Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA406704
`ESTTA Tracking number:
`05/02/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`77813409
`Integrated Prescription Solutions, Inc.
`INTEGRATED PRESCRIPTION SOLUTIONS
`DOUGLAS Q HAHN ESQ
`STRADLING YOCCA CARLSON & RAUTH
`660 NEWPORT CENTER DRIVE, SUITE 1600
`NEWPORT BEACH, CA 92660-6458
`UNITED STATES
`dhahn@sycr.com
`Appeal Brief
`Appeal Brief re INTEGRATED PRESCRIPTION SOLUTIONS and Design.pdf (
`16 pages )(66480 bytes )
`Attachment A.pdf ( 10 pages )(1969329 bytes )
`Attachment B.pdf ( 3 pages )(616514 bytes )
`Attachment C.pdf ( 2 pages )(487243 bytes )
`Attachment D.pdf ( 2 pages )(1893727 bytes )
`Attachment E.pdf ( 5 pages )(2884348 bytes )
`Attachment F.pdf ( 10 pages )(1571158 bytes )
`Douglas Q. Hahn
`dhahn@sycr.com, jmellema@sycr.com
`/Douglas Q. Hahn/
`05/02/2011
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Trademark Attorney: Carol Spils
`
`Trademark Law Office: 104
`
`In re Application of
`Integrated Prescription Solutions, Inc.
`
`Application Serial No. 77/813409
`Filed: August 26, 2009
`For: INTEGRATED
`PRESCRIPTION SOLUTIONS
`
`BOX TTAB/NO FEE
`COMMISSIONER FOR TRADEMARKS
`P.O. Box 1451
`ALEXANDRIA, VA 22313-1451
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`BRIEF FOR APPLICANT
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`I.
`
`INTRODUCTION
`Pursuant to a Notice of Appeal filed with the Trademark Trial and Appeal Board on
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`January 3, 2011 and denial of the Request for Reexamination on March 1, 2011, Applicant
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`hereby appeals from the Examining Attorney’s final refusal to register Applicant’s
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`INTEGRATED PRESCRIPTION SOLUTIONS & Design mark, dated July 2, 2010, and
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`respectfully requests the Trademark Trial and Appeal Board reverse the Examining Attorney’s
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`decision on the ground that the Applicant’s mark does not create a likelihood of confusion with
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`the marks cited by the Examining Attorney and is not “merely descriptive.”
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`II.
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`STATEMENT OF FACTS
`Applicant seeks registration on the Principal Register of its INTEGRATED
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`PRESCRIPTION SOLUTIONS & Design mark for “arranging of managed care contractual
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`services in the fields of pharmacy benefit management, durable medical equipment, home health
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`equipment, home therapy services, translation and transportation services” in International Class
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`No. 35, and “administration of pre-paid healthcare plans; administration of preferred provider
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`plans in the field of healthcare insurance; claims administration services in the fields of workers’
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`compensation and automobile personal injury protection coverage; providing information in the
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`field of workers’ compensation and automobile personal injury protection coverage” in
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`International Class No. 36. The trademark application was filed on August 26, 2009, and
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`received U.S. Trademark Application Serial No. 77/813,409.
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`The Examining Attorney refused registration of Appellant’s INTEGRATED
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`PRESCRIPTION SOLUTIONS & Design mark in an Office Action, dated December 9, 2009,
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`contending (1) that the applied-for mark so resembles various registered marks (the “cited
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`marks”) that it is likely that a potential consumer would be confused or mistaken or deceived as
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`to the source of the goods and/or services of Applicant and the registrants, and (2) that the
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`applied-for mark describes features of Applicant’s services. Specifically, the cited marks are:
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`PRESCRIPTIONSOLUTIONS (word mark) - Registration No. 3,709,895
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`(hereinafter ‘895);
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`PRESCRIPTION SOLUTIONS (word mark) - Registration No. 3,543,198 (‘198);
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`RX PRESCRIPTION SOLUTIONS & Design – Registration No. 2,832,357
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`(‘357);
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`PRESCRIPTION SOLUTIONS (word mark) – Registration No. 1,917,044 (‘044);
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`PRESCRIPTION SOLUTIONS (word mark) – Registration No. 1,888,829 (‘829).
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`In Applicant’s response to the initial refusal to register, filed on June 9, 2010, Applicant
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`argued that the INTEGRATED PRESCRIPTION SOLUTIONS & Design word mark is
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`substantially different from the cited marks, in that the term “integrated” added to “prescription
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`solutions” significantly distinguishes Applicant’s mark from the cited marks, the terms
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`“prescription” and “solutions” are diluted, and the services and channels of trade are dissimilar
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`as between Applicant’s mark and the cited marks, so that there would not be a likelihood of
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`confusion between the marks. Applicant further argued that Applicant’s mark is suggestive, not
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`merely descriptive, as it requires a consumer to make an imaginative leap from the mark to the
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`services for which the mark is used.
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`The Examining Attorney expounded her position in a Final Office Action, dated July 2,
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`2010, maintaining that the applied-for mark so resembles various registered marks (see June 9,
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`2010 Final Office Action, identifying the “cited marks”) that it is likely that a potential consumer
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`would be confused or mistaken or deceived as to the source of the goods and/or services of the
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`Applicant and the registrants, and that Applicant’s mark merely describes a feature of
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`Applicant’s services. The Examining Attorney supported her refusal by citing to registered
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`marks and Internet evidence showing third-party use of the terms “prescription solutions” and
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`“integrated prescription.”
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`In response thereto, Applicant requested reconsideration of the Examining Attorney’s
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`final refusal on January 3, 2011, further arguing that the marks are distinguishable, the services
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`are only tangentially related and the purchasers are sophisticated. Applicant also argued that the
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`phrase “prescription solutions” should be afforded less weight in the DuPont analysis because it
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`has been diluted through pervasive use in the healthcare industry. Finally, Applicant argued that
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`Applicant’s mark is suggestive, not merely descriptive, as it requires a consumer to make an
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`imaginative leap from the mark to the services for which the mark is used. Applicant
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`concurrently filed a Notice of Appeal on January 3, 2011.
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`The Examining Attorney denied Applicant’s request for reconsideration on March 1,
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`2011, maintaining her earlier rejections on the same bases.
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`On March 1, 2011, the Trademark Trial and Appeal Board (“TTAB”) mailed a letter
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`resuming the appeal and allowing Applicant sixty days from the mailing date in which to file its
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`Appeal Brief. Accordingly, Applicant hereby files its Appeal Brief in compliance with the
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`TTAB’s letter of March 1, 2011.
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`III.
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`ARGUMENT
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`SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
`A.
`The ultimate question for determining the issue of likelihood of confusion is “whether the
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`marks will confuse [relevant consumers] into believing that the goods [or services] they identify
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`come from the same source.” In re West Point-Pepperell, Inc., 468 F.2d 200, 175 U.S.P.Q. 558
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`(C.C.P.A.. 1972).
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`1.
`
`EACH OF THE DUPONT FACTORS SUPPORT A FINDING OF
`NO CONFUSION BETWEEN APPLICANT’S MARK AND THE
`CITED MARKS
`The test to determine whether there is a likelihood of confusion is set forth in In re E.I.
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`DuPont de Nemours & Co., 476, F.2d 1367 (C.C.P.A. 1973). Out of the several factors in the
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`so-called DuPont test, (1) the similarity of the marks, (2) the similarity of the goods and/or
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`services and (3) the similarity of trade channels of the goods and/or services are the most
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`important factors to consider. See In re Opus One, Inc., 60 U.S.P.Q.2d 1812 (T.T.A.B. 2001);
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`T.M.E.P. §§ 1207.01 et seq. Here, the cited marks are distinguishable, the services only
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`tangentially related and the purchasers are sophisticated. In addition, the “prescription solutions”
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`portion of Applicant’s mark in common with the cited PRESCRIPTION SOLUTIONS mark
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`should be afforded less weight in the DuPont analysis because it has been diluted through
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`pervasive use in the healthcare industry. Applicant addresses these points in greater detail below.
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`a.
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`The Integrated Prescription Solutions Mark Is Significantly
`Different From The Cited Marks As To Sight, Sound And
`Connotation
`The first step of the DuPont analysis favors Applicant because the marks are
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`distinguishable. Applicant’s mark greatly differs from the cited registered marks. Here, the
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`differences between the cited marks and applicant’s marks are more than enough to prevent
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`consumer confusion. In making a comparison between marks, the Restatement of Torts § 729
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`notes that the marks are to be compared in sound, sight and meaning. However, even similarity
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`as to one aspect of the sound, sight and meaning trilogy does not automatically result in a finding
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`of a likelihood confusion. In re Lamson Oil Co., 6 U.S.P.Q.2d 1041, n.4 (TTAB 1987).
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`First, Applicant’s mark does not sound like PRESCRIPTIONSOLUTIONS, RX
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`PRESCRIPTION SOLUTIONS or PRESCRIPTION SOLUTIONS. Applicant’s mark consists
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`of three words and a design element. On the other hand, the mark in the ’895 registration
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`consists of one word, the marks in the ’198, ’044 and ’829 registrations consist of two words,
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`and lastly, the mark in the ‘357 registration consist of three words.
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`Second, the word portion of the marks obviously differ phonetically. The word portion
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`of Applicant’s mark consists of ten (10) syllables, whereas the cited marks ranges from six to
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`eight syllables. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1145 (9th Cir. 2002) (where
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`both marks were used in connection with publications directed to small businesses and their
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`owners, the Court pointed out that the defendant’s mark contained “an entire four-syllable word”
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`that plaintiff’s mark did not and the additional word “makes the mark ‘Entrepreneur Illustrated’
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`almost twice as long—to the eye and the ear—as the mark ‘Entrepreneur,’” calling these
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`“noticeable” differences).
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`Third, the mark INTEGRATED PRESCRIPTION SOLUTIONS & Design differs in
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`sight from the cited marks. The stylized RX element in the ’357 registration creates an obvious
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`difference in sight to Applicant’s mark, which consists of only three, non-stylized words. Also,
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`the marks in ’198, ’044 and ’829 registrations are visually different from Applicant’s mark as
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`they consist of two words, whereas Applicant’s mark consists of three words and a design
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`element.
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`More particularly, the design portion of Applicant’s mark further distinguishes it from the
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`cited marks. As part of the likelihood of confusion analysis, "it is essential to consider the marks'
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`visual characteristics." Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir.
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`Ill. 2000) (Where the marks BONE DADDY and SMOKE DADDY were found to be similar in
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`sound; however, the logo accompanying each mark was distinctively different. Thus, "[t]he
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`visual appearance significantly undercuts the … argument that the marks are similar in
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`appearance and suggestion."); CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263, 271 (4th
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`Cir. Va. 2006) ("If one of two similar marks is commonly paired with other material, that pairing
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`will serve to lessen any confusion that might otherwise be caused by the textual similarity
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`between the two marks."). Here, design portion of Applicant’s mark consists of two large
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`interlocking shapes similar to a D or O that are approximately the same size as the entire word
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`portion of the mark. See Attachment D. Further, the design portion is to the left of the word
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`portion and, thus, the first portion of the mark that an ordinary consumer would notice. In fact, in
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`the Final Office Action, none of the cited marks even include a logo element. See Final Office
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`Action. Thus, the visual characteristics of Applicant’s mark, i.e., the prominent design element,
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`further distinguish it from the cited marks.
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`Where, as here, the common wording (“PRESCRIPTION SOLUTIONS”) is highly
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`suggestive, consumer confusion is unlikely as long as there is some basis to distinguish the
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`marks. The Ninth Circuit recently reversed a district court’s grant of summary judgment to
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`plaintiff based on the differences created by additional wording in the defendant’s mark.
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`Entrepreneur Media, Inc., 279 F.3d at 1145 (both marks used in connection with publications
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`directed to small businesses and their owners). The Court noted that “[a] reasonable juror could,
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`in this context, find “Entrepreneur” and “Entrepreneur Illustrated” dissimilar.
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`Id. (emphasis
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`added); see also McGraw-Hill Publ'g Co. v. American Aviation Assocs., 117 F.2d 293, 295 (D.C.
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`Cir. 1940) (finding confusion not probable between “American Aviation” and “Aviation” and
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`relying in part on the fact that “American Aviation” “is composed of two words”). Here, the
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`addition of the word INTEGRATED, which connotes a multi-spectrum or broad practice, clearly
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`distinguishes Applicant’s mark from the two-word PRESCRIPTION SOLUTIONS marks.
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`Thus, the difference in sound and appearance, such as the additional word
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`“INTEGRATED” and the Design element in Applicant’s mark, create distinguishable elements
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`that avoid any likelihood of confusion. This fact, in addition to the differences in the services
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`and the sophistication of the purchasers discussed below, make consumer confusion unlikely.
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`Despite this well-settled authority, the Examiner appears to have determined likelihood of
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`confusion by parsing out the phrase “prescription solutions,” and considering that phrase
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`separately from the first term of the mark, “integrated,” and the Design element of Applicant’s
`mark. However, “[t]he commercial impression of a trade-mark is derived from it as a whole, not
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`from its elements separated and considered in detail.” Estate of P. D. Beckwith, Inc. v.
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`Commissioner of Patents, 252 U.S. 538, 545-46 (U.S. 1920) (emphasis added); see also
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`AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 795 (6th Cir. Tenn. 2004) (“Conflicting composite
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`marks are to be compared by looking at them as a whole, rather than breaking the marks up into
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`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 MCCARTHY, MCCARTHY ON
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`TRADEMARKS AND UNFAIR COMPETITION § 23:41, at 23-123 (2003) (“MCCARTHY ON
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`TRADEMARKS”) (emphasis added). Accordingly, it is improper to focus on the terms
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`“prescription” and “solutions” or the phrase “prescription solutions” while diminishing the other
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`elements present in the mark, i.e., the term “integrated,” and the Design element of Applicant’s
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`mark. See In Re The Hearst Corporation, 982 F.2d 493, 494 (Fed. Cir. 1992) (finding VARGA
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`GIRL for calendars was inappropriately refused registration for calendars due to VARGA for
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`calendars, the court stated, “by stressing the portion “varga” and diminishing the portion “girl”,
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`the Board inappropriately changed the mark.”). When considered in its entirety, the
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`INTEGRATED PRESCRIPTION SOLUTIONS & Design mark differs significantly from the
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`cited marks. A relevant consumer would immediately notice that the INTEGRATED
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`PRESCRIPTION SOLUTIONS & Design mark appears longer than and sounds different from
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`any of the cited marks and includes the term “integrated” that is not found in any of the cited
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`marks. As the term “integrated” and the unique Design element of Applicant’s mark are the
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`most important parts of Applicant’s mark in both sight and sound, relevant consumers would
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`weigh those elements much more heavily than the terms “prescription” and “solutions” or the
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`phrase “prescription solutions.”
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`In addition, the Examiner appears to have downplayed the significantly different
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`connotation elicited by the INTEGRATED PRESCRIPTION SOLUTIONS & Design mark. The
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`connotation of Applicant’s mark differs significantly by virtue of the fact that it includes the term
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`“integrated,” whereas none of the cited marks include a term even remotely close to that term.
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`The Design element featuring two large interlocking shapes similar to a D or O that are
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`approximately the same size as the entire word portion of the mark serves to further distinguish
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`Applicant’s mark over the cited marks. Moreover, it is appropriate to give greater weight to the
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`important or “dominant” parts of a composite mark. See Kangol Ltd. V. KangaROOS U.S.A.,
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`Inc., 974 F.2d 161, 163 (Fed. Cir. 1992) (where two designs KANGOL and KANGAROOS,
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`each featuring a kangaroo design under the KANG portion of the mark were found to be similar
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`because the kangaroo was the dominant portion of the mark). With regard to the design element,
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`none of the cited marks includes a design even remotely similar to the unique Design element of
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`Applicant’s mark. With regard to the word portion of Applicant’s mark, relevant consumers
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`would see and hear the dominant term “integrated” first. In addition, since the phrase
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`“prescription solutions” is used pervasively throughout the healthcare industry, as evidenced by
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`the Examiner's cited marks, the term “integrated” would, to a large extent, stick out as the most
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`important part of the mark. Further, as an adjective, the term “integrated” modifies the nouns
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`“prescription” and “solutions,” which to the relevant consumer would also be an important
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`consideration to determine the connotation of the whole mark. As such, more weight should be
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`given to the term “integrated” to determine the connotation elicited by Applicant’s
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`INTEGRATED PRESCRIPTION SOLUTIONS & Design mark. Therefore, because none of the
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`cited marks include the term “integrated,” the INTEGRATED PRESCRIPTION SOLUTIONS &
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`Design mark also differs significantly as to connotation.
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`Accordingly, when considered in its entirety, relevant consumers would perceive the
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`INTEGRATED PRESCRIPTION SOLUTIONS & Design mark differently than any of the cited
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`marks as to sight, sound and connotation, including the PRESCRIPTION SOLUTIONS mark;
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`thus it is not likely to confuse relevant consumers as to the source of the goods and/or services.
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`b.
`
`The Goods And Services Sold In Connection With The
`Integrated Prescription Solutions 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
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`which the services compete with each other. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522,
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`1527, 224 U.S.P.Q. 185 (4th Cir. 1984) (“the similarity of the goods/services the marks
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`identify”); Westchester Media v. PRL USA Holdings, 214 F.3d 658, 664, 55 U.S.P.Q.2d 1225
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`(5th Cir. 2000) (“the similarity of the products or services”). The issue is not whether the
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`services are in fact related to each other, but whether consumers associate the services and expect
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`them to come from the same source. See CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d
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`263, 272 (4th Cir. Va. 2006); see also Brookfield Comm’ns, Inc. v. West Coast Ent’t Corp., 174
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`F.3d 1036, 1056, 50 U.S.P.Q.2d 1545 (9th Cir. 1999) (holding that in determining whether the
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`goods are related, a court should ask whether “the consuming public is likely somehow to
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`associate” the defendant’s with the plaintiff’s).
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`Applicant’s services are different from the services sold in connection with the cited
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`marks. Applicant’s services are aimed at and provided to injured workers covered by worker’s
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`compensation insurance and other insurance-policy holders. See Attachment D, Website
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`Printouts. Applicant provides these consumers with a number of ancillary medical healthcare
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`services such as durable medical equipment and supplies, home healthcare, home therapy
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`including physical, occupational, and speech, and transportation and language translation
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`services. See Attachment D. For example, Applicant’s services include supply of wheelchairs
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`and other durable medical equipments. In contrast, the cited marks provide primarily online and
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`mail-order pharmacy services. See Attachment E, Website Printouts. Online and mail-order
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`pharmacy services are used primarily by consumers to obtain prescription drugs, including
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`through programs such as Medicare, whereas Applicant’s service is limited to either worker’s
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`compensation, auto-insurance, or other insurance covered individuals. As such, it is clear that a
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`pharmacy, whether online or mail-order, is a different service from a service providing ancillary
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`medical healthcare services to insured individuals. See e.g. Carefirst, 434 F.3d at 272 (finding
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`dissimilar services where, “First Care only offers direct medical services to individuals. CareFirst
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`does not; rather, it contracts with participating providers who agree to treat CareFirst members”).
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`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
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`primarily used to offer online and mail order pharmacy services to general consumers. In
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`contrast, Applicant's services include such diverse services as transportation, translation and
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`home therapy services, which cannot be provided through the mail. See Attachment D. Of
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`course, the channels of advertising are different as well since translation services, for example,
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`would not be advertised through the same channels as mail order prescription drugs. Further,
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`Applicant’s services are specialized to the Worker’s Compensation, Automobile, and Personal
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`Injury Insurance markets, which comprise sophisticated consumers. See Attachment D; see also
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`Medici Classics Prods. LLC v. Medici Group LLC, 590 F. Supp. 2d 548, 557 (S.D.N.Y. 2008)
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`(the sophistication of a consumer can be inferred based on the nature of the product or its price),
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`citing Real News Project, Inc., 2008 U.S. Dist. LEXIS 41457, 2008 WL 2229830 at *21.
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`2.
`
`APPLICANT’S MARK MUST BE CONSIDERED IN ITS
`ENTIRETY
`Here importantly, the applied-for mark contains a unique Design element not found in the
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`cited marks as well as the additional word “INTEGRATED” before the terms PRESCRIPTION
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`and SOLUTIONS. As noted above, in determining a likelihood of confusion one must consider
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`the effect of the mark taken as a whole. An additional term can make the mark distinctive. See
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`The Wooster Brush Company v. Prager Brush Co., 231 U.S.P.Q. 316 (TTAB 1986) (court found
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`POLY PRO for paint brushes not likely to be confused with POLY GLO for paint applicators
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`since the addition of other matter to a highly suggestive or descriptive designation, whether such
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`matter is equally suggestive or even descriptive, or possibly nothing more than a variant of the
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`term, may be sufficient to avoid confusion). See also In re Texas Instruments Inc., 193 U.S.P.Q.
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`678 (TTAB 1976) (COPPER CLAD for copper coated carbon electrodes for electric cutting and
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`gouging vs. COPPERCLAD and design for composite metal wire for use in electric conductors).
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`As such, consumer confusion is unlikely when taking the INTEGRATED PRESCRIPTION
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`SOLUTIONS & Design and PRESCRIPTION SOLUTIONS word and design marks as a whole.
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`Here, the unique Design element as well as the additional term “INTEGRATED” distinguishes
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`Applicant’s mark from the cited marks, particularly as that term is prominently featured as the
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`first and more significant word in the mark.
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`Further, the case law makes it clear that there is no rule that confusion is automatically
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`likely if a junior user has a mark that contains the whole of another’s mark. 3 J. THOMAS
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`MCCARTHY, MCCARTHY ON TRADEMARKS § 23:41, at 23-123 (citing Colgate-Palmolive Co. v.
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`Carter-Wallace, Inc., 167 U.S.P.Q. 529 (C.C.P.A. 1970) and others). A likelihood of confusion
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`can be avoided where the incorporated mark has been combined with other features in a manner
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`that its identity is lost, or is so merged with those other features that, overall, the marks are
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`deemed dissimilar in sight, sound and meaning. Miller Brewing Co. v. Premier Beverages, Inc.,
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`210 U.S.P.Q. 43, 48-49 (TTAB 1981) (no likelihood of confusion between MILLER and ‘OL
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`BOB MILLER’S even though both used for beverages); see also McGraw-Hill Publ’g Co. v.
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`American Aviation Assocs., 117 F.2d 293, 295 (D.C. Cir. 1940) (finding confusion not probable
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`between ‘American Aviation’ and ‘Aviation’ and relying in part on the fact that ‘American
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`Aviation’ is composed of “two words”); Champions Golf Club v. Champions Golf Club, 78 F.3d
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`1111, 38 U.S.P.Q.2d 1161 (6th Cir. 1996) (“When the primary term is weakly protected to begin
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`with, minor alterations may effectively negate any confusing similarity between the two marks”).
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`Here, it is improper to stress the terms PRESCRIPTION SOLUTIONS and discount the other
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`elements associated with each mark such as RX or the Design element or in the case of
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`Applicant’s mark, the unique Design element and the significant term “INTEGRATED”.
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`Furthermore, it is worth noting that the word “PRESCRIPTION” has been disclaimed in four of
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`the five cited marks.
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`The cases cited above also make it clear that use of one similar or identical term does not
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`require a finding that the marks are confusingly similar. See General Mills, Inc. v. Kellogg Co.,
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`824 F.2d 622, 627 (8th Cir. 1987) (“Apple Raisin Crisp” and “Oatmeal Raisin Crisp” held not
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`confusingly similar, since “[t]he use of identical, even dominant, words in common does not
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`automatically mean that two marks are similar). Here, the marks are clearly distinguishable as a
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`result of the addition of the unique Design element and of the word “INTEGRATED” in
`
`Applicant’s mark. Accordingly, consumer confusion is unlikely to result from registration of
`
`Applicant’s mark.
`
`DOCSOC/1486138v1/014025-0003
`
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`
`

`
`3.
`
`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
`Consumer confusion is even more unlikely to arise from the common use of the terms
`
`“PRESCRIPTION” and “SOLUTIONS” because they are used and registered for a variety of
`
`goods and services. See MCCARTHY ON TRADEMARKS § 11:86 (1998) (“Marks like ACME and
`
`NATIONAL, which are in common use by many sellers, are not entitled to the same scope of
`
`protection as strong marks like POLAROID and KODAK”). The Federal Circuit has noted:
`
`Where a mark is commonly used on numerous types of goods and
`services by different companies, a term such as PREMIUM, SUN,
`BLUE RIBBON, NATIONAL, GIANT or AMERICAN, it may be
`reasonable to infer in some situations that purchasers have been
`conditioned to expect different sources for specifically different
`goods or services even though such goods or services might be
`deemed sufficiently related to be attributable to a single source
`under an un-commonly used mark.
`
`Champions Golf Club v. Champions Golf Club, 78 F.3d 1111, 38 U.S.P.Q.2d 1161 (6th Cir.
`
`1996) (“When the primary term is weakly protected to begin with, minor alterations may
`
`effectively negate any confusing similarity between the two marks”); Sure-Fit Prods. Co. v.
`
`Saltzson Drapery Co., 254 F2d. 158, 117 U.S.P.Q. 295, 297 (C.C.P.A. 1958) (“Where a party
`
`chooses a weak mark, his competitors may come closer to his mark than would be the case with
`
`a strong mark without violating his rights.”); In Re Cosmetic Labs, Inc., 202 U.S.P.Q. 842, 845
`
`(TTAB 1979) (added matter avoids conflict where the product marks in question “play upon
`
`commonly used … terms”); see MCCARTHY ON TRADEMARKS at § 11.76 (1998) (“[t]he weaker a
`
`mark, the fewer junior uses that will trigger a likelihood of customer confusion”); Claremont
`
`Polychemical Corp. v. Atlantic Powdered Metals, Inc., 470 F.2d 636, 637 (1972) (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 of the
`
`integrated mark.) A mark consisting of common words frequently used for products or services
`
`is usually found to be a weak mark. See Carefirst of Maryland, Inc. v. First Care, P.C., 434 F.3d
`
`263, 270, 77 U.S.P.Q.2d 1577 (4th Cir. 2006) (“‘The 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
`
`DOCSOC/1486138v1/014025-0003
`
`- 11 -
`
`

`
`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. Here, the multiple registrations of and approvals of
`
`registration for marks incorporating the terms “PRESCRIPTION” or “SOLUTIONS” for a
`
`variety of goods and services demonstrate that consumers have learned to differentiate among
`
`these marks without confusion, making confusion unlikely in this case. Examples of such
`
`registrations include the following non-exclusive list:
`
`Mark
`MEDCO
`PRESCRIPTION
`PLANS
`
`Registration No.
`3496949
`
`MR.
`PRESCRIPTION
`
`2813824
`
`NDC
`PRESCRIPTION
`PRICE ANALYZER
`
`2567102
`Cancelled
`
`NDC
`PRESCRIPTION
`SALES ANALYZER
`
`2567101
`Cancelled
`
`2674868
`
`3330056
`
`2737409
`
`WEB-FILL
`PRESCRIPTION
`REFILLS
`
`PRESCRIPTION
`PATHWAY
`
`SERVE YOU
`CUSTOM
`PRESCRIPTION
`MANAGEMENT
`
`DOCSOC/1486138v1/014025-0003
`
`Owner
`Medco Health Solutions,
`Inc.
`100 Parsons Pond Drive
`Franklin Lakes, NJ 07417
`
`Mr. Prescription, Inc.
`955 Congress Park Drive
`Dayton, OH 45459
`National Data Intellectual
`Property Corp.
`One National Data Plaza
`Atlanta, GA 303292010
`
`National Data Intellectual
`Property Corp.
`One National Data Plaza
`Atlanta, GA 303292010
`
`Raley's TM, Inc.
`500 West Capitol Avenue
`West Sacramento, CA
`95852
`Part D Management
`Services LLC
`1001 Heathrow Park
`Lane, Suite 5001
`Lake Mary, FL 32746
`Serve You Custom
`Prescription Management,
`Inc.
`9051 West Heather
`Avenue P.O. Box 23237
`
`- 12 -
`
`Goods/Services
`Class 35 - drug utilization review services; mail
`order and on-line pharmacy services;
`pharmaceutical benefit management services,
`namely, administration of pharmacy benefit
`plans
`Class 35 - Retail drug store and retail pharmacy
`services
`
`Class 8 - Providing temporary use of on-line non-
`downloadable software for monitoring, analyzing
`and reporting of retail pharmacy transactions,
`prescription drug transactions, sales patterns
`and pricing information
`Class 8 - Providing temporary use of on-line non-
`downloadable software for monitoring, analyzing
`and reporting of retail pharmacy transactions,
`prescription drug transactions, sales patterns
`and pricing information
`Class 35 - Retail pharmacy services
`
`Class 35 - Administering pharmacy
`reimbursement programs and services;
`prescription and non-prescription drug mail order
`services; on-line retail pharmacy services…
`
`Class 35 - retail pharmacy services, namely,
`dispensing prescriptions to participants in member
`organizations
`
`

`
`Mark
`
`Registration No.
`
`POSTAL
`PRESCRIPTION
`SERVICES
`
`NATIONAL
`PRESCRIPTION
`DRUG COALITION
`
`AAA
`PRESCRIPTION
`SAVINGS
`
`AMERIPLAN
`PRESCRIPTION
`
`2555161
`
`3207021
`
`2910933
`
`2740217
`
`ESCALANTE
`SOLUTIONS
`
`3313737
`
`RITE AID HEALTH
`SOLUTIONS
`
`3747992
`
`BLUE SOLUTIONS
`
`3219611
`
`PATIENT SUPPORT
`SOLUTIONS
`
`3125169
`
`EXTRA-
`STRENGTH
`SOLUTIONS
`
`BIOCARE
`SOLUTIONS
`
`2974317
`
`2947656
`
`DOCSOC/1486138v1/014025-0003
`
`Owner
`Milwaukee, Wi 53223
`Healthy Options Inc.
`3800 S.E. 22nd Avenue
`P.O. Box 42121
`Portland, OR 97202
`Aon Consulting, Inc.
`Aon Center - 8th Floor
`Law Department 200 East
`Randolph Street
`Chicago, IL 60601
`American Automobile
`Association, Inc.
`1000 AAA Drive
`Heathrow, FL 32746
`AMERIPLAN
`CORPORATION
`14180 Dallas Parkway,
`Suite 508
`Dallas, TX 75254
`Longs Drug Stores
`California, Inc.
`141 N. Civic Drive
`Walnut Creek, CA 94591
`Name Rite, L.L.C.
`27710 Jefferson Avenue,
`Suite 105
`Temecula, CA 92590
`
`Blue Cross and Blue
`Shield Association
`6th Floor 225 North
`Michigan Avenue
`Chicago, IL 60601
`
`Celgene Corporation
`86 Morris Avenue
`Summit, NJ 07901
`
`Medco Health Solutions,
`Inc.
`100 Parsons Pond Drive
`Franklin Lakes, NJ 07417
`Caremark International
`Inc.
`2211 Sanders Road
`Northbrook, IL 60062
`
`- 13 -
`
`Goods/Services
`
`Class 35 - pharmacy