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`MULLERLAWLLC
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`TTH13
`
`November 18, 2011
`
`Trademark Trial and Appeals Board
`United States Patent and Trademark Office
`
`600 Dulany Street
`Madison Bldg.
`Alexandria, VA 22314
`
`Re: TriMed Media Group, Inc./ CMIO Trademark
`
`Dear Sir/Madam:
`
`Enclosed please find a Briefin Support of TriMed Media Group, Inc. ’s Appeal ofthe
`U. S. P. T. 0. Office Action regarding the above-referenced matter.
`
`Please contact me with any questions.
`
`Sincerely,
`
`dye
`
`Chip Muller, Esq.
`
`Enc.
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`
`Illlllllllll|||l|lllllllllllllllllllllllllllllllll
`
`11-21-2011
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`use Patent
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`
`155 S. Main Street, Suite 101, Providence, RI 02903 ' Tel: (401) 256-5171 0 Fax: (401) 256-5178
`
`chip@chipmuller.com - Wvvw.chipmuller.com
`
`

`
`U.S. PATENT AND TRADEMARK OFFICE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: TriMed Media Group, Inc.,
`Appellant.
`
`Serial no. 77873425
`ESTTA no. 431062
`
`BRIEF IN SUPPORT OF
`
`TRIMED MEDIA GROUP, INC.’S APPEAL OF
`THE U.S.P.T.O. OFFICE ACTION
`
`

`
`TABLE OF AUTHORITIES
`
`American Assoc. For the Advancement of Science V. The Hearst
`
`Corp, 498 F.Supp. 244, 256 (D.D.C. 1980).
`
`_
`5, 10, 13
`
`Basic American Medical Inc. V. American Medical International Inc.,
`
`U.)
`
`649 F. Supp. 885, 892 (S.D. Ind. 1986).
`
`Gruner + Jahr USA Publishing V. Meredith Corp., 991 F.2d 1072,
`1078 (2d Cir. 1993).
`
`5, 7, 14
`
`In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.
`1973); Polaroid Corp. V. Polarad Electronics Corp, 287 F.2d 492, 495
`(2d Cir.), cert. denied, 368 U.S. 820 (1961).
`
`Lang V. Retirement Living Pub. Co., 949 F.2d 576, 581 (2d Cir. 1991).
`
`5, 9
`
`McGraw-Hill Pub. Co. V. American Aviation Associates Inc., 117
`F.2d 293, 295 (D.C. Cir. 1940).
`
`u\l \O
`
`Outdoor Kids, Inc. V. Parris Mfg. Co., Cancellations Nos. 92045687
`and 92046943, 2009 TTAB LEXIS 75 (T.T.A.B. 2009), a_ff_d, No.
`2009-1405, 2010 U.S. App. LEXIS 14092 (Fed. Cir. July 9, 2010)
`(unpublished).
`
`6, 7, 10, 13
`
`Salt Water Sportsman, Inc. V. B.A.S.S., Inc., No. 87-1144, 1987 U.S.
`Dist. LEXIS 9629, at * (D. Mass. Oct. 9, 1987).
`
`Technical Pub. Co., Div. of Dun-Donnelley Pub. Corp. V. Lebhar-
`Friedman Inc., 729 F.2d 1136, 1140 (7th Cir. 1984).
`
`The H. Marvin Ginn Corp. V. The Int’l Assoc of Fire Chiefs, 782 F.2d
`987, 990 (Fed. Cir. 1986).
`
`Time, Inc. V. Petersen Publishing Company, 173 F.3d 113, 118 (2d
`Cir. 1999).
`
`6, 7, 9
`
`

`
`TriMed Media Group, Incorporated (“TriMed”), applicant for the proposed
`
`trademark CMIO hereby appeals the final refusal of the U.S. Patent and Trademark
`
`Office to register the mark, as communicated in the Office Action issued March 31, 2011
`
`(“Office Action”), and states as follows:
`
`I. BACKGROUND
`
`TriMed is a multi-media publisher of specialized industry news for physicians,
`
`information technology experts, and executives in the medical information and medical
`
`device industries. This industry encompasses the computerized devices that physicians
`
`use to cure illness such as a magnetic resonance imaging (“MRI”) as well as the
`
`“backroom” medical data and personal information gathering, storage, and retrieval
`
`systems that are an integral part of every efficient medical practice or hospital.
`
`TriMed is one of the nation’s leading publishers of print media, electronic media,
`
`websites, and electronic newsletters in this field. TriMed’s glossy, full color print
`
`magazines include Molecular Imaging Insight, Cardiovascular Business, Health Imaging
`
`and IT, and CMIO. A copy of the July, 2010, issue of CMIO has been submitted as a
`
`file entitled Exhibit A. Each magazine has an electronic version which can be browsed
`
`on line. The front page of a recent electronic version, with user navigation buttons
`
`displayed at the top, has been provided in a file entitled Exhibit B. Each TriMed
`
`publication also has a website which differs substantially from the print version and is
`
`updated every day by TriMed editors. C_f. mo1ecularimaging.net,
`
`cardiovascularbusiness.com, healthimaging.com, and CMIO.net. A copy of typical pages
`
`from CMIO.net has been submitted as a file entitled Exhibit C. Finally, TriMed
`
`publishes an electronic newsletter for each publication containing the latest industry news
`
`

`
`and information sent to subscribers via email on a regular basis. A copy of a CMIO
`
`News newsletter has been submitted as a file entitled Exhibit D. TriMed has over a
`
`dozen full-time employees, including journalists, writers, editors, salespeople, production
`
`staff, managers, executives, and a board of directors.
`
`II. NO LIKELIHOOD OF CONFUSION BETWEEN
`
`“CMIO” AND “CMIO MAGAZINE”
`
`In its Office Action, the USPTO refused registration of CMIO because of what
`
`the USPTO found to be the likelihood of confusion between CMIO and “CMIo MAGAZINE,”
`
`U.S. Registration No. 3623639. “CMIO MAGAZINE” was registered by Mr. Alex Johnas.
`
`According to records maintained by the Massachusetts Secretary of State, Mr. Johnas is a
`
`manager of consulting firm CEG Advisory LLC. On the side, he maintains a blog, an on-
`
`line journal of his thoughts, interviews, and observations entitled, “CMIO MAGAZINE”
`
`available at cmiomagazine.com. It has no commercial purpose. Mr. Johnas applied for
`
`and secured registration of the mark as an “individual.” U.S. Registration No. 3623639.
`
`According to Massachusetts’ Secretary of State’s database, “CMIO MAGAZINE” is not
`
`registered with the state of Massachusetts as a business entity of any kind. The only
`
`place where Mr. Johnas uses his mark is on his personal blog, “cMIo MAGAZINE.”
`
`TriMed respectfully asks the TTAB to reverse the USPTO’s refusal of
`
`registration; there is no likelihood of confusion between “CMIO MAGAZINE” and CMIO.
`
`E In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973);
`
`Polaroid Corp. V. Polarad Electronics Com, 287 F.2d 492, 495 (2d Cir.), cert. denied,
`
`368 U.S. 820 (1961).
`
`

`
`A. “CMIO MAGAZINE” is an “Extremely Weak” Mark
`
`U.S. Registration No. 3623639 is entitled to very narrow trademark protection
`
`because the terms “CMIO” and “magazine” are common nouns. “CMIO” is an acronym
`
`for the title “Chief Medical Information Officer.” Both CMIO and “Chief Medical
`
`Information Officer” are common nouns deserving of narrow trademark protection. m
`
`Lang v. Retirement Living Pub. Co., 949 F.2d 576, 581 (2d Cir. 1991) (“[E]xtensive third
`
`party use of the words ‘Choice’ and ‘Choices’ weighs against a finding that Lang’s trade
`
`name is strong.”) (holding that “New Choices” not confusingly similar to “New Choices
`
`For The Best Years” magazine). Gruner + Jahr USA Publishing V. Meredith Corp, 991
`
`F.2d 1072, 1078 (2d Cir. 1993) (finding no likelihood of confusion because “the term
`
`‘parents’ resides in the publicdomain” and “registering the proper noun ‘parents’ as a
`
`trademark scarcely can be held to have removed it from being available for use by others
`
`. .”).
`
`Second, CMIO MAGAZINE is entitled to very narrow trademark protection because it is
`
`descriptive. “cMIo MAGAZINE” is a blog with a “primary focus on the .
`
`.
`
`. CMIO role.”
`
`www.cmiomagazine.com. The mark is always accompanied by the subtitle, “Collaboration
`
`for the CMIO.” Screen shots of cmiomagazine.com have been submitted as a file entitled
`
`Exhibit E. The mark “cMIo MAGAZINE” describes the content of the blog: information for
`
`and about CMIOS. “As such, it is undeniable” that the mark is descriptive. E
`
`American Assoc. For the Advancement of Science v. The Hearst Corp., 498 F.Supp. 244,
`
`256 (D.D.C. 1980) (finding that the magazine “Science” is “not literally ‘science’ but is
`
`about science,” so the mark is descriptive). As a descriptive mark, “cMIo MAGAZINE” is
`
`considered an “extremely wea ” mark and is thus entitled to very narrow trademark
`
`

`
`
`protection. fl Gruner + Jahr, 991 F.2d at 1078; accord Time Inc. v. Petersen
`
`Publishing Company, 173 F.3d 113, 118 (2d Cir. 1999) (holding that descriptive marks
`
`are entitled to the least amount of protection of all types of marks). This is especially so
`
`in the magazine industry. Se; The H. Marvin Ginn Corp. V. The Int’l Assoc of Fire
`
` , 782 F.2d 987, 990 (Fed. Cir. 1986) (“[M]agazines differ from other goods ‘in that
`
`their title is a primary means of conveying their content, the result being that many
`
`magazine titles fall near the line between generic and descriptive marks”) (quoting
`
`Technical Pub. Co., Div. of Dun-Donnelley Pub. Corp. v. Lebhar-Friedman, Inc., 729
`
`F.2d 1136, 1140 (7th Cir. 1984)). CMIO MAGAZINE is an “extremely wea ” mark entitled to
`
`very narrow protection.‘ S_ee i_c1,
`
`B. The Marks are Dissimilar in their Entireties as to Appearance, Sound,
`Connotation and Commercial Impression
`
`The Trademark Trial and Appeal Board gives the publishers of magazines, in
`
`particular, wide latitude in employing descriptive titles; courts are very reluctant to find
`
`competing titles likely to confuse. Indeed, the TTAB has found no likelihood of
`
`
`confusion where competing marks are comprised of the very same words. Outdoor Kids
`
`Inc. v. Parris Mfg. Co., Cancellations Nos. 92045687 and 92046943, 2009 TTAB LEXIS
`
`75 (T.T.A.B. 2009), affd, No. 2009-1405, 2010 U.S. App. LEXIS 14092 (Fed. Cir. July
`
`
`9, 2010) (unpublished). In Outdoor Kids
`
`the Federal Circuit agreed with the TTAB’s
`
`holding that there was no likelihood of confusion between the “Outdoor Kids” and “Kid’s
`
`Outdoors” marks used on kids’ clothing in the same channel of commerce because of
`
`1 In its Office Action, the USPTO found that CMIO had acquired secondary meaning.
`Office Action, at 1. The USPTO never challenged Mr. Johnas on the descriptiveness of
`his mark. Upon information and belief, Mr. Johnas has not invested any time or money
`into the promotion of the CMIO MAGAZINE mark and would be unable to show that it has
`acquired secondary meaning.
`
`

`
`
`differences in the marks’ design elements. Outdoor Kids Inc., No. 2009-1405, 2010 U.S.
`
`App. LEXIS 14092, at *8. Similarly, when magazine titles have a significant word in
`
`common, courts have found no likelihood of confusion-- even in the same channel of
`
`commerce.
`
`_S__e_c_: Time, Inc., 173 F.3d at 118 (finding no likelihood of confusion between
`
`(“Teen” and “Teen People” in the teen magazine channel of commerce); McGraw-Hill
`
`
`Pub. Co. V. American Aviation Associates Inc., 117 F.2d 293, 295 (D.C. Cir. 1940)
`
`(finding no likelihood of confusion between “Aviation” and “American Aviation”
`
`magazines).
`
`These decisions can be explained, in part, by the fact that the USPTO should not
`
`focus on the text of descriptive marks divorced from their graphical context. Since both
`
`CMIO and CMIO MAGAZINE are descriptive, the TTAB should consider the visual
`
`impression the marks make on the consumer as the consumer views the marks in its
`
`
`larger graphical context. §e_e Outdoor Kids Inc., No. 2009-1405, 2010 U.S. App. LEXIS
`
`14092, at *8 (Fed. Cir. July 9, 2010 ) (unpublished) (“[W]hen the words at issue are
`
`highly descriptive .
`
`.
`
`. or common in the trade, the presence of a design may be a more
`
`significant factor.”). “In assessing similarity, courts look to the overall impression
`
`created by the logos and the context in which they are found and consider the totality of
`
`factors that could cause confusion among prospective purchasers.” Gruner + Jahr USA
`
`Publishing, 991 F .2d at 1078 (finding no likelihood of confusion between “Parents” and
`
`“Parent’s Digest” magazine marks after considering factors such as the “logos typeface,
`
`the fact that the only similarity concerned the use of the word ‘parent,’ .
`
`.
`
`. and that
`
`Meredith’s PARENTS took up about one-half the space on the magazine cover that
`
`Gruner + Jahr's PARENTS occupied”).
`
`

`
`In the instant case, wherever “CMIO” appears in one of the various TriMed
`
`publications bearing the mark, it is always in a serif typeface called Ronnia Basic and
`
`colored red. In the print publication, CMIO appears boldly in two-inch high red letters
`
`occupying approximately 15% of the entire cover. Exhibit A. The mark is always
`
`printed with the subtitle, “Information, Evidence & Effectiveness in Medicine” when
`
`displayed on the cover. The mark always appears over a full-color photograph or graphic
`
`which takes up the entire cover. The cover of the magazine often contains a large
`
`headline from the lead story in large black and colored text over the cover photo. Other
`
`headlines are listed on the cover in smaller black print.
`
`The appearance of “CMIO” is consistent across all media. On TriMed’s website,
`
`CMIO.net, CMIO appears in the same red font against a multi-toned grey background.
`
`Exhibit C. The same tagline “Information, Evidence & Effectiveness in Medicine”
`
`always appears to the right of the mark. There is a red navigation button bar across the
`
`top of the page, just under the tagline. The home page is always full of color photographs
`
`and video accompanying dozens of articles on the very latest industry news. Visitors also
`
`always see the latest story headlines, color ads, and navigation buttons. The news and
`
`advertising elements change every day, but the overall graphical impression to consumers
`
`and the appearance of the CMIO mark never do. The same is true for the electronic
`
`newsletter. Exhibit D.
`
`This is quite a contrast to the appearance of “CMIO MAGAZINE” in Mr. Johnas’ blog.
`
`Mr. Johnas has placed the “cMIo MAGAZINE” mark on the top of every page. Exhibit E. The
`
`words appear in small black sans-serif typeface approximately 1/4 inch high against a
`
`generic white background. The disclaimed word “MAGAZINE” is always the same color,
`
`

`
`font, size, and capitalization as “CMIO” and twice as long as “CMIO.” The mark is small,
`
`occupying approximately 1% of the entire webpage. The mark has no graphical
`
`embellishment. “[T]he ordinary layout of the words” CMIO MAGAZINE “tends to undermine
`
`the claim that it is recognizable to, or distinctive in the minds of, consumers.” See Ifig,
`
`949 F.2d at 581. On every page, the mark is always accompanied by the tagline,
`
`“Collaboration for the CMIO,” emphasizing the descriptive nature of the CMIO MAGAZlNE mark.
`
`There are never any photos or videos illustrating Mr. Johnas’ posts. On a few pages there
`
`is an irrelevant stock photo of a city skyline. Most of the colors that Mr. Johnas has used
`
`on the website are black, white, and grey. There is nothing colored red on the homepage.
`
`Visually, almost nothing changes on Mr. Johnas’ blog from month to month.
`
`When considered in the context in which a consumer will actually experience the
`
`trademarks, “CMIO” and “cMIo MAGAZINE” give consumers very different overall
`
`commercial impressions. Visually, the sophisticated members of the medical and
`
`technology communities which comprise TriMed’s audience have no trouble discerning
`
`CMIO from Mr. Johnas’ blog. “[T]he two publications are not similar in cover, design,
`
`format, general appearance, or content .
`
`.
`
`. .” McGraw—Hill Pub. Co., 117 F.2d at 297.
`
`The visual appearance of the publications differs and is not likely to confuse, a factor
`
`
`which weighs strongly against a finding of likelihood of confusion. E Time Inc., 173
`
`F.3d at 118 (affirming a jury verdict that found “Teen People” to not infringe on the
`
`“Teen” magazine mark because, in part, “the law of trademark accords stronger
`
`protection to the stylized version of certain words used as trademarks than to those words
`
`themselves”); Salt Water Sportsman, Inc. v. B.A.S.S., Inc., No. 87-1144, 1987 U.S. Dist.
`
`LEXIS 9629, at * (D. Mass. Oct. 9, 1987) (defendant’s mark “Southern Outdoors
`
`

`
`Saltwater Magazine” not confusing so long as it remains in a different “point size,
`
`typeface (including weight and italic), capitalization and color” as plaintiffs mark, “Salt
`
`Water Sportsman Magazine” .
`
`C. The Goods, Services, and Trade Channels are Dissimilar
`
`Case law shows that the TTAB and courts give publishers extremely narrow
`
`protection from competitors publishing similar subject matter in the sag medium. E,
`
`g, American Association for the Advancement of Science, 498 F. Supp. at 257 (finding
`
`no likelihood of confusion between “Science” and “Science Digest” so long as the
`
`Science Digest mark is printed in a distinguishing manner). Furthermore, even when
`
`descriptive marks are in similar or the same channels of commerce, the TTAB has held
`
`that graphical differences between the marks will factor more heavily than the fact of
`
`
`overlapping channels of commerce. E Outdoor Kids lnc., Cancellations Nos.
`
`92045687 and 92046943 (T.T.A.B. 2009), affi, No. 2009-1405, at *9 (Fed. Cir).
`
`In this case, however, CMIO and CMIO MAGAZINE occupy different channels of
`
`commerce. TriMed has a full-time staff of writers, editors, video producers, video
`
`editors, graphical designers, web developers, and art directors, and hires teams of
`
`freelance writers, reporters, and videographers as needed to cover all development and
`
`breaking news in all aspects of medical industry technology across the country. CMIO
`
`covers the entire spectrum of news impacting the health care industry around the globe
`
`including business; politics; technological advances in medical devices and tools; the
`
`evolution of medical information management, dissemination, and use; electronic
`
`medical records; health care reform; and changes to industry standards. An example of
`
`an article on CMIO.net with video embedded in it has been provided in a file entitled
`
`10
`
`

`
`Exhibit F. The great breadth of CMIO’s coverage is shown in list of categories of types
`
`of content available to users, provided as Exhibit G. Newsletter subscribers can
`
`customize their newsletters by choosing from an impressive list of very specific industry
`
`topics. CMIO provides a very robust consumer experience.
`
`Actual CMIOs comprise a minority of CMIO’s readership. According to data
`
`provided by users, most customers of CMIO are physicians, Vice Presidents of
`
`Information Technology, Chief Executive Officers, Chief Operating Officers, Chief
`
`Financial Officers, Directors of Cardiology, Directors of Radiology, Directors of
`
`Molecular Imaging, Chief Information Officers, Chief Technology Officers, and many
`
`other kinds of workers at hospitals, medical practices, insurance companies, device
`
`manufacturers, software manufacturers and other key industry players. That’s because
`
`the breadth of CMIO’s coverage is so broad.
`
`The “CMIO MAGAZINE” mark in contrast, is a more narrow, personal blog with a
`
`“primary focus on the .
`
`.
`
`. CMIO role.” www.cmiomagazine.com. Mr. Johnas’ mark is
`
`not used on any print magazine, electronic magazine, emailed newsletter, or industry
`
`news website. As is apparent on its face, Mr. Johnas’ blog consists almost entirely of the
`
`‘musings of one man, “Alex,” the registrant of Registration No. 3623639, Alex Johnas.2
`
`Mr. Johnas makes approximately two blog entries 21 month. Mr. Johnas has no reporters,
`
`2 In his application, Mr. Johnas claims to be using the CMIO MAGAZINE trademark in:
`“Magazine publishing; Multimedia publishing of books, magazines, journals, software,
`games, music, and electronic publications.” After a thorough industry search, Trimed
`cannot find any evidence of the use of “CMIO MAGAZINE” in any medium except for Mr.
`Johnas’ blog. This is confirmed by the specimen provided by Mr. Johnas, which shows
`the CMIO MAGAZINE mark being used only in the blog. Upon information and belief, Mr.
`Johnas is not using the mark in “Magazine publishing; Multimedia publishing of books,
`magazines, journals, software, games, music, [or] electronic publications” besides the
`blog. According to his blog, Mr. Johnas has no plans to do so. wvvw.cmiomagazine.com
`
`11
`
`

`
`no editorial staff, no newsgathering effort. Mr. Johnas’ entries are almost all transcripts
`
`of Mr. Johnas’ occasional interviews with CMIOs about the CMIO role. Mr. Johnas
`
`describes his blog as a limited “forum [that] seeks to provide a collaborative discussion to
`
`assist in promoting best practices in the adoption and application of clinical informatics.”
`
`This is a completely different product than the CMIO publications. No photos, no video,
`
`no breaking news, no newsletter, no user control over content. It’s a different product.
`
`—
`
`
`
`Conference, Convention, and Seminar
`News
`
`Developments in Computer- or _
`
`Device-aided Medical Techniques
`
`Developments CAT scan and other
`imaging device and techniques
`Executive Leadership
`National Politics and Healthcare
`
`V
`
`
`
`Reform
`
`
`
`Blog about the “CMIO Role”
`
`Just as a lingerie and hardware store are not in the same “retailing” channel of
`
`commerce simply because they both sell items to consumers in the same mall, websites
`
`with medical content are not necessarily in the same channel of commerce simply
`
`because they are both found on the Internet. Though CMIO and CMIO MAGAZINE overlap at
`
`the extreme, courts and the TTAB have found no likelihood of confusion even where
`
`12
`
`

`
`periodicals are in the same channels of commerce. This factor weighs against a finding
`
`of likelihood of confusion. _§§§ American Association for the Advancement of Science,
`
`
`498 F. Supp. at 257; Outdoor Kids Inc., Cancellations Nos. 92045687 and 92046943
`
`(T.T.A.B. 2009), a_ff’_d, No. 2009-1405, at *9 (Fed. Cir).
`
`D. Target Subscribers and Users are Sophisticated Purchasers
`
`CMIO subscribers and users include physicians, information technology experts,
`
`manufacturers of medical devices and computer technology, and medical industry
`
`executives. This audience consists of the most educated professionals in the country and
`
`are known for continuing education. The fast-pace of evolution in the industry requires
`
`constant attention to trends. The target consumers are discerning and seek out
`
`information carefu1ly—not on a whim. “In the health field, the highest degree of care is
`
`
`exercised by physicians and referring insurers, etc.” Basic American Medical Inc. V.
`
`
`American Medical International Inc., 649 F. Supp. 885, 892 (S.D. Ind. 1986) (finding no
`
`likelihood of confusion between “American Medical International” and “Basic American
`
`Medical, Inc.” in the same channels of commerce). This duPont factor weighs against a
`
`finding of no likelihood of confusion. E Q
`
`E. No Likelihood of Confusion
`
`In summary, CMIO MAGAZINE is entitled to “extremely weak” protection because it is
`
`descriptive and comprised of common nouns. CMIO and CMIO MAGAZINE appear
`
`
`graphically quite differently when published. Compare Exhibits A B C and D with
`
`Exhibit E. TriMed is an industry news organization. CMIO MAGAZINE is a blog of one
`
`man’s thoughts about the “CMIO role.” While the channels of commerce of the marks
`
`may overlap, physicians, executives, and information technology experts are highly
`
`13
`
`

`
`educated, sophisticated and highly discerning consumers not prone to impulse purchases.
`
`They have no problem differentiating CMIO from CMIO MAGAZINE in the marketplace.
`
`There is no likelihood of confusion.
`
`_S_e_§ Gruner + Jahr USA Publishing, 991 F.2d at
`
`1078.
`
`III. RECITATION OF GOODS AND SERVICES IS CORRECT
`
`The USPTO found that the reclassification of goods and services from
`
`International Class 41 to International Class 16 in Serial no. 77873425 was not acceptable
`
`because the amendment was “beyond the scope of the original recitation.” TriMed
`
`respectfully asks the USPTO to reconsider its decision, as TriMed was careful not to
`
`amend the application to broad the scope of the original recitation.
`
`The original application for the CMIO mark contained the following recitation of
`
`goods and services:
`
`IDENTIFICATION:
`
`Publication of Magazines and Electronic Magazines in the
`field of medical information technolo -_
`
`—
`
`42
`
`
`
`IDENTIFICATION:
`
`Providing a web site that features information on computer
`technolo; and rorammin
`
`TriMed’s November 1 1, 2009, Preliminary Amendment proposed moving half of the
`
`goods from International Class 41 (publication of Magazines in the field of medical
`
`information technology) to International Class 16 like so:
`
`INT’L CLASS:
`
`016 class added IDENTIFICATION:
`
`Publication of Magazines in the field of medical information
`technolo ;
`
`14
`
`

`
`TriMed’s proposed Amendment left unchanged the following recitation of goods and
`
`services in International Class 41: “Publication of Electronic Magazines in the field of
`
`medical information technology.” Second, TriMed’s Preliminary Amendment proposed
`
`narrowing the recitation of goods and services in International Class 412 from “Providing
`
`a web site that features information on computer technology and programming” to the
`
`more narrow “Providing a web site that features information on medical information
`
`technology.” “Medical information technology” is a subset of “computer technology and
`
`programming.”
`
`The first proposed amendment simply moved one of the goods recited in
`
`International Class 41 (print magazines) into International Class 16. The Second
`narrowed the scope ofthe recitation in International Class 412 to apply to medical
`
`information technology specifically. Neither proposed amendment increased the breadth
`
`of goods and services beyond the scope of TriMed’s original recitation. S43 37 C.F.R.
`
`§2.7 1 (a).
`
`IV. CONCLUSION
`
`WHEREFORE, TriMed respectfully asks the TTAB to reverse the Final Refusal
`
`of the USPTO and approve the CMIO mark for publication as it is not likely to confuse
`
`COI'lSl.lI1’lCI'S.
`
`TRIMED MEDIA GROUP, INC.
`
`By its attorney,
`
` \
`
`Chip Muller, Esq.
`Muller Law, LLC
`
`155 South Main Street, Suite 101
`
`15
`
`

`
`Providence, RI 02903
`(401) 256-5171 (ph)
`(401) 256-5178 (fax)
`chip@chipmul1er.com
`
`Dated: November 18, 2011
`
`16
`
`

`
`

`
`EXHIBIT A
`
`

`
`July 2010 CM|O.net
`
`> Federal Initiatives Drive Health IT Sfiending
`
`> HITECH Might Succeed—or Not?
`
`> Facilities Struggle with
`Economic Uncertainties
`
`> Plus: CMIO Census Shows Few
`Surprises 8. Some Mixed Messages '
`aoooezr u
`a o a o o
`o
`e
`o
`o
`a o
`o o
`o o
`a
`o
`e on
`
`
`
`Digital Pathology: The Diagnosis ‘I3; Rapids’ M;
`Growth, Greater Demand for Integration
`
`Medication Management:
`Can IT Systems Minimize Human Error?
`
`Signing Up for Single Sign On
`
`Meaningful Metrics: The Patient
`Experience 8. the Baseline
`
`AMDIS Connection:
`
`Surveying A Sea Change
`
`
`
`

`
`contents
`
`CM|O.net
`
`cover story:
`
`© CMIO Top Trends Survey 8. CMIO Census
`
`J “J Our 2010 CMIO Top Trends Survey says: Federal initiatives are driving health IT spending and
`will continue to do so in the foreseeable future. I-IITECI-I might succeed——or not. Economic uncertainty
`has many facilities struggling————but a majority of organizations are increasing their budgets, adopting new
`technologies, and hiring and training staff.
`
`CMIO Census:
`0 Trends toward more time on IT vs. patient duties; 50+ CMIOS outnumber younger ones.
`
`features:
`
`departments:
`
`‘H © Digital Pathology: The Diagnosis is Rapid
`_.
`1 Growth, Greater Demand for Integration
`Improvements in slide scanning, image management and analysis
`technologies. and robust information management systems are
`pushing digital pathology systems forward.
`
`03 1 From the Editor: The "Other" Category Says a Lot
`16 l The AMDIS Connection: Surveying a Sea Change
`
`
`
`CMI0.net
`
`15) Medication Management:
`-1 4. Can IT Systems Minimize Human Error?
`IT-enabled medication management strategies tap computerized
`provider order entry (CPOE). bar-coded electronic medication
`administration records and clinical decision support modules in
`
`1 A Signing Up for Single Sign On
`i
`By assigning one password for all applications. single
`sign on (SSO) technologygives clinicians speedy access to the
`apps they need. Armed with SSO, users needn't write down
`(then lose) passwords.
`
`17f’ Meaningful Metrics: The Patient Experience
`Q 8. the Baseline
`A pair ofrecent Health Affiiirs studies offer some interesting
`insight: First. EMR adoption is farther along than you might
`expect, and many ofthose EM Rs already meet a significant
`number ofthe criteria for meaningful use.
`
`electronic health records to reduce medication errors. Subscribe ) Subs.CM|O.net
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` ’T**‘
`July 2010 CMIO 1
`(
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`

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`I
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`Subscribe Today (g
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`CMIO
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`
`
`The Other Category Says a Lot
`
`By Mary Stevens, Editor | mstevens@trimedmedia.com
`
`When we put our inaugural CMIO Top Trcnd Survcy/
`CMIO Census together, we aimed to include the most
`likely categories and possible answers to the questions
`we posed. However. with a wide-ranging survey and
`an equal variety of respondents, we also understood
`the need for including the “Other” option. This catego-
`ry. although it’s often a thin sliver ofthc pic or one of
`the shortest bars on the chart, sometimes has the most
`
`
`
`telling responses.
`“Othcr" valuable information in the Top Trend Survey abounds. When we asked
`participants what specialty of medicine they practiced, "other" specialties included
`infectious disease, psychiatry, rhcumatology and urology. And not all CMlOs re-
`port to the CIO or CMO. Other bosscs named were hospital president, lab director,
`chief clinical officer, and several executive vice president and senior VP titles.
`The “othcr" responses to the question “What will be the biggest challenge for
`your organization when it comes to achieving HIT ECI-{'5 goals?" offered insight
`as well. Several said simply getting the final requirements was the biggest chal-
`lenge; others mcntioncd system integration, patient access to information, sys-
`tem certification and meeting medication reconciliation requirements.
`When it comes to the devices physicians use to input and review data, work-
`stations, desktop PCs and COVVS cast long shadows over the “Other” responses,
`which included tablet PCs and voice recognition systems. It will be interesting to
`see if iPads make the write-in list next time around.
`
`One disconcerting “Other" item appeared in answer to the question, "What
`types ofdcviccs do physicians most often use to input data?” Along with