Request for Reconsideration afier Final Action
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`Page 1 of 19
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`PTO Form (Rev 4/2000)
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`OMB No. 0651-.... (Exp. 08l31l2004)
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`Request for Reconsideration after Final Action
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`The table below presents the data as entered.
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`Input Field
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`Entered
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`ARGUMENT(S)
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`SERIAL NUMBER
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`77813411
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`LAW OFFICE ASSIGNED
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`LAW OFFICE 104
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`MARK SECI‘ ION (no change)
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`Applicant hereby responds to the Final Office Action mailed July 2, 2010, in which the
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`Examiner refused to register the INTEGRATED PRESCRIPTION SOLUTIONS word mark
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`(Application Serial No. 77/813,411).
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`In the Office Action, the Examiner refused to register the INTEGRATED PRESCRIPTION
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`SOLUTIONS word mark on two grounds. First, the Examiner refused registration pursuant to Section
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`2(d) of the Trademark Act, contending that 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
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`Applicant and the registrants. Second, the Examiner refused registration pursuant to Trademark Act
`Section 2(e)(1), contending that Applicant’s mark merely describes a feature of app1icant’s services.
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`For the reasons set forth below, Applicant respectfully requests that the refusals pursuant to
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`Sections 2(d) and 2(e)(1) be withdrawn.
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`L
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`SECTION 21d) REFUSAL — LIKELIHOOD OF CONFUSION
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`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 come
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`from the same source.” See Final Office Action, p. 5 (citing In re West Point-Pepperell, Inc, 468 F.2d
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`200, 175 U.S.P.Q. 558 (C.C.P.A.. 1972)). The test to determine whether there is a likelihood of
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`confusion is set forth in In re EJ. DuPont de Nemours & Ca, 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
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`goods and/or 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 tangentially
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`Request for Reconsideration alter Final Action
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`Page 2 of 19
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`related and the purchasers are sophisticated.
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`In addition, the “prescription solutions” portion of
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`App1icant’s mark in common with the cited PRESCRIPTION SOLUTIONS mark should be afforded
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`less weight in the DuPont analysis because it has been diluted through pervasive use in the healthcare
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`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
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`DIFFERENT FROM THE CITED MARKS AS TO SIGHT, SOUND AND
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`CONNOTATION.
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`The Examiner is correct that for determining the likelihood of confusion, “the focus is on the
`recollection ofthe 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 C0,,
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`203 U.S.P.Q. 537 (T.T.A.B. 1979); Sealed/lir Corp. v. ScottPaper Co., 190 U.S.P.Q. 196 (T.T.A.B.
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`1975); T.M.E.P. § 1207.01(b). However, “[t]he commercial impression of atrade-mark is derived from
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`it as a whole, not from its elements separated and considered in detail.” Estate ofP. D. Beckwith, Inc.
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`v. Commissioner ofPatents, 252 U.S. 538, 545-46 (U.S. 1920) (emphasis added); see also AutoZone,
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`Inc. v. Tandy Corp, 373 F.3d 786, 795 (6th Cir. Tenn. 2004) (“Conflicting composite marks are to be
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`compared by looking at them as a whole, rather than breaking the marks up into their component parts
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`for comparison .
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`.
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`.
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`. The rationale for the rule is that the commercial impression of a composite
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`trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component
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`parts.” (quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 55' 23:41, at
`23-123 (2003) (emphasis added))). Accordingly, it is improper to focus on the terms “prescription” and
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`“solutions” or the phrase “prescription solutions” while diminishing the other elements present in the
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`mark, i.e., the term “integrated.” See In Re The Hearst Corporation, 982 F.2d 493, 494 (Fed. Cir.
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`1992) (finding VARGA GIRL for calendars was inappropriately refused registration for calendars due
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`to VARGA for calendars, the court stated, “by stressing the portion “varga” and diminishing the
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`portion “girl”, the Board inappropriately changed the mark”).
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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 separately
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`from the first term of the mark, “integrated.” When considered in its entirety, however, the
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`INTEGRATED PRESCRIPTION SOLUTIONS mark differs significantly from the cited marks. A
`relevant consumer would immediately notice that the INTEGRATED PRESCRIPTION SOLUTIONS
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`mark appears longer than and sounds different from any of the cited marks and includes the term
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`“integrated” that is not found in any of the cited marks. The term “integrated” is one-third of
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`Applicant’s mark and contains the first four syllables in the ten-syllable mark. As the term “integrated”
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`is the first and most important part of App1icant’s mark in both sight and sound, relevant consumers
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`would weigh the term “integrated” much more heavily than the terms “prescription” and “solutions” or
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`the phrase “prescription solutions.”
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`Request for Reconsideration afier Final Action
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`Page 3 of 19
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`In addition, tl1e Examiner appears to have downplayed the significantly different connotation
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`elicited by the INTEGRATED PRESCRIPTION SOLUTIONS mark. The connotation of Applicant’s
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`mark differs significantly by virtue of the fact that it includes the term “integrated,” whereas none of
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`the cited marks include a term even remotely close to that term. Moreover, it is appropriate to give
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`greater weight to the important or “dominant” parts of a composite mark. See Kangol Ltd. V.
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`KangaRO0S U.S.A., Inc., 974 F.2d 161, 163 (Fed. Cir. 1992) (where two designs KANGOL and
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`KANGAROOS, each featuring a kangaroo design under the KANG portion of the mark were found to
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`.be similar because the kangaroo was the dominant portion of the mark). Here, relevant consumers
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`would see and hear the dominant term “integrated” first. In addition, since the phrase “prescription
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`solutions” is used pervasively throughout the healthcare industry, as evidenced by the Examiner's cited
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`references,
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`the term “integrated” would, to a large extent, stick out as the most important part of the
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`mark Further, as an adjective, the term “integrated” modifies the nouns “prescription” and
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`“solutions,” which to the relevant consumer would also be an important consideration to determine the
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`connotation of the whole mark. As such, more weight should be given to the term “integrated” to
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`determine the connotation elicited by Applicant’s INTEGRATED PRESCRIPTION SOLUTIONS
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`mark. Therefore, because none of the cited marks include the term “integrated,” the INTEGRATED
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`PRESCRIPTION SOLUTIONS 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 mark differently than any of the cited marks as to
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`sight, sound and connotation, including the PRESCRIPTION SOLUTIONS mark; thus it is not likely
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`to confuse relevant consumers as to the source of the goods and/or services.
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`B.
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`THE GOODS AND SERVICES SOLD IN CONNECTION WITH THE
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`INTEGRATED PRESCRIPTION SOLUTIONS MARK ARE DIFFERENT FROM
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`THOSE SOLD UNDER THE CITED MARKS.
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`The degree to which two services are similar is determined by looking at the degree to which
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`the services compete with each other. See Pizzeria Uno Corp. 12. 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
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`Media v. PRL USA Holdings, 214 F.3d 658, 664, 55 U.S.P.Q.2d 1225 (5th Cir. 2000) (“the similarity of
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`the products or services”). The issue is not whether the services are in fact related to each other, but
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`whether consumers associate the services and expect them to come from the same source. See
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`CareFirst ofMa'., Inc. v. First Care, P.C., 434 F.3d 263, 272 (4th Cir. Va. 2006); see also Brookfield
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`Comm ‘ms, Inc. v. West Coast Erzt’t Corp., 174 F.3d 1036, 1056, 50 U.S.P.Q.2d 1545 (9th Cir. 1999)
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`(holding that in determining whether the goods are related, a court should ask whether “the consuming
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`public is likely somehow to 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 marks.
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`Applicant ’s services are aimed at and provided to injured workers covered by worker’s compensation
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`Request for Reconsideration afier Final Action
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`Page 4 of 19
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`insurance and other insurance-policy holders. See Attachment E . Applicant provides these
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`consumers with a number of ancillary medical healthcare services such as durable medical equipment
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`and supplies, home healthcare, home therapy including physical, occupational, and speech, and
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`transportation and language translation services. See Attachment E, Website Printouts.
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`In contrast, the
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`cited marks provide primarily o11line and mail-order pharmacy services. See Attachment F, Website
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`Printouts. Online and mail-order pharmacy services are used primarily by consumers to obtain
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`prescription drugs, whereas Applicant’s service is limited to either worker’s compensation, auto-
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`insurance, or other insurance covered individuals. As such, it is clear that a pharmacy, whether online
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`or mail-order, is a different service from a service providing ancillary medical healthcare services to
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`insured individuals. See e. g. Carefirst, 434 F.3d at 272 (finding dissimilar services where, “First Care
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`only offers direct medical services to individuals. CareFi1st does not; rather, it contracts with
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`participating providers who agree to treat CareFi1st members”).
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`C.
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`APPLICANT OFFERS ITS GOODS AND/OR SERVICES IN SIGNIFICANTLY
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`DIFFERENT TRADE CHANNELS
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`Applicant operates in different trade charmels 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.
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`In contrast,
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`Applicant's services include such diverse services as transportation, translation and home therapy
`services, which cannot be provided through the mail. See Attachment E. Of course, the channels of
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`advertising are different as well since translation services, for example, would not be advertised
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`through the same charmels as mail order prescription drugs. Further, Applicant’s services are
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`specialized to the Worker’s Compensation, Automobile, and Personal Injury Insurance markets, which
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`comprise sophisticated consumers. See Attachment E; see also Medici Classics Prods. LLC v. Medici
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`Group LLC, 590 F. Supp. 2d 548, 557 (S.D.N.Y. 2008) (The sophistication ofa consumer can be
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`inferred based on the nature of the product or its price.) (citing Real News Project, Inc., 2008 U.S. Dist.
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`LEXIS 41457, 2008 WL 2229830 at *2l).
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`‘
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`D.
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`THE “PRESCRIPTION SOLUTIONS” PORTION OF APPLICANT’S MARK
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`SHOULD BE AFFORDED LESS WEIGHT BECAUSE THAT PHRASE HAS
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`BEEN DILUTED AND MADE WEAK THROUGH PERVASIVE USE IN THE
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`HEALTHCARE INDUSTRY.
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`When a junior user has a mark that incorporates the whole of another’s mark, but the previous
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`mark is weak or diluted, confusion is less likely and thus less weight should be afforded to that portion
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`of the integrated mark. See Claremont Polychemical Corp. v. Atlantic Powdered Metals, Inc., 470 F.2d
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`636, 637 (1972). A mark consisting of common words frequently used for products or services is
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`usually found to be a weak mark. See Carefirst ofMaryland, Inc. v. First Care, P.C., 434 F.3d 263,
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`270, 77 U.S.P.Q.2d 1577 (4th Cir. 2006) (“‘The frequency of prior use of [a mark’s text] in other
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`marks, particularly in the same field of merchandise or service, ’ illustrates the mark’s lack of
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`Request for Reconsideration afier Final Action
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`‘
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`Page 5 of 19
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`conceptual strength”) (citation omitted); Citizens Financial Group, Inc. v. Citizens Nat '1 Bank,
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`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
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`distinctive mark may weaken the mark.”)', Time, Inc. v. Petersen Publishing C0,, 173 F.3d 113, 118, 50
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`U.S.P.Q.2d 1474 (2d Cir. 1999) (“The use of part or all of the mark by third parties weakens its overall
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`strength”); Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 625 (6th Cir. 1988).
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`Through pervasive use in the healthcare industry, the phrase “prescription solutions” has
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`become diluted and is therefore weak. As previously described in Applicant’s response to the
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`December 9, 2009 Office Action, the USPTO has granted numerous registrations that include the terms
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`“prescription” and “solutions.” While the Exa.miner’s observation that such registrations do not in fact
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`“prove” actual use is well taken, the sheer number of such registrations at least suggest that businesses
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`and individuals have adopted such marks for use in commerce. Of course, the Exa.rniner’s own Internet
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`evidence of record which refers to “prescription solutions” shows actual use in commerce and that
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`consumers are accustomed to seeing such terms. See Attachments to Office Action.
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`Moreover, the very definitions of “prescription” and “solutions” support a finding that the
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`PRESCRIPTION SOLUTIONS mark is weak. A prescription is “a written direction for a therapeutic
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`or corrective agent”; specif: one for the .
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`.
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`. use of a medicine” or “a prescribed medicine.” Mirriam-
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`Webster ’s Collegiate Dictionary, 10th Ed. 1993.
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`Indeed, in 2009, the average consumer in the U.S.
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`spent approximately $979 on prescription drugs. Report on sales of Prescription drugs in U.S. in 2009,
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`available at http ://www.imshealth.com/portal/site/imshealth/menuitem. a46c6d4di3db4b3d
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`88f611019418c22a/?vgnextoid=d690a27e9d5b7210VgnVCM100000ed152ca2RCRD; see also U. S.
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`Census Bureau, Statistical Abstract of the United States: 2009, Section 1. This is evidence that the
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`word prescription is a common word, frequently used for prescription drug products and services.
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`Similarly, a solution is “an action of process of solving a problem.” Mirriam-Webster's Collegiate
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`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
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`“solutions” is a component of the title of a numerous corporations in the U.S. and Canada. See, e. g.,
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`Attachment D showing some of the publicly traded companies that include the term “solutions” as part
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`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.
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`Accordingly, the PRESCRIPTION SOLUTIONS mark is weak and should be given less weight
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`in the DuPont analysis. Like the marks in Claremont, INTEGRATED PRESCRIPTION SOLUTIONS
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`and PRESCRIPTION SOLUTIONS share a common ending that is weak. See Claremont, 470 F.2d at
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`637 (holding that “[t]he designations “DURAGOLD” and “EVERGOLD” resemble one another in that
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`they are highly suggestive of the color and wearing ability of the products upon which they are
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`employed. They also incorporate the identical sufiix ending. Despite these similarities, considering the
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`inherent weak.ness in the marks, we are convinced that the manifest differences in sound and
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`Request for Reconsideration after Final Action
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`Page 6 of 19
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`appearance are of such character as to be unlikely to cause prospective purchasers to assume
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`that the goods originate from the same source.”). This weakness, combined with the manifest
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`difference in sight, sound and connotation between the two marks makes it unlikely that consumers
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`would assume that goods or services offered for sale under the INTEGRATED PRESCRIPTION
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`SOLUTIONS mark came from the same source as those sold under the PRESCRIPTION SOLUTIONS
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`mark.
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`In sum, when each aspect of INTEGRATED PRESCRIPTION SOLUTIONS is given the
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`appropriate weight in a DuPont analysis, the overall impression of the mark is different from the
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`registered marks. Because PRESCRIPTION SOLUTIONS is a weak mark, the addition of the
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`modifying word INTEGRATED is more than sufficient to prevent confusion among consumers.
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`H.
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`SECTION 2( E311) FINAL REFUSAL — MERELY DESCRIPTIVE
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`A mark is merely descriptive, and thus precluded from registration, if it immediately conveys
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`knowledge of the ingredients, qualities or characteristics of the goods or services with which it is used
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`with a “degree of particularity.” In re Entenmann ’s Inc., 15 U.S.P.Q.2d 1750, 1751 (T.T.A.B. 1990),
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`afi"‘dper curiam, 928 F.2d 411 (Fed. Cir. 1991). Courts have applied the so-called “imagination” test
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`to distinguish descriptive marks from suggestive ones: “If a mark imparts information directly it is
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`descriptive. If it stands for an idea which requires some operation of the imagination to connect it with
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`the goods, it is suggestive.” Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 952 (7th Cir.
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`1992). A suggestive term is one that “suggests rather than describes an ingredient or characteristic of
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`the goods and requires the observer or listener to use imagination and perception to determine the
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`nature of the goods.” ll/[iller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.
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`1977), cert. denied, 434 U.S. 1025, 54 L. Ed. 2d 772, 98 S. Ct. 751 (1978).
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`App1icant’s mark is at least suggestive because it requires the consumer to use their imagination
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`to connect the mark to Applicant’s services. The INTEGRATED PRESCRIPTION SOLUTIONS
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`mark requires a. relevant consumer to take an imaginative step because it does not immediately convey
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`knowledge of the ingredients, qualities or characteristics of the goods with a “degree of particularity.”
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`A relevant consumer, upon immediate exposure to Applicant’s mark, would not know the ingredients,
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`qualities or characteristics of these services. Rather, the consumer is likely to expect a prescription
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`drug service with which the consumer can consolidate prescriptions for prescription drugs with one
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`provider.
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`In contrast, Applicant’s goods and services also go beyond just prescription drugs, including
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`durable medical equipment, home health equipment, home therapy services, translation, and
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`transportation services. See Attachment E, Website Printout. The INTEGRATED PRESCRIPTION
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`SOLUTIONS mark suggests that Applicant is involved in the healthcare industry, due to the inclusion
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`of the word “prescription,” but requires an imaginative step to conclude that Applicant’s services go
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`beyond basic prescription drug filling service described above. Thus, Applicant’s mark is not merely
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`descriptive but is at least suggestive of Applicant’s goods and services, and therefore should be granted
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`Page 7 of 19
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`registration.
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`Lastly, as evidenced by the cited references, the mark PRESCRIPTION SOLUTIONS, as well
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`as the other cited marks, all containing PRESCRIPTION or SOLUTIONS, were approved for
`registration; thus such marks are capable of registration. See Attachment G. Further, as evidenced by
`the cited marks in Attachments B and C, the mark INTEGRATED CONSULTANTS, as well as the
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`other cited marks all containing the mark INTEGRATED, were approved for registration; thus such
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`marks are capable of registration. Applicant’s mark, therefore, should be granted registration.
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`Applicant respectfully contends that this refusal is in error and that the mark is not “merely descriptive”
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`and as a result should be granted registration.
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`HI.
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`CONCLUDING REMARKS
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`In view ofthe foregoing, it is submitted that the present application is now in condition for
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`publication. However, if additional issues arise and direct communication with Applicant’s attorney
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`would serve to advance prosecution of this case to finality, the Examining Attorney is cordially urged
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`to call the undersigned attorney.
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`Evidence is attached in the nature of:
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`EVIDENCE
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`Attachment B — Registrations for the following marks: INTEGRATED CONSULTANTS,
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`INTEGRATED MEDIA MANAGEMENT, INTEGRATED MOTION AND VISION and
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`INTEGRATED BROKERAGE SOLUTIONS.
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`Attachment C — Registration for INTEGRATED CLINICAL DEVELOPMENT mark.
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`Attachment D — Website Printout — NYSE
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`Attachment E — Website Printout — Integrated Prescription Solutions “About Us” Page
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`Attachment F — Website Printout -— Cited Marks “About Us”
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`Attachment G — Cited Marks
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`EVIDENCE SECTION
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`‘
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`ORIGINAL
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`§§1§§EE1},f§)D
`(,3 pages,
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`http://tgate/PDF/RFR/2011/O1/03/20110103181123727798-
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`Request for Reconsideration afier Final Action
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`Page 9 of 19
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`Attachment B - Registrations for the following marks:
`INTEGRATED CONSULTANTS, INTEGRATED MEDIA
`MANAGEMENT, INTEGRATED MOTION AND VISION
`and INTEGRATED BROKERAGE SOLUTIONS.
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`Attachment C - Registration for INTEGRATED CLINICAL
`DEVELOPMENT mark. Attachment D - Website Printout -
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`DESCRIPTION OF EVIDENCE FILE
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`NYSE Attachment E - Website Printout - Integrated _
`Prescription Solutions "About Us" Page Attachment F -
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`Website Printout - Cited Marks "About Us" Attachment G -
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`Cited Marks
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`RESPONSE SIGNATURE
`SIGNATORVSNAME
`SIGNATORY'SPOSITION
`SIGNED
`AUTHORIZED smmy
`CONCURRENT APPEAL NOTICE FILED
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`
`
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`SUBMITDATE
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`USPTO/RFR-24.249.246. 14-2
`0110103181123727798-77813
` TEAS STAMP
`411-470ae814d8437f938l274
`
`4125 24aa499165-N/A-N/ A-20
`110103175749893173
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`
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`................................................................................................................................................................................
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`PTO Form (Rev 4/2000)
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`OMB No. 0651-.... (Exp. 08/31/2004)
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`Request for Reconsideration afier Final Action
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`Page 11 of 19
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`Request for Reconsideration after Final Action
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`To the Commissioner for Trademarks:
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`Application serial no. 77813411 has been amended as follows:
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`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
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`Applicant hereby responds to the Final Office Action mailed July 2, 2010, in which the Examiner
`refused to register the INTEGRATED PRESCRIPTION SOLUTIONS word mark (Application Serial
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`No. 77/813,411).
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`In the Office Action, the Examiner refused to register the INTEGRATED PRESCRIPTION
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`SOLUTIONS word mark on two grounds. First, the Examiner refused registration pursuant to Section 2
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`(d) of the Trademark Act, contending that the applied-for mark so resembles various registered marks
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`(see Final Office Action, identifying the "cited marks") such 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 Applicant
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`and the registrants. Second, the Examiner refused registration pursuant to Trademark Act Section 2(e)
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`(1), contending that Applicant’s mark merely describes a feature of applicant’s services.
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`For the reasons set forth below, Applicant respectfully requests that the refusals pursuant to
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`Sections 2(d) and 2(e)(1) be withdrawn.
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`I.
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`SECTION 2(d).REFUSAL — LIKELIHOOD OF CONFUSION
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`The ultimate question for determining the issue of likelihood of confusion is “whether the marks
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`will confuse [relevant consumers] into believing that the goods [or services] they identify come from the
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`same source.” See Final Office Action, p. 5 (citing In re West Point-Pepperell, Inc., 468 F.2d 200, 175
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`U.S.P.Q. 558 (C.C.P.A.. 1972)). The test to determine whether there is a likelihood of confusion is set
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`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 ofthe marks, (2) the similarity of the goods and/or services
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`and (3) the similarity of trade channels of the goods and/or services are the most important factors to
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`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.
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`Here, the cited marks are distinguishable, the services only tangentially related and the purchasers are
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`sophisticated.
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`In addition, the “prescription solutions” portion of Applicant’s mark in common with the
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`cited PRESCRIPTION SOLUTIONS mark should be afforded less weight in the DuPont analysis
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`because it has been diluted through pervasive use in the healthcare industry. Applicant addresses these
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`points in greater detail below.
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`A.
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`THE INTEGRATED PRESCRIPTION SOLUTIONS MARK IS SIGNIFICANTLY
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`DIFFERENT FROM THE CITED MARKS AS TO SIGHT, SOUND AND
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`CONNOTATION.
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`The Examiner is correct that for determining the likelihood of confusion, “the focus is on the
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`recollection of the purchaser who normally retains a general rather than specific impression of
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`trademarks.” See Final Office Action, p. 5 citing Chemetron Corp. v. Morris Coupling & Clamp C0,,
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`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.
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`1975); T.M.E.P. § l207.01(b). However, “[t]he commercial impression of a trade-mark is derived from it
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`as a whole, not from its elements separated and considered in detail.” Estate ofP. D. Beckwith, Inc. v.
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`Commissioner ofPatents, 252 U.S. 53 8, 545-46 (U.S. 1920) (emphasis added); see also AutoZone, Inc. v.
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`Tandy Corp., 373 F.3d 786, 795 (6th Cir. Tenn. 2004) (“Conflicting composite marks are to be compared
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`by looking at them as a whole, rather than breaking the marks up into their component parts for
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`comparison .
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`.
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`.
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`. The rationale for the rule is that the commercial impression ofa composite trademark on
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`an ordinary prospective buyer is created by the mark as a whole, not by its component parts.” (quoting 3
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`J. Thomas A4cCarthy, McCarthy on Trademarks and Unfair Competition 53‘ 23:41, at 23-123 (2003)
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`(emphasis added))). Accordingly, it is improper to focus on the terms “prescription” and “solutions” or
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`the phrase “prescription solutions” while diminishing the other elements present in the mark, 1'.e., the term
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`“integrated.” 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 calendars,
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`the court stated, “by stressing the portion “varga” and diminishing the portion “girl”, the Board
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`inappropriately changed the mark”).
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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 separately from
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`the first term of the mark, “integrated.” When considered in its entirety, however, the INTEGRATED
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`PRESCRIPTION SOLUTIONS mark differs significantly from the cited marks. A relevant consumer
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`would immediately notice that the INTEGRATED PRESCRIPTION SOLUTIONS mark appears longer
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`than and sounds different from any of the cited marks and includes the term “integrated” that is not found
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`in any of the cited marks. The term “integrated” is one-third of Applicant’s mark and contains the first
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`four syllables in the ten-syllable mark. As the term “integrated” is the first and most important part of
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`Applicant’s mark in both sight and sound, relevant consumers would weigh the term “integrated” much
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`more heavily than the terms “prescription” and “solutions” or the phrase “prescription solutions.”
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`In addition, the Examiner appears to have downplayed the significantly different connotation
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`elicited by the INTEGRATED PRESCRIPTION SOLUTIONS mark. The connotation of Applicant’s
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`mark differs significantly by virtue of the fact that it includes the term “integrated,” whereas none of the
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`cited marks include a term even remotely close to that term. Moreover, it is appropriate to give greater