
`IC 036.
`
`US
`
`100 101 lO2.
`
`G & S:
`
`Administration of employee benefit plans, namely, community based
`medical management Services for Self-insured employers. First Use:
`2003/O7/O7. First Use In Commerce: 2003/O?/0?.
`
`Disclaimer Statement
`NO CLAIM IS MADE To THE EXCLUSIVE RIGHT TO USE "PLAN" APART FROM THE
`MARK AS SHOWN.
`
`Filing Date
`2004/02x17
`
`Examining Attorney
`MURRAY, DAVID
`
`Attorney of Record
`Byron A. Bilioki
`
`
`
`CHAUTAUQUA PLAN
`
`
`
`Print: May 14, 2010
`
`78509539
`
`DESIGN MARK
`
`Serial Number
`78509539
`
`Status
`REGISTERED
`
`Word Mark
`CALIFORNIA HEALTH PLAN
`
`Standard Character Mark
`Yes
`
`Registration Number
`3051877
`
`Date Registered
`2006/Ol/24
`
`Type of Mark
`SERVICE MARK
`
`Register
`SUPPLEMENTAL
`
`Mark Drawing Code
`:4: STANDARD CHARACTER MARK
`
`Owner
`CALIEORINIA HEALTH PLAN CORPORATION CALIFORNIA 18000 STUDEBAKER ROAD,
`SUITE 100 CERRITOS CALIFORNIA 90703
`
`Goodslservices
`Class Status —— ACTIVE.
`
`IC 044.
`
`US
`
`100 101.
`
`G & S: Medical
`
`services, namely HMOS and physician groups offering primary medical
`care services, medical clinics, emergency medical services, outpatient
`services,
`in—home medical and nursing services; managed care health
`plans, and medical evaluation services. First Use: 2004/10/21. First
`Use In Commerce: 2004/10/21.
`
`Disclaimer Statement
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE health plan APART FROM
`THE MARK AS SHOWN.
`
`Filing Date
`2004/11/01
`
`Aunendedlagknernaua
`2005/ll/25
`
`
`
`- Print: May 14, 2010
`
`78509539
`
`Examining Attorney
`CASE, LEIGH CAROLINE
`
`Attorney of Record
`Tawnya R . Woj oi e chews ki
`
`
`
`CALIFORNIA HEALTH
`PLAN
`
`
`
`Print: May '14, 2010
`
`78509540
`
`DESIGN MARK
`
`Serial Number
`7 8 5 O 9 5 4 0
`
`Status
`REGISTERED
`
`Word Mark
`CALIFORNIA ADVANTAGE PLAN
`
`Standard Character Mark
`Yes
`
`Registration Number
`3325823
`
`Date Registered
`2007/10/30
`
`Type of Mark
`sERvICE MARK
`
`Reister
`PRINCI PAL
`
`Mark Drawing Code
`(4) STANDARD CHARACTER MARK
`
`Owner
`California Health Plan CORPORATION CALIFORNIA 18000 Studebaker Road
`Suite 100 Cerritos CALIFORNIA 90703
`
`Goodstservices
`G 5: 8: Medical
`100 101.
`US
`IC 044.
`Class Status —— ACTIVE.
`services, namely, HMOS and physician groups offering primary medical
`care services, medical clinics, emergency medical services, outpatient
`services,
`in—home medical and nursing services; managed Care health
`plans, and medical evaluation services. First Use: 2006/ll/15. First
`Use In Commerce: 2006/ll/15.
`
`Prior Registration(s)
`2895388
`
`Dlcclalmer statement
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CALIFORNIA" AND "PLAN"
`APART FROM THE MARK AS SHOWN.
`
`Flllng Date
`2004/11/01
`
`
`
`Print: May 14-, 2010
`
`78509540
`
`Examining Attorney
`CASE, LEIGH CAROLINE
`
`Attorney of Record
`Tawnya R. Wojcieohowski
`
`
`
`CALLFORNIA AD\/Al\l'l"AGJ:‘
`
`PT AN
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
