Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`COLOR(S) CLAIMED
`(If applicable)
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`87687905
`
`LAW OFFICE 121
`
`https://tmng-al.uspto.gov/resting2/api/img/87687905/large
`
`IMPACT EDUCATION LLC
`
`NO
`
`NO
`
`Color is not claimed as a feature of the mark.
`
`The mark consists of the stylized wording "Impact Education LLC" and a design of
`left to right increasing bars above with a mortar and pestle inside the largest bar to
`the right.
`
`Applicant respectfully requests reconsideration that the word portion "IMPACT" is the dominant feature of the mark. Despite the fact that the
`word portions "Education LLC" are disclaimed, they still form part of the mark. It is the mark as a whole which must be considered in
`assessing likelihood of confusion. The marks considered in their entireties have different appearances, sounds, connotations and commercial
`impression. Applicant submits that its mark must be considered as a whole, including all of the word portions and the logo and that all of these
`elements must be given their proper weight. The disclaimer of the word portions "Education LLC" does not negative its visual effect on those
`viewing and hearing the mark, as these still both form part of the mark as a whole. In fact, the word portions "EDUCATION LLC" are longer
`than the word portion "Impact", and thus, have a more significant visual impact. Further, the logo portion of applicant's mark is visually the
`largest portion of the mark and is quite distinct from the stylized version of the lettering of the registrant's mark. Thus, the overall appearance
`of Applicant's mark and registrant's mark is dissimilar. Further, when the word portions of Applicant's mark is spoken, it sounds different from
`registrant's mark. Spoken aloud, Applicant?s mark includes the word portions "EDUCATION LLC". The word portion "Education" is a four-
`syllable word, which together with "LLC" has five syllables. The aural impact of these word portions must be considered when evaluating the
`sound of the mark. Applicant submits that its mark, which consists of word portions having five syllables more than registrant?s mark is
`sufficiently aurally dissimilar that there is no likelihood of confusion. With respect to both connotation and commercial impression, both the
`appearance and sound of Applicant's mark in its entirely must be considered. Applicant?s marks as a whole is: "IMPACT EDUCATION LLC"
`and design. The word portions which are disclaimed and the logo cannot be disregarded. Both the word portion "education" and Applicant's
`logo, must be taken into consideration when determining connotation. Applicant's services are directed to highly educated medical professions
`in the field of managed care and payer professionals who are seeking course credits and continuing education for, among other reasons, to
`meet the requirements for state licenses and certifications. In contrast, the registrant's services are for training individuals to community health
`workers, which are liaisons between patients in a local community and health care providers in that community. By definition, community
`health workers, exclude medical professionals (physicians, nurses, nurse practitioners, pharmacists). Please find attached an American Public
`Health Association worker definition of "community health worker". Further, there would be no reason for educated medical professionals to
`seek training as community health workers, which again by definition, exclude individuals with their professional qualifications. Applicant
`submits that when the marks in their entirety are considered, there is no likelihood of confusion. For at least these reasons, Applicant submits
`there would be no likelihood of buyer confusion as the source of the services. Reconsideration is requested.
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (2 pages)
`
`evi_741090202-20190306175844424839_._Community_Health_Workers.pdf
`
`\\TICRS\EXPORT17\IMAGEOUT17\876\879\87687905\xml8\RFR0002.JPG
`
`

`

`DESCRIPTION OF EVIDENCE FILE
`
`GOODS AND/OR SERVICES SECTION (current)
`
`\\TICRS\EXPORT17\IMAGEOUT17\876\879\87687905\xml8\RFR0003.JPG
`
`A description of the meaning of the term "community health worker" or CHW by the
`American Public Health Association.
`
`INTERNATIONAL CLASS
`
`DESCRIPTION
`
`041
`
`education services, namely, continuing medical and professional education courses for physicians, nurses, nurse practitioners, pharmacists,
`medical directors, pharmacy directors, quality directors, clinical pharmacists, health-system pharmacists, specialty pharmacists, case managers,
`home infusion providers, policy administrators, utilization managers, Health Information Technology professionals, C-suite executives, health
`plan personnel, Health Maintenance Organization personnel, health systems personnel, Integrated Delivery Network personnel, Accountable
`Care Organization personnel, managed care organizations personnel, employers, employer brokers personnel, employer coalitions personnel,
`Pharmacy Benefit Managers, specialty pharmacy providers personnel, patient advocacy organization personnel, and payer organization
`personnel
`
`FILING BASIS
`
`        FIRST USE ANYWHERE DATE
`
`        FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 03/31/2006
`
`At least as early as 03/31/2006
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`041
`
`education services, namely, continuing medical and professional education courses for physicians, nurses, nurse practitioners, pharmacists,
`medical directors, pharmacy directors, quality directors, clinical pharmacists, health-system pharmacists, specialty pharmacists, case
`managers, home infusion providers, policy administrators, utilization managers, Health Information Technology professionals, C-suite
`executives, health plan personnel, Health Maintenance Organization personnel, health systems personnel, Integrated Delivery Network
`personnel, Accountable Care Organization personnel, managed care organizations personnel, employers, employer brokers personnel,
`employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, patient advocacy organization
`personnel, and payer organization personnel; education services, namely, continuing medical education (CME) courses, continuing education
`units (CEU) courses, continuing education (CE) courses, continuing nursing education (CNE) courses, and continuing pharmacy education
`(CPE) courses, for physicians, nurses, nurse practitioners, pharmacists, professional performance medical directors, pharmacy directors,
`quality directors, clinical pharmacists, health-system pharmacists, specialty pharmacists, case managers, home infusion providers, policy
`administrators, utilization managers, Health Information Technology professionals, C-suite executives, health plan personnel, Health
`Maintenance Organization personnel, health systems personnel, Integrated Delivery Network personnel, Accountable Care Organization
`personnel, managed care organizations personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit
`Managers, specialty pharmacy providers personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit
`Managers, specialty pharmacy providers personnel, patient advocacy organization personnel, and payer organization personnel, in the field of
`educational courses for improving knowledge- and skill-based medical education courses for managed care and payer professionals
`
`FINAL DESCRIPTION
`
`education services, namely, continuing medical education (CME) courses, continuing education units (CEU) courses, continuing education
`(CE) courses, continuing nursing education (CNE) courses, and continuing pharmacy education (CPE) courses, for physicians, nurses, nurse
`practitioners, pharmacists, professional performance medical directors, pharmacy directors, quality directors, clinical pharmacists, health-
`system pharmacists, specialty pharmacists, case managers, home infusion providers, policy administrators, utilization managers, Health
`Information Technology professionals, C-suite executives, health plan personnel, Health Maintenance Organization personnel, health systems
`personnel, Integrated Delivery Network personnel, Accountable Care Organization personnel, managed care organizations personnel,
`employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel,
`employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel,
`patient advocacy organization personnel, and payer organization personnel, in the field of educational courses for improving knowledge- and
`skill-based medical education courses for managed care and payer professionals
`
`FILING BASIS
`
`       FIRST USE ANYWHERE DATE
`
`       FIRST USE IN COMMERCE DATE
`
`Section 1(a)
`
`At least as early as 03/31/2006
`
`At least as early as 03/31/2006
`
`       
`

`

`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`CONCURRENT APPEAL NOTICE FILED
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`No claim is made to the exclusive right to use EDUCATION LLC apart from the
`mark as shown.
`
`/CathyAKodroff/
`
`Cathy A. Kodroff
`
`Attorney of Record
`
`215-540-9210
`
`03/06/2019
`
`YES
`
`NO
`
`Wed Mar 06 18:19:14 EST 2019
`
`USPTO/RFR-XX.XXX.X.XXX-20
`190306181914166313-876879
`05-6208488649861d562bd2ac
`4957cac3fc13e36b90aa909f3
`5eeae4d6221f40-N/A-N/A-20
`190306175844424839
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 87687905 IMPACT EDUCATION LLC (Stylized and/or with Design, see https://tmng-
`al.uspto.gov/resting2/api/img/87687905/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Applicant respectfully requests reconsideration that the word portion "IMPACT" is the dominant feature of the mark. Despite the fact that the
`word portions "Education LLC" are disclaimed, they still form part of the mark. It is the mark as a whole which must be considered in assessing
`likelihood of confusion. The marks considered in their entireties have different appearances, sounds, connotations and commercial impression.
`Applicant submits that its mark must be considered as a whole, including all of the word portions and the logo and that all of these elements must
`be given their proper weight. The disclaimer of the word portions "Education LLC" does not negative its visual effect on those viewing and
`hearing the mark, as these still both form part of the mark as a whole. In fact, the word portions "EDUCATION LLC" are longer than the word
`portion "Impact", and thus, have a more significant visual impact. Further, the logo portion of applicant's mark is visually the largest portion of
`the mark and is quite distinct from the stylized version of the lettering of the registrant's mark. Thus, the overall appearance of Applicant's mark
`and registrant's mark is dissimilar. Further, when the word portions of Applicant's mark is spoken, it sounds different from registrant's mark.
`Spoken aloud, Applicant?s mark includes the word portions "EDUCATION LLC". The word portion "Education" is a four- syllable word, which
`together with "LLC" has five syllables. The aural impact of these word portions must be considered when evaluating the sound of the mark.
`Applicant submits that its mark, which consists of word portions having five syllables more than registrant?s mark is sufficiently aurally
`dissimilar that there is no likelihood of confusion. With respect to both connotation and commercial impression, both the appearance and sound
`of Applicant's mark in its entirely must be considered. Applicant?s marks as a whole is: "IMPACT EDUCATION LLC" and design. The word
`portions which are disclaimed and the logo cannot be disregarded. Both the word portion "education" and Applicant's logo, must be taken into
`consideration when determining connotation. Applicant's services are directed to highly educated medical professions in the field of managed
`care and payer professionals who are seeking course credits and continuing education for, among other reasons, to meet the requirements for state
`
`

`

`licenses and certifications. In contrast, the registrant's services are for training individuals to community health workers, which are liaisons
`between patients in a local community and health care providers in that community. By definition, community health workers, exclude medical
`professionals (physicians, nurses, nurse practitioners, pharmacists). Please find attached an American Public Health Association worker
`definition of "community health worker". Further, there would be no reason for educated medical professionals to seek training as community
`health workers, which again by definition, exclude individuals with their professional qualifications. Applicant submits that when the marks in
`their entirety are considered, there is no likelihood of confusion. For at least these reasons, Applicant submits there would be no likelihood of
`buyer confusion as the source of the services. Reconsideration is requested.
`
`EVIDENCE
`Evidence in the nature of A description of the meaning of the term "community health worker" or CHW by the American Public Health
`Association. has been attached.
`Original PDF file:
`evi_741090202-20190306175844424839_._Community_Health_Workers.pdf
`Converted PDF file(s) ( 2 pages)
`Evidence-1
`Evidence-2
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 041 for education services, namely, continuing medical and professional education courses for physicians, nurses, nurse
`practitioners, pharmacists, medical directors, pharmacy directors, quality directors, clinical pharmacists, health-system pharmacists, specialty
`pharmacists, case managers, home infusion providers, policy administrators, utilization managers, Health Information Technology professionals,
`C-suite executives, health plan personnel, Health Maintenance Organization personnel, health systems personnel, Integrated Delivery Network
`personnel, Accountable Care Organization personnel, managed care organizations personnel, employers, employer brokers personnel, employer
`coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, patient advocacy organization personnel, and payer
`organization personnel
`Original Filing Basis:
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`was first used at least as early as 03/31/2006 and first used in commerce at least as early as 03/31/2006 , and is now in use in such commerce.
`
`Proposed:
`Tracked Text Description: education services, namely, continuing medical and professional education courses for physicians, nurses, nurse
`practitioners, pharmacists, medical directors, pharmacy directors, quality directors, clinical pharmacists, health-system pharmacists, specialty
`pharmacists, case managers, home infusion providers, policy administrators, utilization managers, Health Information Technology professionals,
`C-suite executives, health plan personnel, Health Maintenance Organization personnel, health systems personnel, Integrated Delivery Network
`personnel, Accountable Care Organization personnel, managed care organizations personnel, employers, employer brokers personnel, employer
`coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, patient advocacy organization personnel, and payer
`organization personnel; education services, namely, continuing medical education (CME) courses, continuing education units (CEU) courses,
`continuing education (CE) courses, continuing nursing education (CNE) courses, and continuing pharmacy education (CPE) courses, for
`physicians, nurses, nurse practitioners, pharmacists, professional performance medical directors, pharmacy directors, quality directors, clinical
`pharmacists, health-system pharmacists, specialty pharmacists, case managers, home infusion providers, policy administrators, utilization
`managers, Health Information Technology professionals, C-suite executives, health plan personnel, Health Maintenance Organization personnel,
`health systems personnel, Integrated Delivery Network personnel, Accountable Care Organization personnel, managed care organizations
`personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers
`personnel, employers, employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers
`personnel, patient advocacy organization personnel, and payer organization personnel, in the field of educational courses for improving
`knowledge- and skill-based medical education courses for managed care and payer professionals
`
`Class 041 for education services, namely, continuing medical education (CME) courses, continuing education units (CEU) courses, continuing
`education (CE) courses, continuing nursing education (CNE) courses, and continuing pharmacy education (CPE) courses, for physicians, nurses,
`nurse practitioners, pharmacists, professional performance medical directors, pharmacy directors, quality directors, clinical pharmacists, health-
`system pharmacists, specialty pharmacists, case managers, home infusion providers, policy administrators, utilization managers, Health
`Information Technology professionals, C-suite executives, health plan personnel, Health Maintenance Organization personnel, health systems
`personnel, Integrated Delivery Network personnel, Accountable Care Organization personnel, managed care organizations personnel, employers,
`employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, employers,
`employer brokers personnel, employer coalitions personnel, Pharmacy Benefit Managers, specialty pharmacy providers personnel, patient
`advocacy organization personnel, and payer organization personnel, in the field of educational courses for improving knowledge- and skill-based
`medical education courses for managed care and payer professionals
`Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is
`using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark
`
`

`

`was first used at least as early as 03/31/2006 and first used in commerce at least as early as 03/31/2006 , and is now in use in such commerce.
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use EDUCATION LLC apart from the mark as shown.
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /CathyAKodroff/     Date: 03/06/2019
`Signatory's Name: Cathy A. Kodroff
`Signatory's Position: Attorney of Record
`
`Signatory's Phone Number: 215-540-9210
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney
`or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent
`not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is
`concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
`representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's
`appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`The applicant is not filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 87687905
`Internet Transmission Date: Wed Mar 06 18:19:14 EST 2019
`TEAS Stamp: USPTO/RFR-XX.XXX.X.XXX-20190306181914166
`313-87687905-6208488649861d562bd2ac4957c
`ac3fc13e36b90aa909f35eeae4d6221f40-N/A-N
`/A-20190306175844424839
`
`        
`

`

`9:9 APHA
`
`AMERICAN PUBLIC HEALTH ASSOCIATION
`For science, For action. Farhealth.
`
`Community Health Workers
`The Community Health Workers Section seeks to promote the community's voice within
`the health care system through development of the role of Community Health Workers
`(including Promotores de Salud, Community Health Representatives, Community Health
`Advisors, and related titles) and provides a forum to share resources and strategies.
`
`Become a Member
`
`Donate New
`
`>
`
`>
`
`>
`
`Newsletter Sign Up
`
`The CHW Section has adopted the following definition of a community health worker: A
`community health worker is a frontline public health worker who is a trusted member of
`and/or has an unusually close understanding of the community served.This trusting
`relationship enables the worker to serve as a liaison/link/intermediary between
`health/social services and the community to facilitate access to services and improve the
`quality and cultural competence of service delivery.
`
`A community health worker also builds individual and community capacity by increasing
`health knowledge and self-sufficiency through a range of activities such as outreach,
`community education, informal counseling, social support and advocacy.
`
`Please join us on Facebook and Twitter!
`
`

`

`2019 © American Public HealthAssociation
`
`htlps://www.apha.org/apha-communities)member-sections/community—health—workers
`
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`
`