From: Nguyen, Nicole

Sent: 12/14/2016 3:54:22 PM

To: TTAB EFiling

CC:

Subject: U.S. TRADEMARK APPLICATION NO. 86757066 - ION HEALING - 709800.3666 - Request for Reconsideration Denied - Return to TTAB

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Attachment Information:

Count: 16

Files: net-health-1.jpg, net-health-2.jpg, wound-wiz-1.jpg, wound-wiz-2.jpg, wound-rounds-1.jpg, wound-right-1.jpg, wound-right-2.jpg, wound-matrix-1.jpg, wound-matrix-2.jpg, wound-matrix-3.jpg, wound-matrix-4.jpg, iheal-1.jpg, iheal-2.jpg, wound-zoom-1.jpg, wound-zoom-2.jpg, 86757066.doc

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO) OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 86757066

MARK: ION HEALING

*86757066* CORRESPONDENT ADDRESS: PAMELA B HUFF

DYKEMA GOSSETT PLLC

112 E PECAN ST STE 1800

SAN ANTONIO, TX 78205-1521

GENERAL TRADEMARK INFORMATION:

http://www.uspto.gov/trademarks/index.jsp

VIEW YOUR APPLICATION FILE

APPLICANT: KCI LICENSING, INC.

CORRESPONDENT’S REFERENCE/DOCKET NO:

709800.3666

CORRESPONDENT E-MAIL ADDRESS:

ipdocket@dykema.com

REQUEST FOR RECONSIDERATION DENIED

ISSUE/MAILING DATE: 12/14/2016

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B), 715.04(a). The following refusal made final in the Office action dated May 19, 2016 are maintained and continue to be final: Section 2(d) refusal for likelihood of confusion. See TMEP §§715.03(a)(ii)(B), 715.04(a).

In the present case, applicant’s request has not resolved all the outstanding issue, nor does it raise a new issue or provide any new or compelling evidence with regard to the outstanding issue in the final Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new light on the issues. Accordingly, the request is denied.

APPLICANT’S ARGUMENTS

First, applicant argues that the mark is diluted due to widespread third-party usage of the mark.

Applicant has submitted a number of printed or electronic copies of third-party registrations for marks containing the wording “ION” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. These registrations appear to be for goods and/or services that are predominantly different from or unrelated to those identified in applicant’s application.

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).

However, many of the submitted registrations feature goods, evidence comprising third-party registrations for similar marks with different or unrelated goods and services, as in the present case, is of limited probative value in determining the strength of a mark. See Kay Chems., Inc. v. Kelite Chems. Corp., 464 F.2d 1040, 1042, 175 USPQ 99, 101 (C.C.P.A. 1972); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009). Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording “ION” is weak or diluted for the relevant goods.

For example, only one of the registrations, “INTEGRATED OPERATIONS NUCLEUS - ION” (Reg. No. 1928888) listed on the first three pages of example registrations with the wording “ION” contains any software in the identification of goods and services, and in that case, the software in question does not have any direct, or indirect, relationship to wound care or health information (goods identified, in part as, “computer software for use in the electronically linking of devices that store, playback and otherwise process visual, aural and other data”).

The vast majority of the referenced third-party registrations are for wholly unrelated goods; a representative sample:

• “ION” Reg. No. 2760298 for “dandruff shampoo” in Class 5 • “ION” and Design, Reg. No. 2927192 for “DIGITAL CAMERAS, DVD PLAYERS” in Class 9 • “ION”, Reg. No. 3828674 for “ENGINEERING AND CONSULTING SERVICES, NAMELY, GEOPHYSICAL

CONSULTING, SEISMIC SURVEY DESIGN AND PLANNING, AND ILLUMINATION STUDIES; AND SEISMIC SIGNAL PROCESSING AND INTERPRETATION SERVICES, NAMELY, COMPUTER PROCESSING OF GEOPHYSICAL DATA” in Class 42

• “ION”, Reg. No. 3995474 for “Downloadable electronic publications in the field of oncology, namely, periodical magazines and newsletters featuring articles about cancer treatments, and featuring business and industry news of interest in the operation of oncology practices” in Class 9, “Publications in the field of oncology, namely, periodical magazines and newsletters in print form featuring articles about cancer treatments, and featuring business and industry news of interest in the operation of oncology practices” in Class 16, “Healthcare cost containment services in the field of oncology, namely, providing group purchasing of pharmaceuticals and chemotherapeutics for community-based oncologists and oncology practices; consultation services in the field of reimbursement for medical services rendered” in Class 35, and “Educational services in the field of oncology, namely, providing web-based and live classes, seminars and workshops, to healthcare providers; non-downloadable electronic publications in the field of oncology, namely, periodical magazines and newsletters featuring articles about cancer treatments, and featuring business and industry news of interest in the operation of oncology practices; and educational services, namely, providing online and live tutorial sessions in the field of patient care and office practices” in Class 42

• “ION”, Reg. No. 4286452 for “Telecommunications equipment, namely, transmitters, receivers, filters, attenuators, controllers, connectors and accessories, namely, jumpers and bias-T power and signal inserters and patch panels and switches for transporting signals, namely, radio frequency and intermediate frequency and optical signals and base band signals regardless of modulation over various media or transportation methods, namely, single and multi-mode optical fiber cables, coaxial cables, twisted pair cables, power lines, multi-pair copper cables, radio frequency links and microwave links and free space optics links” in Class 9

• “ION” Reg. No. 4510418 for “Sunglasses, spectacles, eyeglasses and cases therefor” in Class 9

Further, applicant attaches a number of applications in support of the argument that “ION” is diluted. This is unpersuasive. Third-party applications are “evidence only that the application was filed on a certain date; it is not evidence of use of the mark.” In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009) (quoting In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002)); TBMP §1208.02; TMEP §710.03.

In view of the above, the third-party registrations and applications submitted by applicant are unpersuasive and are insufficient to establish that the wording “ION” is weak or diluted for the relevant goods and services.

Applicant also argues the services are dissimilar because applicant’s goods and services focus on “wound care management” and are used by a “physician to enhance wound care services to the patient,” while the registrant’s services are for the storage of general medical information. This is unpersuasive.

Absent restrictions in an application and/or registration, the identified goods and/or services 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

As discussed in the previous Office actions, the identification in the registration contains the wording “Application service provider (ASP) featuring software for use in facilitating health information exchange by originating, collecting, organizing, storing, analyzing and communicating health information.” There are no limitations or restrictions as to the type of “health information” that can be communicated through the registrant’s software services.

Further, companies that provide software and services that provide information about wound care commonly also provide information about wound care and software may provide both applications. Please see the attached Internet evidence:

http://www.nethealth.com/products/wound-care/woundexpert-software-wound-care-ehr/ (showing electronic health records software providing wound care information)

https://www.woundemr.com/ (showing electronic medical records software that offers wound care information)

http://www.woundrounds.com/what-is-woundrounds/#managewounds (showing software that allows users to track patient information and provides information about wound care)

http://www.woundrightapp.com/woundright.html (showing software that allows users to track patient information and share patient information in the field of wound care)

http://www.woundmatrix.com/woundmatrix.aspx (showing software that allows users to track patient information and share patient information in the field of wound care)

http://www.healogics.com/i-heal (showing software that allows users to track patient information and share patient information in the field of wound care)

http://woundzoom.com/analysis-software/ (showing software that allows users to track patient information and share patient information in the field of wound care)

Therefore, software for providing “downloadable software in the nature of a mobile application for providing healthcare professionals with medical, health, and wellness information related to the provision of wound care services to patients” is often offered with software for collecting “originating, collecting, organizing, storing, analyzing and communicating health information.”

This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Therefore, applicant’s and registrant’s goods and/or 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).

Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).

Therefore, applicant’s arguments against the Section 2(d) refusal are unpersuasive, and the request for reconsideration is denied.

RESPONSE GUIDELINES

If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).

If no appeal has been filed and time remains in the six-month response period to the final Office action, applicant has the remainder of the response period to (1) comply with and/or overcome 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); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).

/Nicole Nguyen/

Examining Attorney

Law Office 107

(571) 272-2815

nicole.nguyen@uspto.gov