Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA686437
`ESTTA Tracking number:
`07/29/2015
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`86321356
`EarlyByrd, LLC
`EARLYBYRD
`DANIEL KEGAN
`KEGAN & KEGAN, LTD
`79 W MONROE ST STE 1310
`CHICAGO, IL 60603-4969
`UNITED STATES
`daniel@keganlaw.com
`Appeal Brief
`EarlyB-AppealBrf-29July2015.pdf(202971 bytes )
`EarlyB-Declarations.pdf(189080 bytes )
`EarlyB-Exhibits.pdf(3518043 bytes )
`EarlyB-x145-CHCF-BridgingTheCareGap.pdf(728209 bytes )
`Daniel Kegan
`daniel@keganlaw.com
`/daniel kegan/
`07/29/2015
`
`Proceeding
`Applicant
`Applied for Mark
`Correspondence
`Address
`
`Submission
`Attachments
`
`Filer's Name
`Filer's e-mail
`Signature
`Date
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`) EARLYBYRD
`) Filed 26 June 2014
`) Serial 86-321,356
`
`
`
`EARLYBYRD, LLC,
`
`Appellant,
`
`
`
`
`APPLICANT'S BRIEF FOR APPEAL
`
`
`
`CONTENTS
`A. APPLICANT'S SERVICES ................................................................................ 2
`B. REGISTRANT'S SERVICES ............................................................................. 2
`C. REGISTRANT'S USE IS PATIENT-PHYSICIAN COMMUNICATION ............. 3
`D. APPLICANT'S USE IS BETWEEN HEALTH CARE PROFESSIONALS ........... 3
`E. APPLICANT'S SERVICES MATERIALLY DIFFER FROM REGISTRANT ...... 3
`F. EXAMINER'S CONCLUSIONS ARE UNSUPPORTED BY EVIDENCE ............ 5
` ATTACHMENTS, EXHIBITS & EVIDENCE ........................................................ 5
`THIRD PARTY REGISTRATIONS ...................................................................... 6
`
`PURVEYORS OF TECHNOLOGY SERVICES ...................................................... 12
`
`
`COMPANIES ALLEGED TO PROVIDE BOTH SERVICES ................................... 15
`G. EXAMINER'S OWN EVIDENCE SUPPORTS REGISTRATION ...................... 17
`H. DUPONT FACTORS SUPPORT REGISTRATION ........................................... 18
`I. CONCLUSION .................................................................................................. 20
`J. AUTHORITIES CITED ..................................................................................... 22
`K. LIST OF EXHIBITS ......................................................................................... 23
`
`
`1. Applicant, EarlyByrd, LLC, (“EarlyByrd”) through its counsel,
`
`respectfully appeals the Examiner's Final Office Action of 15 May 2015, refusing
`
`to register applicant's EARLYBYRD trademark. Applicant's Class 42 services for
`
`healthcare professionals to make and schedule referrals with other professionals
`
`are distinct from the cited Registrant's Class 38 direct communication services
`
`between patient and healthcare provider. Six of the DuPont factors clearly favor
`
`registration. The Examiner's evidence actually shows the services as unrelated.
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 1/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`
`A. APPLICANT'S SERVICES
`
`2. Applicant's applied-for services are in Class 42:
`
`Providing an online non-downloadable Internet-based system
`application
`for healthcare professionals
`featuring
`technology
`enabling healthcare professionals to schedule and to make referrals
`with other health care professionals. (emphasis added).
`
`3.
`
`The examiner has twice issued office actions based not on Applicant's
`
`applied-for services but for a different wording. (Office Actions of 16Dec2014
`
`and 6Feb2015). Applicant brought the first inconsistency to the Examiner's
`
`attention with its 7Jan2015 Request for Reconsideration. The responsive office
`
`action, 6Feb2015, still recited a services description differing from that of the
`
`application. Applicant brought this second inconsistency to the Examiner's
`
`attention with its 1Apr2015 Request for Reconsideration.
`
`
`
`B. REGISTRANT'S SERVICES
`
`4.
`
`The Examiner has refused to register Applicant's trademark, citing the
`
`Class 38 services of a word mark and a design mark of EARLY BIRD ALERT, ®
`
`4,199,694 and ® 4,199,696:
`
`Telecommunication services, namely, electronic and digital
`transmission of voice, data, signals and messages for providing
`communication between users of the service and healthcare
`providers. (emphasis added).
`
`
`
`5.
`
`Registrant only provides a telecommunication service, permitting
`
`direct communication between a patient (or patient caregiver) and their physician,
`
`a communication typically initiated by the non-physician (Exhibits 5 & 6).
`
`Registrant’s website describes its telecommunications service as a way for a
`
`patient to “connect directly” with the physician (x5, “What People Are Saying
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 2/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`About EasyConnect”). Registrant’s homepage carousel-top likewise describes its
`
`service as “a healthcare hotline for patients… and for caregivers” (x6, mid-page).
`
`Registrant’s service is simply a means for patients and caregivers of patients to
`
`talk, via voice or Internet, to the patient’s physician, without intermediaries of
`
`phone receptionists or other barriers.
`
`
`
`C. REGISTRANT'S USE IS PATIENT-PHYSICIAN COMMUNICATION
`
`6.
`
`In the final office action, 15May2015, the Examiner relied on
`
`Internet evidence as relevant to the question whether Applicant's services were so
`
`related to Registrant's services to give rise to the mistaken belief that the services
`
`emanated from the same source (pages 6-7). Applicant submitted Exhibits 5 and 6
`
`as clear evidence that Registrant's "users of the service" with "healthcare
`
`providers" are patients and caregivers, not "other healthcare providers." When a
`
`term, such as Registrant's "between users of the service" is ambiguous standard
`
`document analysis permits clarification with evidence beyond the four corners of
`
`the document.
`
`
`
`D. APPLICANT'S USE IS BETWEEN HEALTH CARE PROFESSIONALS
`
`7.
`
`Applicant's services are not general communications, but specific
`
`referral and scheduling services with other healthcare professionals.
`
`
`
`E. APPLICANT'S SERVICES MATERIALLY DIFFER FROM REGISTRANT
`
`8.
`
`The difference between a communication service and the provision
`
`of additional content is well reflected in the Copyright Act’s safe harbor for
`
`online service providers, 17 USC § 512(c). The online service provider typically
`
`simply provides the “telecommunication service,” permitting the sender to send
`
`and a receiver to receive a communication message. This distinction between the
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 3/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`creator of content and the provider of a communication service is also reflected in
`
`the liability limitation for innocent printers and publishers, 15 USC § 1114.
`
`9.
`
`Registrant only provides a telecommunication service, permitting
`
`direct communication between a patient (or patient caregiver) and their physician,
`
`a communication typically initiated by the non-physician (x5 & 6).
`
`10.
`
`In marked contrast, Applicant provides significant content,
`
`appropriate referrals and referral scheduling services, among health care
`
`professionals. Patients do not make the referrals, healthcare professionals do.
`
`Typical is for a general practitioner health care professional to arrange a referral
`
`to a health care specialist, or to see when the health care specialist has an
`
`available time.
`
`11. Were a registration for “telecommunication services” to be found
`
`confusingly similar to any service that is communicated between sender and
`
`receiver at some distance, then a single Class 38 registration would swallow most
`
`of Classes 35 (Advertising and Business), 36 (Insurance & Finance), 37
`
`(Construction and Repair), 41 (Education & Entertainment), 42 (Scientific and
`
`Legal Services), 43 (Hotel & Restaurant), 44 (Health care & Agriculture), and 45
`
`(Personal & Social Services, Security).
`
`12.
`
`“Providing
`
`telecommunication connections
`
`to
`
`the
`
`internet or
`
`databases” is a Class 38 service (PTO ID Manual), but a XYZ mark for such
`
`services does not preempt an online retail bakery shop (35), insurance (36), real
`
`estate development (37), taxi transport (39), material treatment services for
`
`recycling (40), online education (41), viewing television programming on the
`
`Internet (41), online provision of legal services (42), restaurant reservation
`
`services (43), Internet-based health care information services (44), Computer
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 4/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`security services in the nature of providing authentication, issuance, validation
`
`and revocation of digital certificates (45)—all services from the PTO ID Manual.
`
`13. Use of the Internet is now ubiquitous and "proves little, if anything,
`
`about the likelihood that consumers will confuse similar marks…," In re St.
`
`Helena Hosp., 113 USPQ2d 1082,1087 (Fed Cir, 2014); Pew Research Center,
`
`The Web at 25 in the U.S., 27Feb2014 (x7).
`
`
`
`F. EXAMINER'S CONCLUSIONS ARE UNSUPPORTED BY EVIDENCE—
`
`ATTACHMENTS, EXHIBITS & EVIDENCE
`
`14. The 15May2015 Office Action includes 64 Attachments, none are
`
`cited or identified in the office action text. To identify and readily refer to the
`
`Examiner's Attachments, Applicant has therefore indexed the Examiner's 64
`
`Attachments, appending registration numbers and descriptions, and supplemented
`
`the Examiner's broad assertions with current screenshots of many of the websites
`
`describing the actual uses. This includes captured pages of the websites of the
`
`companies named on page 7 of the Office Action, and submits these captured
`
`webpages as Exhibits in the 100-series, that is, Exhibit 141 is an identified
`
`version of the Examiner's illegible or unidentified Attachment 41 (LeonardoMD).
`
`Exhibits 136-162 correspond to the Attachments (36-64) of the 15 May 2015
`
`Office Action: similar or identical pages when apparently available from the
`
`Internet; more recent and similar homepages or subject pages when the website
`
`pages had changed. Exhibits 1-6 were submitted with Applicant's 10Nov2014
`
`Response to Office Action; x5 and 6 are included here for convenience.
`
`15. The Examiner's Attachments 36-64 as displayed through TSDR Case
`
`Viewer are generally illegible to Applicant (See typical Attachment 64, x9).
`
`Attachments 1-35 are more legible single-page copies of multi-page registration
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 5/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`documents from TEAS. As displayed in the downloaded PDF document from
`
`TSDR and then magnified the Attachments are more readable but no longer
`
`identified as to Attachment number. To facilitate reference to specific evidence
`
`asserted by the Examiner, and to supplement in some cases the partial pages from
`
`Examiner-visited websites, Applicant gathered webpages as PDFs, sometimes
`
`combined separate pages of the same exhibit into a multi-page PDF, and prefixed
`
`each separate exhibit with a large Exhibit number. TMBP § 1207.01; 37 CFR §
`
`2.142(d).
`
`
`
`THIRD PARTY REGISTRATIONS
`
`16. The Examiner concludes that a group of attachments are registrations
`
`"for use in connection with the same or similar services as those of both applicant
`
`and [cited] registrant" Final Office Action, page 6). Review of the Attachments
`
`discloses these are Attachments 1-35. That a registration includes the services of
`
`an applicant or of the cited registrant is not evidence that the two services are
`
`related. The traditional evidence, which is only part of the totality of
`
`circumstances to be evaluated for likely confusion, are registrations reciting both
`
`the services of applicant and of the cited registrant. In re W.W. Henry Co., 82
`
`USPQ2d 1213 (TTAB 2007) (third-party registrations are insufficient to show
`
`that applicant's and registrant's goods are of a type that may emanate from a
`
`single source).
`
`17. The Examiner provides no analysis how her attached registered
`
`services are "similar," in no case are the recited services described the same as the
`
`text of either Applicant or Registrant's services. In most cases, the registration
`
`does not mention both Registrant's healthcare provider-patient/caregiver
`
`communications and also Applicant's referral services between providers.
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 6/24
`
`

`
`
`
`
`
`
`
`®
`2,269,645
`
`2,645,558
`
`3,495,089
`
`4,132,310
`
`4,071,231
`
`4,350,882
`
`PRINTED 11:47 AM 7/29/15
`
`Registrant. Services (abstracted)
`SSM Health Care. Physician recruitment and
`referral services; laundry services group
`purchasing (35); electronic and telephone voice
`messaging services (38); health care services
`(42).
`United Health. MyUHC. Providing on-line
`forms for transmission of messages among
`computer users concerning health, health
`insurance, benefits, and medicine (38);
`Providing on-line health insurance information
`(36); Physician referrals and on-line health
`insurance and benefits services, namely,
`requests for replacement identification cards
`(35); Providing on-line health and medical
`information, and on-line pharmacy services
`(42).
`Jeffrey Levy. DoctorsInPractice. Cancelled, 3
`Apr 2015
`PayFlex Systems. H (Design). Employee
`incentive award programs to promote health
`and wellness; business payroll (35);
`Administration of employee and retiree health
`benefit plans (36); Transmission via
`telecommunication networks (38);
`Administration of employee and retiree benefit
`plans (42); Wellness services (44).
`Gluco Fitness Center. Gluco Fit Club. Data
`collection and data submission services for
`business purposes in medicine and healthcare
`(35); Data interchange services in healthcare
`transactions such as claims, eligibility, claim
`status, referrals etc that allow direct transaction
`and payment communications between
`healthcare providers and payers (38).
`Intel. Basis. Software platform for importing
`and exporting personal health related data; a
`web site that enables users to input, track and
`analyze personal health related data; enables
`
`Use Exhibits
`10, 11
`
`12, 13
`
`
`
`14
`
`15
`
`16, 17
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 7/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`4,193,480
`
`4,424,380
`
`users to communicate with and motivate each
`other to improve their health and wellness (42);
`online forums for users (38).
`Great Lakes Health Information Exchange.
`Provider exchange and dissemination of health
`care information (38); Providers to generate,
`manage and exchange medical information and
`documents (42); Website featuring health care
`information (44).
`AthenaHealth. AthenaOne. Business
`consulting services, billing support, medical
`practice management services relating to
`medical tests, patient communication services,
`namely telephone answering services (35);
`Patient registration, bill generation, financial
`and business administration, transmitting
`clinical data, an online portal that enables
`patients and physicians to communicate with
`each other, software for use in communications
`between physicians and other participants in
`the health care system with respect to orders
`for medical tests and procedures (42).
`QSI Management. C.A.C.H.E. Medical
`claims processing and management (09);
`Medical billing support services (35);
`Processing of insurance claims and payment
`data (36); data interchange services in
`healthcare transactions such as claims,
`eligibility, claim status, electronic remittance
`advice, prior authorization, attachments and
`referrals that allow direct transaction and
`payment between healthcare providers and
`payers (38); Processing and management of
`medical claims; medical billing; software that
`enables users to detect errors in medical billing
`claims (42). Same registrant as 4,567,634.
`4,531,104 MobileHealth One. MDCHAT.
`Telecommunication services (38); Web site
`enables users to send and receive messages of
`general interest and healthcare, creating an on-
`
`4,598,721
`
`18, 19
`
`21
`
`22, 23
`
`24
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 8/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`line community for registered users for social
`networking (42)
`QSI Management. Mirth. Software for
`exchange of clinical and administrative
`healthcare information (09); Exchange of data,
`electronic data interchange services (38). Same
`registrant as 4,598,721.
`
`25
`
`4,567,634
`
`
`
`18. Review of websites of these registrants show they are not offering
`
`both services of Applicant and of cited Registrant (x10-24). SSM Medical Group
`
`(®2,269,645) offers a "Find a Physician" search function, but no inter-healthcare
`
`provider referral service is disclosed (x10 & 11). UnitedHealth Group's
`
`(®2,645,558) physician referrals service is limited to UnitedHealth's own limited
`
`group of providers (x12 & 13). It serves patient insureds seeking health care from
`
`the limited group of health providers contracted to UnitedHealth; it does not
`
`permit a healthcare professional to develop its own group of selected healthcare
`
`professionals. Canadian Jeffrey Levy's DOCTORSINPRACTICE registration
`
`(® 3,495,089) has been cancelled; services under that trademark are not disclosed
`
`in a top-page Google search. PayFlex Systems (®4,132,310) registered services
`
`and use appear to have nothing to do with intra-healthcare provider referrals
`
`(x14). Gluco Fitness Center (®4,071,231) provides fitness club services using
`
`YMCA facilities in California and Hawaii with payment communications
`
`between healthcare providers and payers (x15); it does not provide a system for a
`
`healthcare provider to make a referral to another healthcare provider. Intel's
`
`BASIS services (®4,350,882) are manifestly for consumers of health care,
`
`patients and persons seeking wellness, not healthcare professional providers (x16
`
`& 17). Great Lakes Health Information Exchange (®4,193,480) provides services
`
`permitting disparate electronic health records (EHR) to be exchanged among
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 9/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`disparate ECR systems (x18 & 19). "Each healthcare environment functions
`
`differently, often in significant ways. It is difficult to create a "one-size-fits-all"
`
`EHR system. (x8, Wikipedia, "Electronic Health Record," § Customization,
`
`<http://en.wikipedia.org/wiki/Electronic_health_record>, 1June2015), thus health
`
`information exchanges match data formats between disparate healthcare systems.
`
`AthenaHealth (®4,424,380)'s AthenaOne homepage does not mention referrals
`
`(x21), its registered services for inter-healthcare professionals is limited to
`
`medical tests and procedures. Many health care inter-professional referrals are not
`
`for tests or procedures but due to scheduling conflicts, more hospital locations, or
`
`another practitioner having specialist skills. QSI Management's C.A.C.H.E.
`
`(®4,598,721) registered services focus on insurance claims processing; the
`
`mention of Class 38 "referrals" is limited to those "that allow direct transaction
`
`and payment" Id. QSA's web home page makes no mention of "refer" (x22 & 23).
`
`Mobile Health One (®4,531,104) registered services and web homepage make no
`
`mention of referrals; its services are not for enabling healthcare professionals to
`
`schedule and to make referrals with other health care professionals (x24). QSI's
`
`MIRTH services (®4,567,634) focuses on data exchange interoperability,
`
`collecting, organizing, and aggregating clinical information. (x25). Neither intra-
`
`practitioner referrals nor direct patient-physician communication are manifest.
`
`19. The healthcare market in the United States is quite Balkanized. (x8,
`
`Electronic health record, § Software quality and usability deficiencies, page 6, §
`
`Governance, privacy and legal issues, page 8, ""600,000 payers, providers and
`
`other entities that handle providers' billing data", and § Customization, "Each
`
`healthcare environment functions differently, often in significant ways," page 14.)
`
`Fewer than ten percent of hospitals as of 2006 had a fully integrated system. Id., §
`
`National contexts, United States, page 17. Only a fifth of all physicians reported
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 10/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`using a system described as "minimally functional and including the following
`
`features: orders for prescriptions, orders for tests, viewing laboratory of imaging
`
`results, and clinical progress notes," Id.
`
`20. While few healthcare professionals are using even minimally
`
`functional electronic health records, Applicant's technology services enabling
`
`healthcare professionals to schedule and to make referrals with other health care
`
`professionals is not within the minimal functions of the small minority of
`
`healthcare professionals using minimal systems. Id. In the entire 42-page report
`
`on electronic health records, "referrals" appears only once, under computer Menu
`
`Requirements: "Provide summary care record for transitions in care or referrals,"
`
`(x8, page 21).
`
`21.
`
`If the consuming public may perceive the respective goods and
`
`services of Applicant and Registrant as related enough to cause confusion about
`
`the source or origin, such evidence may be a factor to weigh against registration.
`
`In re St. Helena Hosp., 113 USPQ2d 1082, 1086 (Fed Cir. 2014). However, the
`
`mere fact that goods and services are "used together" does not, on its own, show
`
`relatedness. Id. at 1086. Rather, to rely on the similarity of the goods and services
`
`as a basis for refusing registration, the PTO must come forth with a persuasive
`
`evidentiary showing of relatedness between the services at issue. Id.
`
`22. Aside from the facts that healthcare professionals communicate with
`
`patients, that healthcare professionals sometimes make referrals to other
`
`healthcare professionals, that healthcare professionals communicate with other
`
`healthcare professionals, and
`
`that obvious current
`
`fact
`
`that
`
`Internet
`
`communications are used by business and consumers, the Examiner has provided
`
`no evidence that the consuming public would perceive Applicant's referral
`
`services between healthcare professionals as originating from the same source as
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 11/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`Registrant's telecommunication services between users, namely patients, and
`
`healthcare providers . Id.
`
`
`
`PURVEYORS OF TECHNOLOGY SERVICES
`
`23. The Examiner asserts that her next set of Attachments are from
`
`"purveyors of technology services akin to those of applicant and registrant,
`
`namely technology services featuring referrals, scheduling, appointments, and
`
`transmission of communications via electronic messages" (Office Action, page
`
`7). Review of the Attachments discloses these are Attachments 36-43, here
`
`Exhibits 136-142. Additional attachments, disclosed as 44-50, here x144-146
`
`(x144 the extracted focal pricing chart, x146 a CHCF summary), are excerpts
`
`from a 37-page booklet of the California Healthcare Foundation (CHCF, x145),
`
`which "lists and summarizes the functions of several applications that [Examiner
`
`claims] offer the services of both applicant and registrant." Of the reviewed
`
`systems with disclosed costs, three exceed $50,000: MyHealth Direct at $50,000
`
`per year per hospital; IRIS at $50,000 per year per IDN with system
`
`configuration/ management additional; and Access Express at $85,000 plus $0.02
`
`per covered patient. These systems are manifestly of a different class than
`
`Applicant's comparatively inexpensive service. (Bidwell Dec., ¶14, $15 per
`
`month per receiving professional). The three disclosed "homegrown" systems are
`
`explicitly not commercial, and thus are not in the market (x144). These highly
`
`expensive (commercial) systems operate in different purchasing class than
`
`Applicant's comparatively inexpensive service.
`
`24. The CHCF report "describes eight software systems that allow health
`
`care providers to process patient referrals using web-based tools rather than the
`
`error-prone use of paper forms, telephone calls, and faxes" (x146, emphasis
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 12/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`added). Nowhere does the CHCF report discuss a communication system that
`
`permits patients to directly phone and communicate to the physician, the Class 38
`
`communication service that cited Registrant offers. The CHCF focus is quite the
`
`opposite, on eliminating such patient "error-prone" invasion into computerized
`
`technology (Eg, "Intelligent Voice Response unit: an automated telephone system
`
`that notifies patients of new appointments, x145, page 31). Yet again, the actual
`
`text of the Examiner's Attachments contradicts her summary rejection and
`
`supports Applicant's registration.
`
`25. Amazon.com sells cradles and caskets, canary cages and commodes.
`
`In an age of a few behemoths, it is not surprising that a few might sell otherwise
`
`unrelated products or services. Sheller-Globe Corp. v Scott Paper Co., 204 USPQ
`
`329, 335 (TTAB 1979) ("Not everything that is sold by a large retail
`
`establishment selling a plethora of otherwise unrelated goods is necessarily
`
`connected, within the meaning of § 2(d) of the Act, to every other product that
`
`happens to be displayed or offered under the same roof.") The Examiner's third-
`
`party registration Attachments, as selected by the Examiner herself, shows none
`
`offer both direct patient-to-physician communication services and also
`
`healthcare-to-healthcare practitioner referral services, indicating that the bulk of
`
`the relevant industry does not offer both of the services.
`
`26. The Looking Glass Attachments again support registerability, not
`
`relatedness of Applicant's and Registrant's services. As with many modern
`
`information systems, Looking Glass actively discourages direct patient-to-
`
`physician communication, implicitly as too inefficient. The Looking Glass major
`
`benefit is provided to the patient who is given the "benefit of…a complete
`
`scheduling functionality without requiring scheduler intervention" (x142, page 3,
`
`"Ensure convenient Access to Services" §). The "Physician Referral Management
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 13/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`Software" provides "automated capture, routing and tracking of orders from
`
`physician's offices" (x142, page 4), not the initiation of referrals.
`
`27. Again, the Examiner provides no analysis how her attached
`
`screenshots are "akin" to either the applied-for services of Applicant or the
`
`registered services of cited Registrant, much less that the same entity provides
`
`both. Again, in most cases, the screenshot does not mention both Registrant's
`
`healthcare provider-patient/caregiver communications and also Applicant's
`
`referral services between providers. Often the Attachments show the disjunction
`
`between Applicant and Registrant services.
`
`
`Company
`ReferralMD
`
`Eceptionist
`
`Leonardo MD
`
`Looking Glass
`
`CHCF
`
`
`
`Services (abstracted)
`Search a database of 3,000,000 doctors by
`specialty and city. No disclosed direct
`patient-to-physician communication.
`Triage and e-referral manager. No direct
`patient-to-physician communication.
`Billing, charting, scheduling, but no
`disclosed referral system, no direct patient-
`to-physician communication.
`No direct patient-to-physician
`communication. Manages receipt of orders
`from referring physician, does not disclose
`functionality for a healthcare provider to
`compile his or her own list of desired
`referral providers nor to initiate such
`referrals.
`Highly expensive commercial systems,
`different channels. Homegrown systems
`not in the market. No direct patient-to-
`physician systems.
`
`Exhibit
`136
`
`139
`
`141
`
`142
`
`144, 145,
`146
`
`28. Examination of what these companies' services actually are provides
`
`additional evidence that the services of Registrant and of Applicant are typically
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 14/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`not offered by the same companies, and thus evidence that prospective purchasers
`
`of either Registrant's services or Applicant's services would not assume that both
`
`were offered by the same entity.
`
`
`
`COMPANIES ALLEGED TO PROVIDE BOTH SERVICES
`
`29. The Examiner asserts that her third and final set of Attachments are
`
`"screenshots of companies that provide the services of both applicant and
`
`registrant," Office Action, page 7). Review of the Attachments discloses these are
`
`Attachments 51-64, here Exhibits 151-162. The Examiner clumps together her
`
`summary of the services of the five companies, as if finding separate companies
`
`within the large healthcare industry that provide services either alleged similar to
`
`Applicant's or to Registrant's is evidence of the confusing relatedness of
`
`Applicant and Registrant services.
`
`30. Examiner appears to conflate a patient-initiated selection of a
`
`healthcare provider with a referral from one healthcare professional to another
`
`healthcare professional. The Examiner asserts "These brand names offer patient
`
`portal communication services that enable patients to initiate communications
`
`that would result in making appointments or finding referrals to specialists…"
`
`(emphasis added).
`
`31. A lay person deciding which type of healthcare professional they
`
`think they need and within that grouping choosing which specific professional to
`
`approach is quite different from a healthcare professional deciding on the basis of
`
`his or her evaluation of a patient what professional expertise is medically required
`
`and within that choice of special expertise the particular other healthcare
`
`profession, given their personal characteristics and other factors, to recommend.
`
`Enabling a lay person choosing from a massive database of an insurance panel is
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 15/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`a different system from providing healthcare professionals with an efficient
`
`means to exercise their trained professional judgment among the other healthcare
`
`professionals the referring professional chooses to consider.
`
`32.
`
`"Referral" in the healthcare industry generally refers to a healthcare
`
`professional's recommendation that another healthcare professional be consulted
`
`(Bidwell Dec., ¶ 7). A lay person's choosing a professional is not such a
`
`"referral."
`
`33. The Brightree "Patient Connect," now renamed "Patent Resupply"
`
`system provides diverse ways for the healthcare system to send messages to the
`
`patient, generally for resupply orders (x155, Pages 5-6). It provides no way for
`
`the patient to communicate directly with the physician. The Brightree Referral
`
`Services are a closed network listing for participating post-acute care providers in
`
`the athenaCoordinator network (x156). Neither of these functions approach either
`
`Applicant's open referral services nor Registrant's patient direct-to-physician
`
`communication services, typically by old-fashioned voice telephone.
`
`34. Again, the Examiner provides no analysis of which companies
`
`provide which services that she asserts are similar to those of Applicant, which
`
`companies and their services she asserts are similar to those of cited Registrant,
`
`and which, if any, companies provide both services.
`
`Services (abstracted)
`Interoperability IT
`Care Coordination, Interoperability
`Not patient-physician direct communication
`
`Post acute-care. Durable medical equipment,
`billing and remittance management focus. Only
`disclosed mention of referrals is for post-acute
`
`Exhibit
`151
`
`155
`
`
`
`Company
`Health Unity
`
`Brightree
`
`EarlyByrd, LLC• Applicant's Appeal • Sn 86,321,356
`
`
`Page 16/24
`
`

`
`
`
`
`
`PRINTED 11:47 AM 7/29/15
`
`Home Health. No direct patient-physician
`communication. Patient Connect (Attachment
`55) renamed to "Patient Resupply (x155):
`"interact with patients to resupply OSA, diabetic,
`and enteral supplies."
`Brightree HMEB In network listing for participating post-acute
`care providers in the athenaCoordinator network
`of over 18,000 providers and processing service.
`TelMed Services Closed system of telemedicine practitioners and
`patient members; patient members may phone "a
`doctor" in the