To:
`
`Subject:
`
`Sent:
`Sent As:
`
`Mark D. Alleman(TrademarkDocket@allemanhall.com)
`U.S. Trademark Application Serial No. 97415406 - WELLSCRIPT - -
`OHS22401
`March 05, 2024 08:29:24 PM EST
`tmng.notices@uspto.gov
`
`Attachments
`
`screencapture-uvahealth-com-services-home-healthcare-home-infusion-therapy-
`17096009527241
`screencapture-uvahealth-com-services-17096010290401
`screencapture-www-advocatehealth-com-health-services-advocate-health-at-home-home-
`infusion-services-17096014012791
`screencapture-www-advocatehealth-com-health-services-primary-care-17096014149571
`screencapture-optioncarehealth-com-patients-infusion-therapy-care-17096015411431
`screencapture-optioncarehealth-com-patients-infusion-therapy-neurological-disorders-
`17096016286501
`screencapture-optioncarehealth-com-patients-infusion-therapy-17096016850011
`2016769
`2404956
`7183497
`4438764
`4630967
`5030241
`5909195
`6411669
`6521433
`7146514
`screencapture-www-sentara-com-medicalservices-home-care-services-ambulatory-infusion-
`suite-17096878261951
`screencapture-velocityuc-com-locations-port-potomac-17096879265661
`screencapture-www-pennmedicine-org-for-patients-and-visitors-find-a-program-or-service-
`penn-medicine-at-home-home-infusion-therapy-17096880082531
`screencapture-www-pennmedicine-org-for-patients-and-visitors-find-a-program-or-service-
`ear-nose-and-throat-17096880372301
`screencapture-www-parkview-com-medical-services-home-health-hospice-home-infusion-
`17096882126781
`screencapture-www-parkview-com-medical-services-primary-care-17096882721061
`screencapture-www-ynhhs-org-patient-care-pharmacy-home-infusion-17096883985641
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No.  97415406
`
`Mark:   WELLSCRIPT
`
`Correspondence Address:  
`
`

`

`Mark D. Alleman
`ALLEMAN HALL & TUTTLE LLP
`900 SW 5TH AVE.
`SUITE 2300
`PORTLAND OR 97204
`United States
`
`Applicant:   OWENS HEALTHCARE - SPECIALTY PHARMACY, INC.
`
`Reference/Docket No.  OHS22401
`
`Correspondence Email Address:   TrademarkDocket@allemanhall.com
`
`
`
`
`
`
`REQUEST FOR RECONSIDERATION AFTER FINAL ACTION DENIED
`
`Issue date:   March 5, 2024
`
`Applicant’s request for reconsideration is denied.   See 37 C.F.R. §2.63(b)(3).  The trademark
`examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1)
`raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence
`with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or
`shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`Accordingly, the following refusal made final in the Office action dated August 16, 2023 are
`maintained and continued: 
`
`
`•
`
`Section 2(d) Refusal – Likelihood of Confusion
`
`
`See TMEP §§715.03(a)(ii)(B), 715.04(a).  
`
`Further to the Final Office Action dated August 16, 2023, the trademark examining attorney confirms
`that the Section 2(d) Refusal - Likelihood of Confusion is maintained and continued.   Trademark Act
`Section 2(d), 15 U.S.C. §1052(d);  see TMEP §§1207.01  et seq.  Applicant submitted a Request for
`Reconsideration, dated March 3, 2022.  The trademark examining attorney carefully considered
`applicant's arguments set forth in the Request for Reconsideration but finds such arguments
`unpersuasive, for the reasons explained below. Additionally, the trademark examining attorney
`acknowledges the deletion "home health care services" from the International Class 044 identification,
`as set forth in the Request for Reconsideration.  However, such deletion does not obviate the Section
`2(d) Refusal.  Therefore, this refusal is maintained and continued.
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered
`mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source
`of the goods and/or services of the parties.   See 15 U.S.C. §1052(d).  Likelihood of confusion is
`determined on a case-by-case basis by applying the factors set forth in  In re E. I. du Pont de Nemours
`& Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the "du Pont factors").  
`In re
`i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of
`record related to those factors need be considered; however, "not all of the  DuPont factors are relevant
`
`

`

`or of similar weight in every case."   In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160,
`1162 (Fed. Cir. 2019) (quoting  In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533
`(Fed. Cir. 1997)).
`
`Although not all  du Pont factors may be relevant, there are generally two key considerations in any
`likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the
`relatedness of the compared goods and/or services.   See  In re i.am.symbolic, llc, 866 F.3d at 1322, 123
`USPQ2d at 1747 (qng  Herbko Int'l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d
`1375, 1380 (Fed. Cir. 2002));  Federated Foods, Inc. v. Fort Howard Paper Co.,  544 F.2d 1098, 1103,
`192 USPQ 24, 29 (C.C.P.A. 1976) ("The fundamental inquiry mandated by [Section] 2(d) goes to the
`cumulative effect of differences in the essential characteristics of the goods [or services] and
`differences in the marks."); TMEP §1207.01. 
`
`Applicant ague that there are numerous registrations with the terms WELL or WELLNESS on the
`principal register for similar services. Registrant also argues that there are numerous registrations
`containing the term SCRIPT for similar services.  Here, the third-party registrations listed contain either
`the term WELL or SCRIPT but not both terms for similar services. 
`
`Applicant further argues that the terms WELL, WELLNESS, and SCRIPT have little trademark
`significance, but rather the "SSS" in registrant's mark is the distinguishing feature between the marks.
`This argument is not persuasive. Specifically,  applicant’s mark,  WELLSCRIPT, is confusingly similar
`to the registered mark,  WELLNESSSCRIPT because they are both comprised in significant part of the
`terms WELL and SCRIPT. The difference between them is slight and does not overcome a likelihood
`of confusion. Specifically, although the applicant deletes the suffix "NESS" from the term WELL in its
`mark,  the suffix  "NESS" in the registrant's mark does not alter the meaning because the respective
`marks share the same connotation and overall commercial impression. Specifically, the term WELL
`means "of or characterized by the maintenance of good health practices" and the suffix NESS is used
`with the identical term WELL in the marks to describe "the condition of good physical and mental
`health, especially when actively maintained by proper diet, exercise, and avoidance of risky behavior".
`See previously attached definitions of WELL, WELLNESS, and the suffix NESS.  As applied to the
`health care and medical services, both marks convey the idea that the services will provide or result in
`good health.  Marks may be confusingly similar in appearance where similar terms or phrases or similar
`parts of terms or phrases appear in the compared marks and create a similar overall commercial
`impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91
`(TTAB 1986),  aff’d sub nom.  Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n,
`811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (holding COMMCASH and
`COMMUNICASH confusingly similar);  In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985)
`(holding CONFIRM and CONFIRMCELLS confusingly similar);  In re Pellerin Milnor Corp., 221
`USPQ 558, 560 (TTAB 1983) (holding MILTRON and MILLTRONICS confusingly similar); TMEP
`§1207.01(b)(ii)-(iii).
`
`Consumers would not consider the "SSS" in the registrant's mark as the dominant term in the mark.
`Marks do not need to be identical in order to be refused registration based on a likelihood of 
`confusion.   Instead,  marks are compared in their entireties for similarities in appearance, sound,
`connotation, and commercial impression.   Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
`F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting  Palm Bay Imps., Inc. v. Veuve
`Clicquot Ponsardin Maison Fondee En  1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir.
`2005)); TMEP §1207.01(b)-(b)(v).  "Similarity in any one of these elements may be sufficient to find
`the marks confusingly similar."   In re Inn at St. John's, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018)
`
`

`

`(citing  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff'd per curiam , 777 F. App'x 516, 2019
`BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).  In the present case, as previously discussed, the
`applied-for mark is "WELLSCRIPT" and the registered mark is "WELLNESSSCRIPT".  The literal
`elements of the cited marks and the applied-for mark are similar in sound and as discussed, the terms
`WELL and WELLNESS have similar meanings and connotations.  The applied-for mark only differs
`from the registered mark by the suffix "NESS". The dominant portions of the marks, WELL and
`SCRIPT, have a similar appearance, sound, and connotation.  The terms WELL and WELLNESS have
`similar connotations and convey similar ideas. Combined with the term SCRIPT, the applicant's and
`registrant's mark are similar in appearance, sound, meaning, and commercial impression, despite the
`fact that they are not identical.  Thus, consumers encountering the marks in relation to the services
`would reasonably believe that the services emanate from the same common source.
`
`Applicant further argues that the examining attorney did not offer reasoning or evidence to support the
`conclusion that the "medical services" in registrant's mark conflict with the infusion services in the
`applicant's mark and states that the registrant's medical services be taken in context with the other
`services
`in
`the
`registrant's
`identification. However,
`this argument
`is not persuasive.
`Specifically,  ddetermining likelihood of confusion is based on the description of the goods and/or
`services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See
`In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re
`i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  
`
`In this case, the registration use broad wording to describe medical services, which presumably
`encompasses all goods and/or services of the type described, including applicant’s more narrow
`"preparation and dispensing of medications in the nature of administration of infusions of
`pharmaceuticals and biologicals for patients in an at home setting and for patients in an ambulatory
`infusion center."   See, e.g., Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *44
`(TTAB 2022); In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt.,
`Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s
`services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018)
`(citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988
`(C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball
`Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
`
`Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or
`classes of purchasers and are “presumed to travel in the same channels of trade to the same class of
`purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
`(quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005
`(Fed. Cir. 2002)); Made in Nature, LLC v. Pharmavite LLC, 2022 USPQ2d 557, at *49.  Thus,
`applicant’s and registrant’s goods and/or services are related.
`
`Further, in addition to the previously attached evidence, the  attached Internet evidence, consisting of
`medical service providers including UVA Health, Advocate Health, Option Care Health, Sentara, Penn
`Medicine, Parkview Health, and Yale New Haven Health establishes that the same entity commonly
`manufactures, produces, or provides the applicant's home infusion and ambulatory infusion services
`and registrant's medical services under the same mark.  Thus, applicant’s and registrant’s services are
`considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92
`USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69,
`1271-72 (TTAB 2009).
`
`
`

`

`In addition, the trademark examining attorney has attached evidence from the USPTO’s XSearch
`database consisting of a number of third-party marks registered for use in connection with the same or
`similar goods and/or services as those of both applicant and registrant in this case.  This evidence
`shows that the services listed therein, namely the applicant's home infusion and ambulatory infusion
`services and registrant's medical services, are of a kind that may emanate from a single source under a
`single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad.
`Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
`1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988));
`TMEP §1207.01(d)(iii).
`
`Based on the foregoing, the Section 2(d) Refusal - Likelihood of Confusion is maintained and
`continued and the applicant's Request for Reconsideration is hereby denied.
`
`If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will
`be notified to resume the appeal.   See TMEP §715.04(a).  
`
`If applicant has not filed an appeal and time remains in the response period for the final Office
`action, applicant has the remainder of that time to (1) file another request for reconsideration that
`complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a
`notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).
`
` . 
`
`Generally, for an RFR denial, your arguments don’t need to be so thorough.  If the applicant has presented any
`new arguments (that aren’t just essentially a re-hash of prior arguments), you could briefly address those.  If
`they’ve presented any new evidence, you can address why it’s not convincing (again, this can be brief).  This is
`also a good time to check your own evidence, and supplement it if you feel there isn’t enough for an appeal
`(particularly if the applicant is arguing about the amount/quality of your evidence). 
`
`You could think of it in terms of “is there anything I need to say that I haven’t already said?”—if so, say that.
` But if not, you can just do a basic recap—“the applicant has presented additional arguments against the refusal. 
`However, as discussed in the previous Office actions, [basic conclusion of the relevant refusal—the applicant’s
`mark is confusingly similar to the registered mark and the goods/services are related, the applicant’s proposed
`mark is merely descriptive, etc.].
`
`
`
`/Mahreen Gillani/
`Mahreen Gillani
`Examining Attorney
`LO109--LAW OFFICE 109
`(571) 272-9704
`Mahreen.Gillani@uspto.gov
`
`
`
`

`

`=am UVAHealth
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`Home Healthcare Infusion Therapy
`Homeinfusion provides a comfortable alternative to receiving
`intravenous(IV) therapyin the hospital. Patients can often return
`to their normal routines and, in some cases, return to work while
`still on homeIV therapy.
`
`Contact Us
`
`
`
`Infusion Nursing Support
`Continuum's homeinfusion service consists of a specialized team of registered nurses.All team members are
`trained in the insertion and managementofIV lines. Nurses provide teaching and support to make sure you
`and your family are comfortable with yourIV therapy at home.
`
`Pharmacy Support
`Weprovide IV therapies, such as antibiotics, pain management and chemotherapy, with easy-to-use infusion
`pumpsandsupplies. We candirectly deliver your IV drugs and supplies to your home. Yourinfusion pharmacist
`worksclosely with your doctor and homecare nurse to make sure your care and treatment goals are met and
`care is coordinated.
`
`Ournutritional support team closely monitors your nutritional needs and can provide necessary products at
`home,such as tube feedings or IV nutrition. The team includes a physician, registered dietician, pharmacist and
`nurse,
`
`Therapy Types
`The most commontherapiesare:
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`Home Healthcare
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`HomeInfusion Therapy
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`Psychiatric Services
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`Makea Gift
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`© Total Parenteral Nutrition (TPN): IV to patients whoare either already malnourished or have the potential for
`developing malnutrition
`© Enteral Nutrition: Delivers nutrients by a tube into the gastrointestinaltract
`* Chemotherapy:IV of chemotherapyagents desired to affect a disease-causing cell or organism
`* Drug Therapy: IV drugs, including antibiotics, antivirals, chelating agents, growth hormonesand synagis and
`colony-stimulating factors
`* Pain Management:IV for narcotics and other drugs designed torelieve pain
`* Hydration Therapy:IV offluids, electrolytes and other additives
`° Catheter Care: Care for the peripheral and centralline catheters in the absenceofall other therapies
`
`HomeInfusion Therapy Services We Offer
`The therapy services weoffer include:
`* Pharmacyservices: Clinical monitoring, managementofthe IV therapy care plan, medicationprofile review,
`coordination of care and mixing and compoundingof drugs
`© Durable medical equipment: lV pumpsand poles, etc.
`* Ancillary medical supplies: Tubing, needles, syringes,etc.
`* Nursing services: Administration of parenteral medications andIV fluids, intravenous and enteral
`hyperalimentation and family instruction
`* Nutrition support team: Monitors your progress andtest results throughoutthe course of treatment
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`Home
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`> Healthservices
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`» Advocate Healthat Home
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`>» Homeinfusion services
`
`< advecaeHeathat
`Home
`
`Hydration therapy
`Infused antibiotics
`
`Infused chemotherapy
`Infused nutrition
`Pain management
`
`Home infusion services
`Infusion therapy, also called intravenous (IV) therapy, is the process of delivering medication
`or other typesoftherapy directly to your bloodstream via a vein.If your doctor has
`recommendedinfusion therapy, getting to a health care facility for infusion services can
`sometimesbedifficult — especially if your condition prevents you from easily leaving your
`home. To help provide you with the therapy you need, Advocate Health at Home provides
`infusion services in the comfort, privacy and convenience of your own home.
`
`Our team
`Advocate Health at Home infusion services are provided by a team of registered
`pharmacists, dieticians and infusion-trained nurses. Wheneverpossible, the same nurse
`whoprovides your home health serviceswill also administer your infusion therapy. With
`this focus on continuity of care, your health care team will better understand your health
`goals and needs,
`
`Our services
`Advocate Health at Home professionals administer a variety of IV therapies including those
`listed below.
`
`* Chemotherapy
`« Pain management medications
`* Parenteral and enteral nutrition
`
`+ Hydration therapy
`
`

`

`Ask your doctorto refer you to Advocate Health at Home.
`Call 800-564-2025 to learn more about our homeinfusion services.
`
`Call 800-862-2201 to learn about homecare and therapies available in Wisconsin through
`Aurora Health at Home.
`
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`BOE Mere LLY
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`For Patients
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`UNDERSTANDING INFUSION THERAPY
`
`IV Infusion Therapy Care
`Option Care Health is the largest independentproviderof infusion therapy servicesin the nation. For
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`UVE 9 Yeals, We Ve UENVETeU CULUNYPEUYe IHUDIUE HeUILGUUnD, HUrsiiy SUPPULL aru Searies5,
`transitional care for patients ofall ages in their homes and at conveniently located infusion suites.
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`Your healthcare provider may prescribe infusion therapyfor you or your loved one as a wayof administering
`medicine, nutrients or specialfluids intravenously(IV) directly into the body. Often times,this is more
`effective than oral treatments.
`
`Option Care Health’s infusion therapies are a safe andeffective alternative to inpatient care, with over 2
`million”! patients annually receiving treatmentin the homeorat an infusion suite.
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`There are numerous benefits of infusion therapy for patients. Option
`Care Health prepares each patient with an experienced, dedicated
`care team comprised ofclinicians and coordination specialists. Learn
`more about how Option Care Health's individualized treatment plans
`reduce hospitalizations and improve overall outcomesof patient
`comfort and health.
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`Benefits of infusion therapy
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`across the country are there to supportyour travels with infusion
`therapy.
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`Infusion Coverage & Costs
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`@ Coverage and costs
`If you have questions about coverageor costsof infusion therapy,
`Option Care Health's Patient Registration team is here to advocate
`for your benefits and advise on the best solution to reduce hospital
`readmissions and developan effective treatmentplan.
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`Ready to get started on your journey to
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`Learn more about Uption Care Health's therapeutic services tor acute and chronic conditions.
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`THERAPEUTIC SERVICES>NEUROLOGICAL DISORDERS
`
`Infusion Therapy in Neurology
`Extending quality of life with innovative infusion therapies for neurological disorders.
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`
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`Managing complex conditions with compassionate care
`
`Clinical excellence
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`Our experienced infusion specialty care teams work to develop a customized care plan alongside on-going
`clinical monitoring to manage the progression of neurological disorders like ALS/Lou Gehrig's disease and
`Duchenne Muscular Dystrophy. This personaliz