Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA159393
`ESTTA Tracking number:
`08/28/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`78796150
`U.S. Preventive Medicine, Inc.
`PREVENTIONTV
`Thomas F. Bergert
`Williams Mullen, P.C.
`8270 Greensboro Drive, Suite 700
`McLean, VA 22102
`UNITED STATES
`tbergert@williamsmullen.com
`Appeal Brief
`78.796150 brief.pdf ( 3 pages )(127398 bytes )
`Exhibits 1 and 2. 150 appeal.pdf ( 13 pages )(413115 bytes )
`Thomas F. Bergert
`tbergert@williamsmullen.com, prenie@williamsmullen.com
`/Thomas F. Bergert/
`08/28/2007
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In re: EX Parte Appeal of Application No. 78/796150
`
`Filed: January 20, 2006
`
`Mark: PREVENTIONTV
`
`Applicant: U.S. Preventive Medicine, Inc.
`
`Notice of Appeal Filed: June 29, 2007
`
`APPEAL BRIEF
`
`Applicant appeals the Examining Attorney’s refusal to register the present mark under
`Section 2(d) of the Trademark Act.
`
`In the final Office Action dated January 1, 2007 in the present application, the Examining
`Attorney has maintained refusal to register the present mark under Section 2(d) based upon a
`perceived likelihood of confusion between the mark in the present application and the mark in
`U.S. Registration No. 2,643,325 (the ‘325 registration).
`
`The present mark is PREVENTIONTV and the mark in the ‘325 registration is
`PREVENTION.
`
`The Examining Attorney follows a two-part analysis in determining whether there is a
`likelihood of confusion. In the first part, the Examining Attorney has compared the marks for
`similarity in appearance, sound, connotation and commercial impression. Notably, the
`Examining Attorney concludes that the marks are similar in allfour of these areas by the simple
`fact that both marks include the term PREVENTION (see Final Office Action dated January 1,
`2007, last sentence of first paragraph under heading “COMPARISON OF THE MARKS”).
`
`Applicant respectfully submits that the Examining Attorney reaches an erroneous
`conclusion by stating that the marks have the same appearance, sound, meaning and connotation
`merely because of a shared tenn. Such a conclusion is in direct contrast to the body of case law
`suggesting otherwise. The mere fact that marks share a tenn in common is not dispositive of the
`issue of likelihood of confusion. See Clairol, Inc. v. Cosmair, Inc, 224 USPQ 229, 232 (SDNY
`1984).
`
`In considering the elements cited by the Examining Attorney individually, the mark in the
`‘325 registration includes a single word term having three syllables — PREVENTION. The
`Applicant's Mark is a compound word mark comprised of two distinct words represented as one
`word. The compound mark PREVENTIONTV has five syllables. Thus, the marks are not
`similar in sound or appearance. Courts look to the marks in their enrireties when making this
`analysis, and the fact that the marks share a common tennis not conclusive on this point. See,
`e.g., Mr. Hero Sandwich Systems, Inc. 12. Roman Meal Company, 228 U.S.P.Q. 364 (CAFC
`
`

`
`1986) (holding no confiision between ROMAN MEAL marks and ROMANBURGER for food
`items).
`
`Further, the mark in the ‘325 registration is a common noun that means “the act of
`preventing; a hindrance; obstacle.” See attached Exhibit 1. The term PREVENTIONTV in
`Applicant’s Mark is a coined term having no inherent meaning. The Applicanfs Mark thus has a
`different overall commercial impression and a different connotation to the consuming public
`from the mark in the ‘325 registration. Applicant submits that the familiar term PREVENTION
`is readily distinguished from the unfamiliar (a coined term PREVENTIONTV) in this case. See,
`e.g., Jacobs v. Im.‘ernatz'onal Multz)’oods Corporation, 212 U.S.P.Q. 641 (C.C.P.A. 1982) (finding
`no likelihood of confusion between BOSTON TEA PARTY and BOSTON SEA PARTY).
`
`Indeed, the ‘325 registration is not entitled to a monopoly on the common noun
`PREVENTION. The U.S. Trademark Office has considered this appropriately by registering
`other marks that include the term PREVENTION. In the Final Office Action dated January 1,
`2007, the Examining Attorney refused to consider Applicant’s arguments concerning third party
`U.S. registrations for marks containing the term PREVENTION. The Examining Attorney
`indicated that Applicant had not properly submitted the evidence for consideration. So that this
`issue may be fully considered, Applicant hereby submits printouts of the electronic equivalents
`of the following registrations taken fiom the electronic search records of the U.S. Patent and
`Trademark Office:
`
`U.S. Registration No. 1,925,401 for PREVENTION TAKES FLIGHT in
`connection with printed materials and educational services in the field of
`health and prevention;
`
`U.S. Registration No- 2,335,568 for PREVENTION PLUS in connection
`with medical testing and screening services;
`
`U.S. Registration No. 3,061,802 for PREVENTION AND A CURE IN
`OUR LIFETIME in connection with fundraising services for breast cancer
`research;
`
`U.S. Registration No. 2,687,934 for PREVENTION WORKS in connection
`with educational services in the field of personal injury reduction;
`
`U.S. Registration No. 2,871,812 for STROKE PREVENTION PLUS in
`connection with providing health care infonnation and providing
`educational services in the fields of health care and prevention;
`
`U.S. Registration No. 3,1 16,080 for AN OUNCE OF PREVENTION PM in
`connection with anti—aging cream;
`
`U.S. Registration No.3,119,931 for FALL PREVENTION CLINICS OF
`AMERICA in connection with medical diagnostic and rehabilitation
`services; and
`
`

`
`U.S. Registration No. 2,3 84,744 for FOCUSED ON PREVENTION in
`connection with educational services in the field of oral hygiene and
`preventive oral health.
`
`Such evidence is proper according to Trademark Manual of Examining Procedure §§
`710.03 and l207.01(d)(iii). Applicant offers the evidence of these registrations to show that the
`term PREVENTION as a portion of Applicant’s mark is so commonly used that the public will
`look to other elements to distinguish the source of the goods or services. See, eg, AMP’ Inc. v.
`American Leisure Products, Inc, 474 F.2d 1403, 1406, 177 USPQ 268, 269-70 (C.C.P.A. 1973);
`Plus Products v. Srar—Kisr Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). See also, Grimer +
`Jalzr USA Publishing v. Meredith Corp., 26 U.S.P.Q.2d 1583 (2d Cir. 1993) (holding no
`confusion between PARENTS and PARENT’ S DIGEST in connection with publications).
`
`Contrary to the Examining Atto1ney’s assertions, the Applicant’s Mark and the mark in
`the ‘325 registration are not virtually identical, and are certainly no more identical than any of
`the above identified marks. Thus, Applicant submits that the Examining Attorney’s conclusions
`regarding the first part of the likelihood of confusion test are in error.
`
`As to the second part of the analysis concerning the similarity of Applicant’s services
`with those in the ‘325 registration, Applicant again submits that Applicant’s services are no more
`similar to those in the ‘325 registration than are the goods/services in the majority of the above
`cited registrations. The above cited registrations were all issued in connection with medical
`and/or health information and related products and services without apparent challenge or
`incident.
`
`As indicated by the many registrations above, the field of marks including the term
`PREVENTION is crowded, particularly in connection with health care and medical related
`products and services. For these reasons, Applicant respectfully requests that the refusal to
`register the present mark be Withdrawn.
`
`Respectfully submitted,
`U.S. Preventive Medicine, Inc.
`
` \/
`
`
`Thomas F. Bergert, Esq.
`WILLIAMS MULLEN
`
`8270 Greensboro Drive, Suite 700
`McLean, Virginia 22102
`703.760.5200 (office)
`703.748.0244 (fax)
`Counsel for Applicant
`
`Filed: August 28, 2007
`Attached:
`Exhibit 1 -— copy of dictionary definition
`Exhibit 2 — copies of cited U.S. Registrations
`
`

`
`Exhibit 1
`
`

`
`

`
`
`
`INTRODUCTION
`
`STAFF .
`
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`USAGE PANEL
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`n'ghts"1n any word. beca se sue
`practicable. Words that are known to have current
`registrations are shown with an initial capital and are
`also identified as trademarks. The inclusion of any
`.word in this Dictionary is not. hov&_I_eyer,:"
`expres-
`
`'
`Publisher‘
`’
`'
`'
`'
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`.
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`
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`CONSULTANTS .
`
`SPECIAL ARTICI
`Language, Cultur:
`Lee Pederson
`
`"
`
`Usage and Acce_p_'
`_DWight Bo1inge17";
`_‘Willia.m'F. B'uc"1<Ie
`., English and§GO.Od
`Geofirey Nunberg
`
`I
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`
`:_ The Mathematiés
`_ Henry Kuéera
`T _,_(§U_I_DE'TO ‘THE
`'
`‘jST_YL___E M';$.NIIA_I
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`i:PRiONU'_LNC_§IATIOI
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`DICTIONARY OF
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`7
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`‘i FQUR—_Y'.EAR CO?
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`"PICTURE CREDI‘
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`ton, MA 02108‘.
`
`
`Library of Congress Cataloging in Publication Data
`_
`
`'
`Maiia‘eiitfi-'?iihdéfiEi1e"'"
`“”
`'—-
`-
`'
`3 Amerimriifleritage .d_i_c1 nit
`Rev. ed. of: American Heritage dictionary of lh
`English language. New college ed. c1976.
`1. English language—Dictionaries.
`1. Morris.
`William, 1913-
`1982
`PE1625.A54
`ISBN 0-395-32943-4
`ISBN 0-395-32944-2 (thumb index)
`ISBN 0-395-33959-6 (deluxe edition)
`
`423
`
`82-9346
`
`Manufactured in the United States of America
`
`
`
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`
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`
`

`
`

`
`Exhibit 2
`
`

`
`Int. Cls.: 16 and 41
`
`Prior US. ($315.: 2, 5, 22, 23, 29, 37, 33, 50, 100,
`101. and 107
`United States Patent and Trademark Office Reg. No. 1,925,401
`
`Registered Oct. 10, 1995
`
`TRADEMARK
`SERVICE MARK
`PRINCIPAL REGISTER
`
`PREVENTION TAKES FLIGHT
`
`AMERICAN AXRLINES,
`CORPORATION)
`M.D. 5675, P. 0. jaox 519515
`DALLAS/FORT WORTH
`752519515
`
`INC.
`
`(DELAWARE
`
`AIRPORT,
`
`TX
`
`FOR:- PRINTED MATERIALS, NAMBLY
`TRAINING MANUALS AND TESTING MATE-
`RIALS IN THE FIELD OF HEALTH AND PRE-
`VENTION, [N CLASS 16 (us. CLS. 2, 5, 22, 23,
`29; 37, 33 AND 50).
`
`FIRST USE 5—-I9-1993;
`5-19-1993.
`
`IN COMMERCE
`
`FOR: EDUCATIONAL SERVICES, NAMELY
`CONDUCTING WORK-SHOPS AND SEMINARS
`IN THE FIELD OF HEALTH AND PREVEN-
`TION, IN CLASS 41 (US. CLS.
`10-0, 101 AND
`107).
`FIRST USE
`5-19-1993.
`
`IN CONIMERCE
`
`5-19-1993;
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "PREVENTION”, APART
`FROM THE MARK AS SHOWN.
`
`SER. NO. 74-504-,1l3. FILED 3-23-1994.
`
`HOPE SLCJNIM, EXAMINING ATTORNEY
`
`

`
`Int. CL: 42
`
`Prior U.S. Cls.: 190 and 101
`
`Reg. No. 2,335,568
`United States Patent and Trademark Office
`Registered Mar. 28, 2000
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`§' Pnsvsumm PLUS
`
`CALIFORNIA ULTRASOUND, INC. (CALIFOR-
`NIA CORPORATION)
`7720 EL CAMINO REAL, SUITE 230
`CARLSBAD, CA 92009
`
`NG CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TC} USE “PR.EVEN'I'ION” AND THE
`CADUCBUS SYMBOL, APART FROM THE
`MARK AS SHOWN.
`
`FOR: MEDICAL TESTING AND SCREENING
`SERVICES, NAMELY "PROVIDING ULTRA-
`SOUND SCREENING SERVICES, IN CLASS 42
`(I15. CLS. 100 AND 101).
`FIRST USE
`12-7-1998;
`12-‘?-1998.
`
`COMMERCE
`
`IN
`
`SER. N0. 75-—67I,7 10, FILED 3-31-1999.
`
`MICHAEL SOUDERS, EXAMINING ATTOR-
`NEY
`
`

`
`Jnt. CL: 36
`
`Prior U.S. Cls.: 100, 101 and 102
`
`United States Patent and Trademark Office
`
`Reg. No. 3,061,802
`Registered Feb. 28, 2006
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`PREVENTION AND A CURE IN OUR LIFETIME
`
`I THE BREAST CANCER RESEARCH FOUNDA-
`TION (NEW YORK NOT-FOR-PROFIT cop.-
`PORATION)
`654 MADISON AVENUE, SUITE 1209
`NEW YORK, NY 10021
`
`FOR: CHARITABLE FUNDRAISING SERVICES
`FOR BREAST CANCER RESEARCH, W CLASS 36
`((1.5. CLS. I00, 101 AND 102).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WI'II-IOIJT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`SER. NO. 76-612,753, FILED 9-24-2004.
`
`FIRST USE 10-0-2002; IN COMMERCE 10-0-2002.
`
`KIMBERLY PERRY, EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 41
`
`Prior U.S. C1s.: 100, 101 and 107
`
`United States Patent and Trademark Office
`
`Reg. No. 2,687,934
`Registered Feb.18,2GO3
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`Pre{,entionWorks
`
`BEACON MUTUAL INSURANCE COMPANY,
`THE (RHODE ISLAND CORPORATION)
`ONE BEACON CENTRE
`WARIVICK, RI 028937504
`
`FOR: EDUCATION SERVICES, NAMELY, CON-
`DUCTING CLASSES, SEMINARS, AND WORK-
`SHOPS IN THE FIELD OF PERSONAL INIURY
`REDUCTION IN OFFICE AND INDUSTRIAL SET-
`TINGS, AND DISTRIBUTING COURSE MATERI-
`ALS IN CONNECTION TI-IEREWITI-I, IN CLASS 41
`(U.S. CLS. 100, 101
`107).
`-
`-
`
`FIRST USE 10-I-2.000; IN COMMERCE 10~1-2000.
`
`OWNER OF U.S. REG. NO. 2,136,664.
`
`SER. NO. 76-189,270, FILED 1-4-2001.
`
`C
`HRISTOPHER ADKINS, EXAMINING ATTOR-
`NEY
`
`

`
`Int. CIs.: 41 and 44
`
`Prior U.S. 'Cls.: 100, 101 and 107
`
`United States Patent and Trademark Office
`
`Reg. No. 2,871,812
`Registered Aug. 10, 2004
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`STROKE PREVENTION PLUS
`
`STROKE PREVENTION PLUS,
`CORPORATION)
`4502 WATTS PLANTATION
`FRESNO, TX T7545
`
`INC.
`
`(TEXAS
`
`CARE INFORMATION BY TELEPHONE; MEDICAL
`TESTING AND SCREENING, IN CLASS 44 (US. CLS.
`100 AND 101).
`
`FOR: EDUCATION SERVICES, NAMELY, WORK-
`SI-IOPS AND SEMINARS REGARDING HEALTH
`CARE AND PREVENTION, IN CLASS 41 (U.S. CLS.
`100, 101 AND 107).
`
`FIRST USE 9-0-1999; IN COMMERCE 9-0-1999.
`
`FOR: HEALTH CARE; PROVIDING HEALTH
`CARE INFORMATION; PROVIDING HEALTH
`
`FIRST USE 9-0-1999; IN OOMMERCE 9-0-1999.
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE STROKE PREVENTION, APART
`FROM THE MARK AS SI-IOVVN.
`
`SER. NO. 78-291,283, FILED 8-22-2003.
`
`JOHN DWYER, G ATTORNEY
`
`

`
`Int. CL: 3
`
`T Prior U.S. CIs.: 1, 4, 6, 50, 51 and 52
`
`United States" Patent and Trademark Office
`I
`TRADEMARK
`PRINCIPAL REGISTER
`
`Reg. No. 3,116,080
`Registered July 13, 2006
`
`AN OUNCE OF PREVENTION PM
`
`BLISS WORLD I-LC (NEW YORK LTD LIAB CD)
`75 VARICK STREET
`10TH FLOOR
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WITHOUT CLAIM TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`
`NEW YORK-.NY10013
`
`FOR: ANTI-AGING NIGHT CREAM; ANTI-
`AGING MOISTURE CREAM, NIGHT TIME FACIAL
`LOTION, IN CLASS 3 (U.s..cLs. 1,4,6, 50, 51 AND 52).
`
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "PM", APART FROM THE MARK
`AS SHOWN-
`
`SER. No. 78472606, FILED 8-24-2004-
`
`FIRST USE 12-1-2005; IN COMMERCE 121.2005.
`
`REBECCAH GAN: EXAMNTNG ATTORNEY
`
`

`
`"CI.-: 44
`
`Prior U.S. Cls.-: 100 and 101
`
`United States Pateitit and Trademark "Office
`
`Reg. No. 3.:,1’19,_'93'1
`Registered July 25, 2005
`
`V SERVICE
`PRINCIPAL PREGISEIZER
`
`
`
`ORCHARD. AND CARLYLE, LLIC (iLLmo1s_ LTD‘
`..L.IAB‘C<3.),
`..
`V
`7+1o'_E. QGDEN
`SUITE 250
`NAPE1w11.LE,_ IL 6056-3
`
`BLUE AND GRAY ISJARB
`_ THE coLoR(s)
`AS A'FEA'IT_LRE OF THE MARK.
`
`'
`
`FOR: PROVEDJNG MEDICAL DIAGI-IOSEIECAND
`REHABILIT-A'I'.[ION SERVICES, NAMELY, TREAT—'
`.(;)F DIZZINESS AND EALAEGE DISOR-
`DE-RS, IN CLASS 44 (us. 'CLS—. IOUAND 101).
`
`THE W0_RDING- E-ALL PREVENIIONA _cL1N1G.S
`APPEARS IN BLUE, '1‘-HE WORDING OF AMERICA
`APPEARS" IN RED, TI-IE CURVED HORIZONTAL
`LINE APPEARS IN RED
`THE FIGURE AP-
`PE-ARS IN GRAY.
`
`FIRST USE‘ 6-1‘_—.200.'3; IN COMMERCE.1-15-20_fl4.
`
`NO CLAIM IS‘ MADE To T-HE EXC_3__LI_-JSIVE
`RIGHT TO USE f'FALL PREVBNTIIQN
`0E
`AI»/I.}%i1EI'CA",., APART FROM THE MARK AS
`s1-10-.
`,.
`
`SER. NO. 7-8-650,395, FILED 6-14-2005.
`
`BELL, G ATTORNEY
`
`

`
`Int. CL: 41
`
`Prior U.S. Cls.: I90, 101 and 187
`.
`Reg. No. 2,384,744
`
`United States Patent and Trademark Office Registered Sep. 1z,2ono
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`FOCUSED ON PREVENTION
`
`PRIMUS, LINDA ISIS RD!-I MS (PARTNERS!-HP)
`596 IVIIXVILLE ROAD
`CHESHIRE, CT 06410 AND
`GILMAN, GAIL 5., RDHAP BSDI-I Ms (PARTNER.-
`SHIP)
`6175 PRINIROSE DRIVE
`.
`LA MESA, CA 91942
`DEA BOSSY FLOSSY S1, C0.
`
`FOR: EDUCATIONAL SERVICES, NAMELY CON-
`DUCTING CLASSES AND SEMINARS IN THE FIELD
`OF SELFDIRECTED ORAL HYGIENE AND PRE-
`VENTIVE ORAL HEALTH, IN CLASS 41 (us. CLS.
`100, 101 AND 107).
`IN COMMERCE 0—D~1990.
`FIRST USE 0«-8-1990;
`SER. NO. 75--576,183, FILED 10-23-1998.
`MATTHEW PAPPAS, MG ATTORNEY