Request for Reconsideration after Final Action
`
`Page 1 of 15
`
`PTO Form (Rev 4/2000)
`
`OMB No. 0651-.... (Exp. 08/31/2004)
`
`Request for Reconsideration after Final Action
`
`
`The table below presents the data as entered.
`
`
`
`
`
`
`
`
`ARGUMEN'l‘(S)
`
`
`
`
`
`
`
`Applicant hereby responds to the Final Office Action mailed July 2, 2010, in which the
`
`Examiner refused to register the INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark
`
`(Application Serial No. 77/813,409).
`
`In the Office Action, the Examiner refused to register the INTEGRATED PRESCRIPTION
`
`SOLUTIONS & DESIGN mark on the ground that, pursuant to Section 2(d) of the Trademark Act, the
`
`applied-for mark so resembles various registered marks (see Final Office Action, identifying the "cited
`
`marks") such that it is likely that a potential consumer would be confused or mistaken or deceived as to
`
`the source of the goods and/or services of the Applicant and the registrants.
`
`
`
`
`
`
`
`
`
`
`
`
`
`For the reasons set forth below, Applicant respectfully requests that the refusal pursuant to
`
`Sections 2(d) be withdrawn.
`
`I.
`
`SECTION 2(d) REFUSAL — LIKELIHOOD OF CONFUSION
`
`
`
`
`
`
`
`The ultimate question for determining the issue of likelihood of confusion is “whether the
`
`marks will confuse [relevant consumers] into believing that the goods [or services] they identify come
`
`from the same source.” See Final Ofiice Action, p. 5 (citing In re West Point-Pepperell, Inc., 468 F.2d
`
`200, 175 U.S.P.Q. 558 (C.C.P.A.. 1972)). The test to determine whether there is a likelihood of
`
`confusion is set forth in In re E.I. DuPont de Nemours & C0., 476, F.2d 1367 (C.C.P.A. 1973). Out of
`
`the several factors in the so-called DuPont test, (1) the similarity of the marks, (2) the similarity of the
`
`goods and/or services and (3) the similarity of trade channels of the goods and/or services are the most
`
`important factors to consider. See In re Opus One, Inc., 60 U.S.P.Q. 2d 1812 (T.T.A.B. 2001);
`
`
`
`
`
`
`
`T.M.E.P. §§ 1207.01 et seq. Here, the cited marks are distinguishable, the services only tangentially
`
`
`
`
`
`
`
`
`
`
`related and the purchasers are sophisticated.
`
`In addition, the “prescription solutions” portion of
`
`Applicant ’s mark in common with the cited PRESCRIPTION SOLUTIONS marks should be afforded
`
`file://\\ticrs—ais-0 1\ticrsexpo1t\Htm1ToTiffInput\RFR000 1201 l_0 l_06_1 3_07_33_WS 1945
`
`1/6/2011
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 2 of 15
`
`less weight in the DuPont analysis because it has beenidiluted through pervasive use in the
`
`healthcare industry. Applicant addresses these points in greater detail below.
`
`I
`
`A.
`
`THE INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN MARK IS
`
`SIGNIFICANTLY DIFFERENT FROM THE CITED MARKS AS TO SIGHT,
`
`SOUND AND CONNOTATION.
`
`The Examiner is correct that for determining the likelihood of confusion, “the focus is on the
`
`recollection of the purchaser who normally retains a general rather than specific impression of
`
`trademarks.” See Final Office Action, p. 5 citing Chemetron Corp. v. Morris Coupling & Clamp Co.,
`
`203 U.S.P.Q. 537 (T.T.A.B. 1979); Sealea’Air Corp. v. ScottPaper Co., 190 U.S.P.Q. 196 (T.T.A.B.
`
`1975); T.M.E.P. § 1207.0l(b). However, “[t]he commercial impression of atrade-mark is derived from
`
`it as a whole, not from its elements separated and considered in detail.” Estate ofP. D. Beckwith, Inc.
`
`v. Commissioner ofPatents, 252 U.S. 538, 545-46 (U.S. 1920) (emphasis added); see also /lutoZone,
`
`Inc. v. Tandy Corp, 373 F.3d 786, 795 (6th Cir. Tenn. 2004) (“Conflicting composite marks are to be
`
`compared by looking at them as a whole, rather than breaking the marks up into their component parts
`
`for comparison .
`
`. The rationale for the rule is that the commercial impression of a composite
`
`trademark on an ordinary prospective buyer is created by the mark as a whole not by its component
`
`.
`
`.
`
`parts.” (quoting 3 J. Thomas McCarrhy, McCarthy on Trademarks and Unfair Competition 59 23:41, at
`
`23-123 (2003) (emphasis added))). Accordingly, it is improper to focus on the terms “prescription” and
`
`“solutions” or the phrase “prescription solutions” while diminishing the other elements present in the
`
`mark, i.e., the term “integrated” or the prominent design portion of the mark See In Re The Hearst
`
`Corporation, 982 F.2d 493, 494 (Fed. Cir. 1992) (finding VARGA GIRL for calendars was
`
`inappropriately refused registration for calendars due to VARGA for calendars, the court stated, “by
`
`stressing the portion “varga” and diminishing the portion “girl”, the Board inappropriately changed the
`
`mark”).
`
`Despite this well-settled authority, the Examiner appears to have determined likelihood of
`
`confusion by parsing out the phrase “prescription solutions,” and considering that phrase separately
`
`from the first term of the mark, “integrated.” When considered in its entirety, however, the
`
`INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark differs significantly from the cited
`
`marks. A relevant consumer would immediately notice that the INTEGRATED PRESCRIPTION
`
`SOLUTIONS & DESIGN mark appears longer than and sounds different from any of the cited marks
`
`and includes the term “integrated” that is not found in any of the cited marks. The term “integrated” is
`
`one-third of Applicant’s mark and contains the first four syllables in the ten-syllable mark. As the term
`
`“integrated” is the first and most important part of Applicant’s mark in both sight and sound, relevant
`
`consumers would weigh the term “integrated” much more heavily than the terms “prescription” and
`
`“solutions” or the phrase “prescription solutions.”
`
`In addition, the design portion of Applicant’s mark further distinguishes it from the cited
`
`file://\\ticrs-ais-0 1\ticrsexpo1t\HtmlToTiflInput\RFR000 1201 l_0 l_06_l 3_07_33_WS 1945
`
`1/6/2011
`
`

`
`Request for Reconsideration after Final Action
`
`Page 3 of 15
`
`marks. As part of the likelihood of confusion analysis, “it is essential to consider the marks’
`visual characteristics.” Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir. 111.
`
`_
`
`2000) (Where the marks BONE DADDY and SMOKE DADDY were found to be similar in sound;
`however, the logo accompanying each mark was distinctively different. Thus, “[t]he visual appearance
`significantly undercuts the
`argument that the marks are similar in appearance and suggestion.”)',
`CareFirst ofMd., Inc. v. First Care, P.C., 434 F.3d 263, 271 (4th Cir. Va. 2006) (“If one of two similar
`marks is commonly paired with other material, that pairing will serve to lessen any confusion that
`might otherwise be caused by the textual similarity between the two marks”). Here, design portion of
`Applicant’s mark consists of two large interlocking shapes similar to a D or O that are approximately
`the same size as the entire word portion of the mark. See Attachment B. Further, the design portion is
`to the lefi of the word portion and, thus, the first portion of the mark that an ordinary consumer would
`notice.
`In fact, in the Final Office Action, none of the cited marks even include a logo element. See
`Final Office Action. Thus, the visual characteristics of Applicant’s mark, i.e., the prominent design
`
`element, further distinguish it from the cited marks.
`
`In addition, the Examiner appears to have downplayed the significantly different connotation
`elicited by the INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark. The connotation of
`Applicant’s mark differs significantly by virtue of the fact that it includes the term “integrated,”
`whereas none of the cited marks include a term even remotely close to that term. Moreover, it is
`
`appropriate to give greater weight to the important or “dominant” parts of a composite mark. See
`Kangol Ltd. V. KangaROOS U.S.A., Inc., 974 F.2d 161, 163 (Fed. Cir. 1992) (where two designs
`KANGOL and KANGAROOS, each featuring a kangaroo design under the KANG portion of the mark
`
`were found to be similar because the kangaroo was the dominant portion of the mark). Here, relevant
`consumers would see and hear the dominant term “integrated” first.
`In addition, since the phrase
`
`“prescription solutions” is used pervasively throughout the healthcare industry, as evidenced by the
`Examiner's cited references, the term “integrated” would, to a large extent, stick out as the most
`
`important part of the mark. Further, as an adjective, the term “integrated” modifies the nouns
`“prescription” and “solutions,” which to the relevant consumer would also be an important
`consideration to determine the connotation of the whole mark. As such, more weight should be given
`
`to the term “integrated” (as well as the design element of the mark) to determine the connotation
`elicited by Applicant’s INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark. CareFirst
`0fMd. , 434 F.3d at 271 (“If one of two similar marks is commonly paired with other material, that
`pairing will serve to lessen any confusion that might otherwise be caused by the textual similarity
`between the two marks. .
`. This effect is most significant when .
`.
`. the allegedly infringed mark. .
`
`. has
`
`little independent strength.”)', Autozone, Inc. v. Tandy Corp. , 373 F.3d 786, 797 (6th Cir. 2004); Lang
`v. Retirement Living Pub. Co., Inc. , 949 F.2d 576, 581-82 (2d Cir. 1991). Therefore, because none of
`the cited marks include the term “integrated,” the INTEGRATED PRESCRIPTION SOLUTIONS &
`
`DESIGN mark also differs significantly as to connotation.
`
`file ://\\ticrs—ais-01\ticrsexp ort\HtmlToTifTInput\RFR000 1201 l_0 l_06__13_07_33__W S 1945
`
`1/6/2011
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 4 of 15
`
`Accordingly, when considered in its entirety, relevant consumers would perceive the
`
`INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark differently than any of the cited
`
`marks as to sight, sound and connotation, including the PRESCRIPTION SOLUTIONS mark; thus it is
`
`not likely to confuse relevant consumers as to the source of the goods and/or services.
`
`B.
`
`THE GOODS AND SERVICES SOLD IN CONNECTION WITH THE
`
`INTEGRATED PRESCRIPTIONSOLUTIONS & DESIGN MARK ARE
`
`DIFFERENT FROM THOSE SOLD UNDER THE CITED MARKS.
`
`The degree to which two services are similar is determined by looking at the degree to which
`
`the services compete with each other. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527, 224
`
`U.S.P.Q. 185 (4th Cir. 1984) (“the similarity of the goods/services the marks identify”); Westchester
`
`Media 12. PRL USA Holdings, 214 F.3d 658, 664, 55 U.S.P.Q.2d 1225 (5th Cir. 2000) (“the similarity of
`
`the products or services”). The issue is not whether the services are in fact related to each other, but
`
`whether consumers associate the services and expect them to come from the same source. See
`
`CareFirst ofMd., Inc. v. F1'rsiCare, P.C., 434 F.3d 263, 272 (4th Cir. Va. 2006); see also Broolrjield
`
`Comm ’ns, Inc. v. West Coast Em‘ ’t Corp, 174 F.3d 1036, 1056, 50 U.S.P.Q.2d 1545 (9th Cir. 1999)
`
`(holding that in detemrining whether the goods are related, a court should ask whether “the consuming
`
`public is likely somehow to associate” the defendant’s with the plaintiff’ s).
`
`Applicant’s services are different from the services sold in connection with the cited marks.
`
`Applicant’s services are aimed at and provided to injured workers covered by worker’s compensation
`
`insurance and other insurance-policy holders. See Attachment B . Applicant provides these consumers
`
`with a number of ancillary medical healthcare services such as durable medical equipment and
`
`supplies, home healthcare, home therapy including physical, occupational, and speech, and
`
`In contrast, the
`transportation and language translation services. See Attachment B, Website Printouts.
`cited marks provide primarily online and mail-order pharmacy services. See Attachment C, Website
`
`Printouts. Online and mail-order pharmacy services are used primarily by consumers to obtain
`
`prescription drugs, whereas Applicant’s service is limited to either worker’s compensation, auto-
`
`insurance, or other insurance covered individuals. As such, it is clear that a pharmacy, whether online
`
`or mail-order, is a different service from a service providing ancillary medical healthcare services to
`
`insured individuals. See e. g. Carefirst, 434 F.3d at 272 (finding dissimilar services where, “First Care
`
`only offers direct medical services to individuals. CareFirst does not; rather, it contracts with
`
`participating providers who agree to treat CareFirst members”).
`
`C.
`
`APPLICANT OFFERS ITS GOODS AND/OR SERVICES IN SIGNIFICANTLY
`
`DIFFERENT TRADE CHANNELS
`
`Applicant operates in different trade channels from the cited marks. The cited marks are
`
`primarily used to offer online and mail order pharmacy services to general consumers. In contrast,
`
`Applicant's services include such diverse services as transportation, translation and home therapy
`
`file://\\ticrs-ais-O1\ticrsexpo1t\HtmlToTifiInput\RFR0001201 1_o l_06_13_O7_33_WS 1945...
`
`1/6/2011
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 5 of 15
`
`services, which cannot be provided through the mail. See Attachment B. Of course, the
`
`channels of advertising are difierent as well since translation services, for example, would not be
`
`advertised through the same channels as mail order prescription drugs. Further, Applicant’s services
`
`are specialized to the Worker’s Compensation, Automobile, and Personal Injury Insurance markets,
`
`which comprise sophisticated consumers. See Attachment B; see also Medici Classics Prods. LLC v.
`
`Medici Group LLC, 590 F. Supp. 2d 548, 557 (S.D.N.Y. 2008) (The sophistication of a consumer can
`
`be inferred based on the nature of the product or its price.) (citing Real News Project, Inc., 2008 U.S.
`
`Dist. LEXIS 41457, 2008 WL 2229830 at *21).
`
`D.
`
`THE “PRESCRIPTION SOLUTIONS” PORTION OF APPLICANT’S MARK
`
`SHOULD BE AFFORDED LESS WEIGHT BECAUSE THAT PHRASE HAS
`
`BEEN DILUTED AND MADE WEAK THROUGH PERVASIVE USE IN THE
`
`HEALTHCARE INDUSTRY.
`
`When a junior user has a mark that incorporates the whole of another’s mark, but the previous
`mark is weak or diluted, confusion is less likely and thus less weight should be afforded to that portion
`ofthe integrated mark. See ClaremontPolychemical Corp. v. Atlantic Powdered Metals, Inc., 470 F.2d
`636, 637 (1972). A mark consisting of common words frequently used for products or services is
`usually found to be a weak mark. See Carefirst ofMarj2land, Inc. v. First Care, P.C., 434 F.3d 263,
`270, 77 U.S.P.Q.2d 1577 (4th Cir. 2006) (‘“Ihe frequency of prior use of [a mark’s text] in other
`marks, particularly in the same field of merchandise or service, ’ illustrates the mark’s lack of
`conceptual strength”) (citation omitted); Citizens Financial Group, Inc. v. Citizens Nat ’l Bank, 383
`F.3d 110, 123, 72 U.S.P.Q.2d 1389 (3d Cir. 2004) (“[A]s a general rule, widespread use of even a
`distinctive mark may weaken the mark.”); Time, Inc. v. Petersen Publishing Co., 173 F.3d 113, 118, 50
`U.S.P.Q.2d 1474 (2d Cir. 1999) (“The use of part or all of the mark by third parties weakens its overall
`strength.”)', Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 625 (6th Cir. 1988).
`
`Through pervasive use in the healthcare industry, the phrase “prescription solutions” has
`become diluted and is therefore weak As previously described in Applicant’s response to the
`
`December 9, 2009 Office Action, the USPTO has granted numerous registrations that include the terms
`
`“prescription” and “solutions.” While the Examiner’s observation that such registrations do not in fact
`“prove” actual use is well taken, the sheer number of such registrations at least suggest that businesses
`and individuals have adopted such marks for use in commerce. Of course, the Examiner’s own Internet
`evidence of record which refers to “prescription solutions” shows actual use in commerce and that
`
`consumers are accustomed to seeing such terms. See Attachments to Office Action.
`
`Moreover, the very definitions of “prescription” and “solutions” support a finding that the
`PRESCRIPTION SOLUTIONS mark is weak. A prescription is “a written direction for a therapeutic
`
`. use of a medicine” or “a prescribed medicine.” Mirriam—
`.
`or corrective agent”; specif: one for the .
`Webster ’s Collegiate Dictionary, 10th Ed. 1993.
`Indeed, in 2009, the average consumer in the U.S.
`
`file://\\ticrs-ais-0 1\ticrsexpo1t\HtmlToTifiInput\RFR000 1201 1_0 1_06_1 3_07_33_WS 1945
`
`1/6/2011
`
`

`
`Request for Reconsideration afier Final Action
`
`Page 6 of 15
`
`spent approximately $979 on prescription drugs. Report on sales of Prescription drugs in U.S.
`
`in 2009, available at http://www.imshealth.com/portal/site/imshealth/menuiten1.a46c6d4df3db4b3d
`
`88f61 1019418c22a/?vgnextoid=d690a27e9d5b721OVgnVCM1000OOed152ca2RCRD; see also U. S.
`
`Census Bureau, Statistical Abstract of the United States: 2009, Section 1. This is evidence that the
`
`word prescription is a common word, frequently used for prescription drug products and services.
`
`Similarly, a solution is “an action of process of solving a problem.” Mirriam-Webster ’s Collegiate
`Dictionary, 10th Ed. 1993. Like prescription, “solutions” is also a common element of a name for a
`
`service or corporation, albeit less routinely used than its mark counterpart. For example, the term
`
`“solutions” is a component of the title of at numerous corporations in the U.S. and Canada. See, e. g.,
`
`Attachment A showing some of the publicly traded companies that include the term “solutions” as part
`
`of their corporate name. Thus, the use of the term “solutions” in conjunction with other terms is
`likewise common in the mind of a consumer.
`
`Accordingly, the PRESCRIPTION SOLUTIONS mark is weak and should be given less weight
`in the DuPont analysis. Like the marks in Claremont, INTEGRATED PRESCRIPTION SOLUTIONS
`& DESIGN and PRESCRIPTION SOLUTIONS share a common ending that is weak. See Claremom‘,
`
`470 F.2d at 637 (holding that “[t]he designations “DURAGOLD” and “EVERGOLD” resemble one
`another in that they are highly suggestive of the color and wearing ability of the products upon which
`
`they are employed. They also incorporate the identical suffix ending. Despite these similarities,
`considering the inherent weakness in the marks, we are convinced that the manifest differences in
`sound and appearance are of such character as to be unlikely to cause prospective purchasers to assume
`that the goods originate from the same source”). This weakness, combined with the manifest
`difference in sight, sound and connotation between the two marks makes it unlikely that consumers
`
`would assume that goods or services offered for sa.le under the INTEGRATED PRESCRIPTION
`SOLUTIONS & DESIGN mark came from the same source as those sold under the PRESCRIPTION
`
`SOLUTIONS mark.
`
`In sum, when each aspect of INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN is
`given the appropriate weight in a DuPont analysis, the overall impression of the mark is different from
`the registered marks. Because PRESCRIPTION SOLUTIONS is a weak mark, the addition of the
`
`modifying word INTEGRATED is more than sufficient to prevent confusion among consumers.
`
`II.
`
`CONCLUDING REMARKS
`
`In view ofthe foregoing, it is submitted that the present application is now in condition for
`
`publication. However, if additional issues arise and direct communication with Applicant’s attorney
`would serve to advance prosecution of this case to finality, the Examining Attorney is cordially urged
`
`to call the undersigned attorney.
`
`file://\\ticrs-ais-0l\ticrsexport\HtmlToTifi‘Input\RFR000 1201 1_o 1_06_l3_07_33_WS 1945
`
`1/6/201 1
`
`

`
`Request for Reconsideration after Final Action
`
`Page 7 of 15
`
`EVIDENCE
`
`Evidence is attached in the nature of:
`
`Attachment A — Website Printout — NYSE
`
`
`
`Attachment B — Website Printout — Integrated Prescription Solutions “About Us” Page
`
`Attachment C — Website Printout — Cited Marks “About Us”
`
`EVIDENCE SECTION
`
`
`
`(5 pages)
`
`\xml1\RFR0008.JPG
`
`http://tgate/PDF/RFR/2011/01/03/20110103192224624079-
`77813409-003_0O3/evi_2424924614-
`191537575_._Attachment_C.pdf
`
`\\TICRS\EXPORT1 1\IMAGEOUTl 1\778\134\77813409
`\xm11\RFR0009.JPG
`
`‘\\TICRS\E‘(PORT1 1\1MAGEOUT1 1\77s\134\77313409
`\xml1\RFR00l0.JPG
`
` \\TICRS\EXPORT11\IMAGEOUT1 1\778\134\77813409
`
`
`
`
`
`
`
`
` \\TICRS\EXPORTl1\IMAGEOUT11\778\134\77813409
`\xm11\RFR0011.JPG
`
`file://\\ticrs-ais-01\ticrsexport\HtmlToTifflnput\RFR000 120 1 l_0 l_O6_1 3_07__33_WS 1945
`
`1/6/2011
`
`ORIGINAL
`PDF FILE
`
`http://tgate/PDF/RFR/201 1/01/03/20110103192224624079-
`
`77813409-003_O01/evi_2424924614-
`191537575_._Attachment_A.pdf
`
`
`
`
`\\TICRS\EXPORT1 1\IMAGEOUT1 1\778\134\77813409
`lE§§;,’E]L1§('gD
`(2 pages)
`‘A
`
`\\TICRS\EXPORT11\IMAGEOUTl l\778\134\778l3409
`\xml1\RFRO003..TPG
`
`http://tgate/PDF/RFR/201 1/O1/03/20110103192224624079-
`77813409-003_002/evi_2424924614-
`19l537575_._Attachment_B.pdf
`
`
`
`\\TICRS\EXPORTl 1\IMAGEOUT] 1\778\134\77813409
`\xml1\RFR0004.JPG
`
`\\TICRS\EXPORT1 1\IMAGEOUT1 1\778\134\77813409
`\x1nl1\R1"R0OO5 JPG
`
`\\TICRS\EXPORT1 l\IMAGEOUTl 1\778\134\77813409
`\xm11\RFR0006 JPG
`
`\\TICRS\EXPORT1DIMAGEOUT1 1\778\134\77813409
`\xml1\RFR0007.JPG
`
`ORIGINAL
`
`‘r}]‘)’F1FBE’EILI§"gD
`(5 pages)
`
`PDF FILE
`
`
`
`
`
`
`
`
`
`
`
`

`
`Request for Reconsideration afier Final Action
`
`_
`
`Page 8 of 15
`
`\\TICRS\EXPORT1 1\IMAGEOUT1 1\778\134\77813409
`\xm1l\RFR0012.JPG
`
`
`
`\\TICRS\EXPORT1 1\IMAGEOUT1 1\778\l34\77813409
`\xml1\RFRO0l3..IPG
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Evidence is attached in the nature of: Attachment A -
`Website Printout - NYSE Attachment B - Website Printout -
`
`
`
`
` DESCRIPTION OF EVIDENCE FILE
`Integrated Prescription Solutions "About Us" Page
`
`Attachment C - Website Printout - Cited Marks "About Us"
`
`TEAS STAMP
`
`PTO Form (Rev 4/2000)
`
`OMB No. 0651-.... (Exp. 08/31/2004)
`
`
`
`
`
`
`
`
`
`
`
`SIGNATURE
`SIGNATOWSNAME
`
`AUTH°RIZEDSIGNAT°RY
`CONCURRENT APPEALFJLED
`
`
`
`USPTO/RFR-24.249246. 14-2
`01l0103192224624079-77813
`409-4704eb76bbbd7d l47efc9
`cdb 1 262ec4dfe-N/A-N/A-201
`10103 191537575443
`
`
`
`
`
`Request for Reconsideration after Final Action
`
`To tl1e Commissioner for Trademarks:
`
`Application serial no. 77813409 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Applicant hereby responds to the Final Office Action mailed July 2, 2010, in which the Examiner
`
`refused to register the INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark (Application
`
`file://\\ticrs-ais-01\ticrsexpo1t\HtmlToTifi'Input\RFR000 120 1 1_O l_O6_13_07_33_WS 1945
`
`1/6/2011
`
`

`
`Request for Reconsideration after Final Action
`
`Page 9 of 15
`
`Serial No. 77/813,409).
`
`In the Office Action, the Examiner refused to register the INTEGRATED PRESCRIPTION
`
`SOLUTIONS & DESIGN mark on the ground that, pursuant to Section 2(d) of the Trademark Act, the
`
`applied-for mark so resembles various registered marks (see Final Office Action, identifying the "cited
`
`marks") such that it is likely that a potential consumer would be confused or mistaken or deceived as to
`
`the source of the goods and/or services of the Applicant and the registrants.
`
`For the reasons set forth below, Applicant respectfully requests that the refusal pursuant to
`A
`Sections 2(d) be withdrawn.
`
`I.
`
`SECTION 2(gl_) REFUSAL — LIKELIHOOD OF CONFUSION
`
`The ultimate question for determining the issue of likelihood of confusion is “whether the marks
`
`will confuse [relevant consumers] into believing that the goods [or services] they identify come from the
`
`same source.” See Final Office Action, p. 5 (citing In re West Point—Peppere1l, Inc., 468 F.2d 200, 175
`
`U.S.P.Q. 558 (C.C.P.A.. 1972)). The test to determine whether there is a likelihood of confusion is set
`
`forth in In re EJ. DuPont de Nemours & Co., 476, F.2d 1367 (C.C.P.A. 1973). Out of the several factors
`
`in the so-called DuPont test, (1) the similarity ofthe marks, (2) the similarity of the goods and/or services
`
`and (3) the similarity of trade channels of the goods and/or services are the most important factors to
`
`consider. See In re Opus One, Inc., 60 U.S.P.Q.2d 1812 (T.T.A.B. 2001); T.M.E.P. §§ 1207.01 et seq.
`
`Here, the cited marks are distinguishable, the services only tangentially related and the purchasers are
`
`sophisticated.
`
`In addition, the “prescription solutions” portion of Applicant’s mark in common with the
`
`cited PRESCRIPTION SOLUTIONS marks should be afforded less weight in the DuPont analysis
`
`because it has been diluted through pervasive use in the healthcare industry. Applicant addresses these
`
`points in greater detail below.
`
`A.
`
`THE INTEGRATED PRESCRIPTIONSOLUTIONS & DESIGN MARK IS
`
`SIGNIFICANTLY DIFFERENT FROM THE CITED MARKS AS TO SIGHT,
`
`SOUND AND CONNOTATION.
`
`The Examiner is correct that for determining the likelihood of confusion, “the focus is on the
`
`recollection of the purchaser who normally retains a general rather than specific impression of
`
`trademarks.” See Final Office Action, p. 5 citing Chemetron Corp. v. Morris Coupling & Clamp Co.,
`
`203 U.S.P.Q. 537 (T.T.A.B. 1979); Sealed/lir Corp. v. Scott Paper Co., 190 U.S.P.Q. 196 (T.T.A.B.
`
`1975); T.M.E.P. § l207.01(b). However, “[t]he commercial impression of a trade-mark is derived from it
`
`as a whole, not from its elements separated and considered in detail.” Estate ofP. D. Beckwith, Inc. v.
`
`Commissioner ofPatents, 252 U.S. 53 8, 545-46 (U.S. 1920) (emphasis added); see also AutoZone, Inc. v.
`
`Tandy Corp, 373 F.3d 786, 795 (6th Cir. Tenn. 2004) (“Conflicting composite marks are to be compared
`
`by looking at them as a whole, rather than breaking the marks up into their component parts for
`
`. The rationale for the rule is that the commercial impression of a composite trademark on
`.
`.
`comparison .
`
`an ordinary prospective buyer is created by the mark as a whole not by its component parts.” (quoting 3
`
`file://\\ticrs-ais-0 1\ticrsexport\HtmlToTiffInput\RFROO0 1201 l_O l_06_l 3_07_33__WS 1 945
`
`l/6/2011
`
`

`
`Request for Reconsideration alter Final Action
`
`Page 10 of 15
`
`J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 59 23:41, at 23-123
`(2003) (emphasis added))). Accordingly, it is improper to focus on the terms “prescription” and
`
`“solutions” or the phrase “prescription solutions” while diminishing the other elements present in the
`
`mark, i.e., the term “integrated” or the prominent design portion of the mark See In Re The Hearsf
`
`Corporation, 982 F.2d 493, 494 (Fed. Cir. 1992) (finding VARGA GIRL for calendars was
`
`inappropriately refused registration for calendars due to VARGA for calendars, the court stated, “by
`
`stressing the portion “varga” and diminishing the portion “girl”, the Board inappropriately changed the
`
`mark”).
`
`Despite this well-settled authority, the Examiner appears to have determined likelihood of
`
`confusion by parsing out the phrase “prescription solutions,” and considering that phrase separately from
`
`the first term of the mark, “integrated.” When considered in its entirety, however, the INTEGRATED
`
`PRESCRIPTION SOLUTIONS & DESIGN mark differs significantly from the cited marks. A relevant
`
`consumer would immediately notice that the INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN
`
`mark appears longer than and sounds different from any of the cited marks and includes the term
`
`“integrated” that is not found in any of the cited marks. The term “integrated” is one-third of Applicant’s
`
`mark and contains the first four syllables in the ten-syllable mark. As the term “integrated” is the first
`
`and most important part of Applicant’s mark in both sight and sound, relevant consumers would weigh
`
`the term “integrated” much more heavily than the terms “prescription” and “solutions” or the phrase
`
`“prescription solutions.”
`
`In addition, the design portion of Applicant’s mark further distinguishes it from the cited marks.
`
`As part of the likelihood of confusion analysis, “it is essential to consider the marks‘ visual
`
`characteristics.” Barbecue Marx, Inc. v. 55] Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir. 111. 2000)
`
`(Where the marks BONE DADDY and SMOKE DADDY were found to be similar in sound; however,
`
`the logo accompanying each mark was distinctively different. Thus, “[t]he visual appearance
`
`significantly undercuts the
`
`argument that the marks are similar in appearance and suggestion”);
`
`CareFirst ofMd., Inc. v. First Care, P.C., 434 F.3d 263, 271 (4th Cir. Va. 2006) (“If one of two similar
`
`marks is commonly paired with other material, that pairing will serve to lessen any confusion that might
`
`otherwise be caused by the textual similarity between the two marks”). Here, design portion of
`
`Applicant’s mark consists of two large interlocking shapes similar to a. D or O that are approximately the
`
`same size as the entire word portion of the mark. See Attachment B. Further, the design portion is to the
`
`left of the word portion and, thus, the first portion of the mark that an ordinary consumer would notice.
`
`In fact, in the Final Office Action, none of the cited marks even include a logo element. See Final Office
`
`Action. Thus, the visual characteristics of Applicant’s mark, i.e., the prominent design element, further
`
`distinguish it from the cited marks.
`
`In addition, the Examiner appears to have downplayed the significantly different connotation
`
`elicited by the INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark. The connotation of
`
`Applicant’s mark differs significantly by virtue of the fact that it includes the term “integrated,” whereas
`
`file://\\ticrs-ais-0 1\ticrsexpoit\HtmlToTiflInput\RFROOO 1201 l_0 l_O6_13_07_33__WS 1945
`
`1/6/2011
`
`

`
`Request for Reconsideration after Final Action
`
`Page 11 of 15
`
`none of the cited marks include a term even remotely close to that term. Moreover, it is
`
`appropriate to give greater weight to the important or “dominant” parts of a composite mark See Kangol
`
`Ltd. V. KangaROOS U.S'A., Inc, 974 F.2d 161, 163 (Fed. Cir. 1992) (where two designs KANGOL and
`
`KANGAROOS, each featuring a kangaroo design under the KANG portion of the mark were found to be
`
`similar because the kangaroo was the dominant portion of the mark). Here, relevant consumers would
`
`see and hear the dominant term “integrated” first.
`
`In addition, since the phrase “prescription solutions” is
`
`used pervasively throughout the healthcare industry, as evidenced by the Examiner's cited references, the
`
`term “integrated” would, to a. large extent, stick out as the most important part of the mark. Further, as an
`
`adjective, the term “integrated” modifies the nouns “prescription” and “solutions,” which to the relevant
`
`consumer would also be an important consideration to detennine the connotation of the whole mark. As
`
`such, more weight should be given to the term “integrated” (as well as the design element of the mark) to
`
`determine the connotation elicited by Applicant’s INTEGRATED PRESCRIPTION SOLUTIONS &
`
`DESIGN mark. CareFirst ofMd., 434 F.3d at 271 (“If one of two similar marks is commonly paired
`
`with other material, that pairing will serve to lessen any confusion that might otherwise be caused by the
`
`textual similarity between the two marks. .
`
`. This effect is most significant when .
`
`.
`
`. the allegedly
`
`infringed mark .
`
`.
`
`. has little independent strength”); Autozone, Inc. v. Tandy Corp., 373 F.3d 786, 797
`
`(6th Cir. 2004); Lang V. Retirement Living Pub. Ca, Inc., 949 F.2d 576, 581-82 (2d Cir. 1991).
`
`Therefore, because none of the cited marks include the term “integrated,” the INTEGRATED
`
`PRESCRIPTION SOLUTIONS & DESIGN mark also differs significantly as to connotation.
`
`Accordingly, when considered in its entirety, relevant consumers would perceive the
`
`INTEGRATED PRESCRIPTION SOLUTIONS & DESIGN mark differently than any of the cited marks
`
`as to sight, sound and connotation, including the PRESCRIPTION SOLUTIONS mark; thus it is not
`
`likely to confuse relevant consumers as to the source of the goods and/or services.
`
`B.
`
`THE GOODS AND SERVICES SOLD IN CONNECTION WITH THE
`
`INTEGRATED PRESCRIPTION SOL UTIONS & DESIGN MARK ARE
`
`DIFFERENT FROM THOSE SOLD UNDER THE CITED MARKS.
`
`The degree to which two services are similar is determined by looking at the degree to which the
`
`services compete with each other. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527, 224 U.S.P.Q.
`
`185 (4th Cir. 1984) (“the similarity of the goods/services the marks identify”); Westchester Media v. PRL
`
`USA Holdings, 214 F.3d 658, 664, 55 U.S.P.Q.2d 1225 (5th Cir. 2000) (“the similarity ofthe products or
`
`services”). The issue is not whether the services are in fact related to each other, but whether consumers
`
`associate the services and expect them to come from the same source. See CareFirst ofMd., Inc. v. First
`
`Care, P.C., 434 F.3d 263, 272 (4th Cir. Va. 2006); see also Brookfield Comm ’ns, Inc. v. West Coast Ent’t
`
`Corp, 174 F.3d 1036, I056, 50 U.S.P.Q.2d 1545 (9th Cir. 1999) (holding that in detemiining whether the
`
`goods are relate