Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA159392
`ESTTA Tracking number:
`08/28/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`78796171
`U.S. Preventive Medicine, Inc.
`THE PREVENTION CHANNEL
`Thomas F. Bergert
`Williams Mullen, P.C.
`8270 Greensboro Drive, Suite 700
`McLean, VA 22102
`UNITED STATES
`tbergert@williamsmullen.com
`Appeal Brief
`78.796171 brief.pdf ( 3 pages )(120118 bytes )
`Exhibits 1 and 2. 171 appeal.pdf ( 14 pages )(579474 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. 78/796171
`
`Filed: January 20, 2006
`
`Mark: THE PREVENTION CHANNEL
`
`Applicant: U.S. Preventive Medicine, Inc.
`
`Notice of Appeal Filed: June 29, 2007
`
`APPEAL BRIEF
`
`Applicant appeals the Examining Attorney’s refiisal 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 THE PREVENTION CHANNEL 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 suggesting that the marks have the same appearance, sound, meaning and
`connotation merely because of a shared term. 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
`App1icant’s Mark is a three-word term having six syllables. Thus, the marks have a different
`overall appearance and sound, even though they share a common term.
`
`

`
`Additionally, the marks have a different meaning. The mark in the ‘325 registration is a
`noun. The term PREVENTION in Applicant’s Mark is an adjective modifying the noun
`CHANNEL. Attached as Exhibit 1 are dictionary definitions for these terms. The noun
`PREVENTION refers to the act of preventing; a hindrance; obstacle. The term CHANNEL
`refers to a route of communication. Thus, the connotation of the mark in the ‘325 registration is
`that of an obstacle or hindrance. The connotation of the Applicant’s mark is more of a
`communication or access route.
`
`The ‘325 registration does not entitle its owner with a monopoly on the term
`PREVENTION. As discussed in Applicant’s earlier response dated December 20, 2006, the U.S.
`Trademark Office has registered other marks that include the term PREVENTION, even in
`connection with medical and/or health information and related products and services. In the
`Final Office Action dated January 1, 2007, the Examining Attorney refused to consider
`App1icant’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 fiilly considered, Applicant hereby
`submits printouts of the electronic equivalents of the following registrations taken from 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 information and providing
`educational services in the fields of health care and prevention;
`
`U.S. Registration No. 3,116,080 for AN OUNCE OF PREVENTION PM in
`connection with anti-aging cream;
`
`U.S. Registration No.3,l 19,931 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 1207.01(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, e.g., AMF Inc. v.
`American Leisure Products, Inc, 177 U.S.P.Q. 268, 269-70 (C.C.P.A. 1973); Plus Products 12.
`Star—Kist Foods, Inc, 220 U.S.P.Q. 541, 544 (TTAB 1983). See also, Gruner + Jahr 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 Attorney’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 Attomey’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,
`US. Preventive Medicine, Inc.
`
` homas 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 — copies of dictionary definitions
`Exhibit 2 — copies of cited U.S. Registrations
`
`

`
`Exhibit 1
`
`

`
`

`
`INTRODUCTION
`
`STAFF .
`.
`.
`.
`.
`.
`.
`.
`.
`.
`
`
`
`
`
`emarks
`N
`
`practicable. Words that are known to have current
`registrations are shown with an initial capital and are
`also identified as trademarks. The inclu§._ion of any
`
`ton, MA 02108‘.
`
`USAGE PANEL
`
`CONSULTANTS
`
`SPECIAL ARTICL
`Language, Cultur:
`Lee Pederson
`
`"
`
`Usage and Acceip‘
`_Dwight Bo1inge‘_r"'.
`_'Willia.m‘F. Biiclde
`: English and,—Goo.d
`Geoffrey -Nunberg
`
`I T ;_ 'K1‘l_1e'lVlather'r1at'ic‘:s
`__Hemj)_1 Kuéera
`'_.CrU_I_Dia'TQ rria ‘if
`'lSTYLEM'3NUAL
`PRbNiiN91ATI0r
`
`’
`
`"DICTIONARY 01:
`
`.BIOGRAPHlCAL
`It ’G'EO:.GE;AI5'H1__C
`
`1',.ABBItElYIAIlQl§IE
`I FPUR-.Y-EAR Ci)"
`
`.' TWO-YEAR‘ Co_fL
`
`PlCTURlE CREDF
`
`
`
`
`
`Libraryot‘ Congress Cataloging in Publication Data
`’ *Maiireeitfir'=ufideE"ti1Ie
`-
`A
`
`.
`__ rneric'a'rL‘He_riuige‘dicti6
`Rev. ed. of: American Heritage dictinnary of the
`English language. New college ed. c1976.
`1. English ianguage—~Dictionaries.
`1, Morris.
`William. 1913-
`1982
`PEl625.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
`
`

`
`

`
`

`
`Exhibit 2
`
`

`
`Int. Cls.: 16 and 41
`
`Prior us. Cls.: 2, 5, 22, 23, 29, 37, 33, so, 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 AzR.L:NEs,
`CORPORATION)
`MI). 5675, P. 0. BOX 619616
`DALLAS/FORT WORTH
`752619616
`
`INC.
`
`(DELAWARE
`
`AIRPORT,
`
`TX
`
`FOR:- PRINTED MATERIALS, NAMBLY
`TRAINING MANUALS AND TESTING MATE-
`RIALS IN THE FIELD OF HEALTH AND PRE-
`VENTION, [N CLASS 15 (us. CLS. 2, 5, 22, 23,
`29; 37, 33 AND 50).
`
`FIRST USE 5-19-4993;
`5-19-1993.
`
`IN COMIVEERCE
`
`FOR: EDUCATIONAL SERVICES, NAMELY
`CONDUCTING WORK-SHOPS AND SEMINA-Rs
`IN THE FIELD OF HEALTH AND PREVEN-
`TION, IN CLASS 41 (us. CLS. 100,
`101 AND
`10 .
`QIRST USE
`IN COMMERCE
`5-19.-1993;
`_
`5-194993.
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT‘ TO USE "PR‘BVENTION”, APART
`FROM THE MARK As SHOWN.
`
`SBR. NO. 74-504,118, FILED 3-—23—I'994-
`
`HOPE SLONIM, EXAIVIIINTING ATTORNEY
`
`

`
`1111:. CL: 42
`
`Prior U.S. Cls.: 100 and 101
`
`Reg. No. 2,335,568
`United States Patent and Trademark Office
`Registered Mar. 28, 2800
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`4%‘PREVENTIHN PLUS
`
`CALIFORNIA ULTRASOUND, INC. (CALIFOR-
`NIA CORPORATION)
`7720 EL CAMINO REAL, SUITE 230
`CARLSBAD, CA 92009
`
`N0 CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE “PREVENTION” AND THE
`CADUCEUS SYNIBOL, APART FROM THE
`MARK AS SHOWN.
`
`FOR: MEDICAL TESTING AND SCREENING
`SERVICES. NAMELY PROVIDING ULTRA—-
`soumzb SCREENING SERVICES, IN CLASS 42
`(us. CLS. mo AND 101).
`FIRST‘ USE
`124-1993;
`12-7-1993.
`
`IN COMMERCE
`
`SER. NO. 75-671,? 10, FILED 3-31-1999.
`
`MICPLQEL SOUDBRS, EXAMINING ATTOR-
`NEY
`
`

`
`Int. CL: 36
`
`Prior U.S. C1s.: 100, 101 and 102
`
`United States Patent and Trademark Office
`
`Reg. No. 3,861,802
`Registered Feb. 28, 2906
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`PREVENTION AND A CURE IN OUR LIFETIME
`
`TI-IE BREAST CANCER RESEARCH FOUNDA-
`'I'ION (NEW YORK NOT-FOR-PROFIT COR-
`PORATION)
`654 MADISON AVENUE, SUITE 12139
`NEW YORK, NY 10021
`
`FOR: CHARITABLE FUNDRAISING SERVICES
`FOR BREAST CANCER RESEARCH, IN CLASS 35
`(US. CLS. 100, 101 AND 102).
`
`THE MARK CONSISTS OF STANDARD CHAR-
`ACTERS WI'I'I-IOUT 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 I0-0-2002.
`
`KJIVLBERLY PERRY, EXAMINING ATTORNEY
`
`

`
`Int. CL: 41
`
`Prior U.S. Cls.: 100, 101 and 107
`
`United States Patent and Trademark Office
`
`Reg. No. 2,687,934
`Registered Feb. 18, 2003
`
`SERVICE MARK
`
`PRINCIPAL REGISTER
`
`Pre{,entionWarks
`
`-BEACON MUTUAL INSURANCE COMPANY,
`THE (RHODE ISLAND CORPORATION)
`ONE BEACON CENTRE
`WARWICK, RI 028937504
`
`FOR: EDUCATION SERVICES, NAMELY, CON-
`DUCTING CLASSES, SEMINARS, AND WORK-
`SHOPS IN THE FIELD op PERSONAL INJURY
`REDUCTION IN OFFICE AND INDUSTRIAL SET-
`IINGS, AND DISTRIBUTING COURSE MATERI-
`ALS IN CONNECTION TI-IEREWITH, IN CLASS 41
`(U.S.CLS.100,101AND107).
`.
`-
`
`FIRST USE 10-1-2000; IN COMMERCE 10-1-2000.
`
`OWNER OF US. REG. NO. 2,136,664.
`
`SER. NO. 76-189,276, FILED 1-4-2001.
`
`CHRISTOPHER ADKINS, EXAMINING A'I'I‘0R-
`NBY
`
`

`
`Int. Cls.: 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)
`4-502 WATTS PLANTATION
`FRESNO, TX 77545
`
`INC.
`
`(‘TEXAS
`
`CARE INFORMATION BY TELEPHONE; MEDICAL
`TESTING AND SCREENING, IN CLASS 44 (us. CLS.
`100 AND 101).
`
`FOR: EDUCATION SERVICBS, NAMELY, WORK-
`SHOPS AND SEMINARS REGARDING HEALTH
`CARE AND PREVENTION, IN CLASS 41 (U.S. C13.
`100, 101 AND 107).
`
`FIRST USE 9-0-1999; JN COMMERCE 9-0-1999.
`
`FOR: HEALTH CARE; PROVIDING I-IEALTI-I
`CARE INFORMATION; PROVIDING HEALTH
`
`FIRST USE 9-0-1999; IN COMMERCE 9-0-1999.
`
`NO CLAIM IS .MADE TO THE EXCLUSIVE
`RIGHT TO USE STROKE PREVENTION, APART
`FROM THE MARK AS SHOWN.
`
`SER. NO. 78-291,283, FILED 8-22-2003.
`
`JOHN DWYER, EXAMINING ATTORNEY
`
`

`
`Int. Cl.: 3
`
`' 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, was
`
`AN OUNCE OF PREVENTION PM
`
`BLISS WORLD LLC (NEW YORK LTD LIAB C0)
`_ VARICK
`FLOGETREET
`NEW YORK.NYIOo13
`
`FOR: ANTI-A GING NIGHT CREAM; ANTL
`AGING MOISTURE CREAM, NIGHT TIME FACIAL
`LOTION, IN CLASS 3 (us. C13. 1, 4, 5, so, 51 AND 52).
`
`THE MARK. CONSISTS OF STANDARD CHAR-
`ACTERS ‘WITHOUT CLAJIVI TO ANY PARTICULAR
`FONT, STYLE, SIZE, OR COLOR.
`NO CLAIM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE "PM", APART FROM THE MARK
`AS SHOWN-
`
`SER. NO. 7s472,sos, FILED 2-24-2004.
`
`FIRST USE 12-1-2005; IN COMMERCE 12-1~2oo5.
`
`REBECCAH GAN= EXAMENING ATTORNEY
`
`

`
`‘CI.-: 44
`
`Prior U.S. Cls.-: 100 and 101
`
`United States P-atem and Trademark Office
`
`Reg. No. 331193321
`Registered. July 25, 2006
`
`. SERVICE
`PRINCIPAL REGISTER
`
`
`
`0ZR:CHARD.AND ("TA-RLYLE, LLC (ILLINOIS LTD"
`___L_IAB'CO)M
`__
`.
`_
`r:_1o'_E. OGDEN AVE-,1 SUITE 2-so
`NAEEIwE,LE,.1:L 60563
`
`_ THE COLaOZR(S) RED, BLUE AND
`' CLAIMED ASA “FEA'I.'URE OF THE. MARK.
`
`ISJARB
`
`FOR: ?R_0V]DING MEDICAL D1AGNOS:"I'IC'AND
`RBI-'IABfl.TFA'TION SERVICES‘, NAMELY, TRE-AT-'
`QF DIZZINESS AND BALANCE DISOR-
`DERS, IN CLASS 44 (us. ‘CLS-. IOGAND 101).
`
`THE WORDING FALL 1>E=EvENTIoN_TcLINIc..s
`APPEARS IN BLUE, THE WORDING OF AMERICA
`APPEARS’ IN RED, "I'.[-IE CURVED HORIZONTAL
`LINE APPEARS IN RED
`THE FIGURE AP-
`FEARS IN GRAY.
`
`FIRST USE" 6-1,-200.3; IN COMMERCE-I-15-20.04.
`
`N0 CLA-IM IS MADE TO THE EXCLUSIVE
`RIGHT TO USE f‘FA-LL PREVENTIION ‘CLINICS. 0E
`AM—§.N:R1£CA’!, APART FRGM TI-IE MARK AS
`s1-Io,
`..
`
`SER. NO. 7'3-650,395, FILED 5-14-2005.
`
`BELL, G ATTORNEY
`
`

`
`Int. CL: 41
`
`Prior U.S. Cls.: 100, 101 and 197
`Reg. No. 2,384,744
`,
`Registered Sep.12,20fi0
`United States Patent and Trademark Office
` Tj
`
`SERVICE MARK
`PRINCIPAL REGISTER
`
`FOCUSED ON PREVENTION
`
`PRIMUS, LINDA ISIS RD!-I MS (PARTNERSHIP)
`596 MIXVILLE ROAD
`CHESHIRE, CT 06410 AND
`GILMAN, GAIL B., RDI-IAP BSDH MS (PARTNER-
`SHIP)
`6175 PRIMROSE DRIVE
`.
`LA MESA, CA 91942
`DEA BOSSY FLOSSY «Er. CO.
`
`FOR: EDUCATIONAL SERVICES, NAMELY CON-
`DUCTING CLASSES AND SEMINARS IN THE FIELD
`OF SELF-DIRECTED ORAL HYGIENE AND PRE-
`VENTIVE ORAL I-IEALT1-I, IN CLASS 4! (US. CLS.
`100, 101 AND 107}.
`FIRST USE 0—0—I99U; IN COMMERCE O—O~l990.
`SBR. NO. '75—576,183, FILED 10-23-1993.
`MATTIEW PAPPAS, EXAMINING ATTORNEY