IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re Application of: SERVICE MARK APPLICATION
HealthSpan Solutions, LLC PRINCIPAL REGISTER

Serial No: 77/639,315 RESPONSE TO OFFICE ACTION
SUBMITTED: SEPTEMBER 17, 2009
Mark: HEALTHSPAN (and Design)
Attn: Marc J. Leipzig
Filed: December 23, 2008 Law Of?ce 115

I. BACKGROUND

This Response is sent in reply to the Of?ce Action electronically mailed March 17, 2009,

from Examining Attorney Marc J. Leipzig (the “Examiner”) to Kirk A, Damman at the law

of?ces of Lewis, Rice & Fingersh, L.C. This Response is timely ?led. Each of the points raised

by the Examiner in the Of?ce Action Letter are addressed herein.

II. REFUSAL OF REGISTRATION UNDER TRADEMARK ACT SECTION 2(D)

The Examiner has refused to register the mark HEALTHSPAN (and Design) (Ser. No.

77/639,315) (the “Lark? as submitted by HealthSpan Solutions, LLC (the “ pplicant”),

contending that the Mark when used in connection with “nutrition counseling” so resembles the

registered trademarks: (1) HEALTHSPAN COMMUNICATIONS, Reg. NO. 2,000,882, (the

“’882 Mark”) in the name of Raymond V. Haring for “rerecorded audio tapes, Video tapes and

computer disks relating to health, educational books in the ?eld of health, and conducting

educational seminars and training in the ?eld of health”; HEALTHSPAN 2000, Reg. No.

2,689,604, (the “’604 Mark”)in the name of Anti Aging Solutions, LLC. for “nutritional and

metabolic food supplements”; and FLORIDA HEALTHSPAN INSTITUTE, Reg. No,

1557976 01
3,579,951, (the “’951 Mark”) in the name of Thomas R. Schneider et al., for “medical services

featuring age management and wellness medical services” as to be likely to cause confusion, to

cause mistake, or to deceive. As explained herein, Applicant respectfully disagrees that the

marks could create a likelihood of confusion. The ‘882 Mark, ‘604 Mark and ‘951 Mark are

referred to herein collectively as the “Cited Marks.”

The Examiner cited the familiar case of In re E], DuPont de Nemours & C0., 476 F.2d

1357 (C.C.P.A. 1973) as support for his determination of an alleged likelihood of confusion in

this matter. The DuPont case provides factors for determining when a likelihood of confusion

between two marks might be present (the “DuPont factors”). The Examiner concluded that

Applicant’s Mark would likely cause confusion with the Cited Marks alleging that the marks

create the same general impression due to the presence of the similar term HEALTHSPAN and

because the parties’ goods are allegedly similar. Using the DuPont factors as a guide, however,

it is actually evident that the Cited Marks and Applicant’s Mark can peacefully coexist without

causing confusion. As is described in greater detail below, this is primarily because (1) the

similarity of the marks is not dispositive due to the facts that the appearance, sound, and

substantial differences of the elements of the marks creates a distinctive commercial impression

and (2) the relevant goods of the respective marks are distinct and not related.

A. A REVIEW OF THE RELEVANT DUPONT FACTORS SHOWS THAT THERE WOULD BE NO
LIKELIHOOD OF CONFUSION BETWEEN APPLICANT’S MARK AND THE CITED MARKS.

The DuPont case provides factors for determining when a likelihood of confusion

between two marks might be present. The DuPont factors include, but are not limited to: (i) the

similarity of the marks as to appearance, sound, connotation and commercial impression, (ii) the

similarity of the goods, (iii) the similarity of the trade channels, (iv) the class of purchasers of the

products, (v) the fame of the prior mark, (Vi) the number and nature of similar marks in use on
similar goods, and (vii) the variety of goods on which a mark is used. DuPont, 476 F.2d at 1361.

Not all of the DuPont factors may be relevant or of equal weight in a given case.

Further, the test of likelihood of confusion includes consideration of the similarity or

dissimilarity of the marks in their entireties as to appearance, sound, and commercial impression.

In re Hearst Corp, 982 F.2d 493, 494 (Fed. Cir. 1992). In determining whether a likelihood of

confusion exists, “marks . . . must be considered in their entireties . . . .” Tektronix, Inc. v.

Daktronics, Inc., 534 F.2d 915, 916 (C.C.P.A. 1976). In this instance, the Of?ce Action stressed

only the shared component and disregarded the differences. When viewed in their entireties and

in light of the DuPont factors, the marks and the respective goods they are used with are

suf?ciently dissimilar so as to obviate any likelihood of confusion.

I. Applicant’s Mark is Su?iciently Dissimilar in Appearance, Sound, Connotation
and Commercial Impression to the Cited Marks to Avoid any Plausible
Likelihood of Confusion.

In testing for likelihood of confusion, the similarity or dissimilarity of the marks with

regard to appearance, sound, connotation and commercial impression are important

considerations. DuPont, 476 F.2d at 1361. However, similarity of the marks in one respect does

not necessarily mandate a ?nding of likelihood of confusion. In re Lamson Oil Co, 6

U.S.P.Q.2d 1041, 1043 (T.T.A.B. 1987). In determining whether two marks are so similar as to

be likely to cause confusion, courts must consider “the overall impression created by the [Marks]

and the context in which they are found and consider the totality of the factors that could cause

confusion among prospective purchasers.” Streetwise Maps, Inc. v. Vandum, Inc, 48 USPQ2d

1503 (2d Cir. 1998) (citation omitted). In evaluating the similarity between two marks, the

marks must be viewed in their entirety and no feature of a mark should be ignored. In re Hearst

Corp, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992) (?nding that “VARGA GIRL” and “VARGAS”
were suf?ciently different in sound, appearance, connotation and commercial impression to

negate any likelihood of confusion). As a result, likelihood of confusion cannot be predicated

upon dissection of a mark or on only part of a mark. See Franklin Mint Corp. v. Master Mfg.

Co, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and

considered piecemeal; rather, it must be considered as a whole in determining likelihood of

confusion”).

In many cases, courts have found no likelihood of confusion even where an applicant’s

mark is nearly identical to a registered mark for related goods. See, e.g., Astra Pharm. Prod..,

Inc. v. Beckman Instruments, Inc, 718 F.2d 1201, 1209 (lst Cir. 1983) (af?rming the grant of

summary judgment on the ground that there was no likelihood of confusion between the mark

ASTRA used in conjunction with defendant’s blood analyzer machine and plaintiffs local

anesthetic preparation); Vitarroz Corp. v. Borden, Ina, 644 F.2d 960 (2d Cir. 1981) (denying

injunctive relief after ?nding a low likelihood of confusion between BRAVO’S for crackers and

BRAVOS for corn chips); Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d

1373 (Fed. Cir, 1998) (upholding dismissal of opposition by owner of CRISTAL for champagne

to CRYSTAL CREEK for wine solely due to differences between the marks).

As in Roederer, the marks here are also vastly different in appearance. There exist real

and substantial differences between the appearances of Applicant’s Mark and the Cited Marks.

Applicant’s Mark consists only of the singular word HEALTHSPAN with a design element of a

semi-circle over the word HEALTHSPAN while all of the Cited Marks contain the term

“HEALTHSPAN” in a composite format creating a substantially different appearance between

the Cited Marks when and to Applicant’s Mark.
The ‘882 Mark is HEALTHSPAN COMMUNICATIONS (and Design). The ‘882 Mark

not only contains an additional term, “COMMUNICATIONS,” but has a design element as well.

The addition of the design element to the composite mark serves to further distinguish the

appearance of Applicant’s Mark from the ‘882 Mark and makes the ‘882 Mark Visually distinct

from Applicant’s Mark.

The ‘951 Mark is FLORIDA HEALTHSPAN INSTITUTE. The ‘951 Mark buries the

common HEALTHSPAN element between two additional words, “FLORIDA” and

“INSTITUTE” creating a distinctive appearance which greatly differs from that of the

Applicant’s Mark, the singular word HEALTHSPAN. Thus, the ‘951 Mark and Applicant’s

Mark are not similar in appearance.

As with the composite marks above, the composite ‘604 Mark (HEALTHSPAN 2000),

also contains a term not found in Applicant’s Mark, “2000”. Significantly, the visual difference

here is created by the inclusion of a numerical term. This additional numerical element serves to

distinguish the marks Visually.

Likewise in terms of sound, the Cited Marks and Applicant’s Mark have distinct aural

dissimilarities that outweigh any similarity resulting from the marks’ common use of

“HEALTHSPAN” and the marks sound substantially different when said aloud. In W.L. Gore &

Assocs., Inc. v. Johnson & Johnson, 882 F. Supp. 1454 (D. Del. 1995), the court found the marks

“EASY SLIDE” and “GLIDE” were not confusingly similar despite the fact that “slide” and

“glide” rhyme because the mark “EASY SLIDE” has three syllables or pauses and the mark

“GLIDE” has only one syllable or pause. Id. at 1458 (?nding “EASY SLIDE” is dissimilar from

“GLIDE” in appearance and sound).
Here, the differences between the sounds of Applicant’s Mark and the Cited Marks are

just as substantial. Applicant’s Mark, HEALTHSPAN, contains two syllables whereas the ‘882

Mark and the ‘95 1 Mark contains seven contains syllables or pauses and the ‘604 Mark contains

?ve syllables or pauses. In addition, with regard to the ‘951 Mark, the common element is

sandwiched between two other words and it is not the ?rst word of the mark. Thus, not only are

the marks distinct visually, but they are distinct aurally as well. See, e.g., In re Great Lakes

Canning, Inc, 227 USPQ 483, 484 (TTAB 1985) (“the sound of a mark plays a role in the

commercial impression created by the mark, in the minds of purchasers, even when the mark is

presented Visually. . . .”).

Importantly, in terms of connotation, the Cited Marks and Applicant’s Mark are

substantially different. The ‘882 Mark is HEALTHSPAN COMMUNICATIONS. The ‘882

Mark suggests that the relevant goods are products which will convey health related information

to consumers. The ‘951 Mark, FLORIDA HEALTHSPAN INSTITUTE, suggests to consumers

that it is a location where consumers may go to get medical services. Applicant’s Mark creates

no such connotations. Applicant’s Mark implies to consumers that the relevant goods and

services are health related, but nothing more. This alone is not enough to create a likelihood of

confusion between Applicant’s Mark and the Cited Marks.

As shown above, when viewed in their entirety, and recognizing the dominant feature of

the marks, Applicant’s Mark and the Cited Marks are markedly different in appearance, sound

and connotation such that there will be no confusion between the marks.

2. The Goods Provided by the Applicant and the Registrants Distinguish the
Marks.

In support of his contention that there is a likelihood of confusion between the Cited

Marks and Applicant’s Mark, the Examiner alleges that the parties provide related services
claiming that the ‘882 Mark, ‘951 Mark and Applicant all provide “health and wellness related

services” while the ‘604 Mark and Applicant provide services which “could” originate from a

single source. Closer inspection of the respective services makes it clear that Applicant’s

services and those of the Cited Marks are completely unrelated and in no way overlap or travel in

the same channels of marketing and distribution and that the services would not be encountered

by consumers in similar circumstances.

In order for goods or services to be “related,” they must be related in the minds of the

consuming public. Herbko, Inten, Inc. v. Kappa Books, Inc, 308 F.3d 1156, 64 USPQ2d 1375

(Fed. Cir. 2002). Services are related when consumers are likely to believe that such services

come from the same source, or are somehow connected with or sponsored by a common

company. American Ass ’n for Advancement ofScience v. Hearst Corp” 498 F. Supp. 244, 206

USPQ 605 (D.D.C. 1980). The issue of relatedness is not one of semantics but of consumer

expectations. That fact that the services at issue may be offered in the same “?eld” or “industry”

does not itself provide a basis for regarding them as related. See, e. g., Lang v. Retirement Living

Publishing Ca, Inc., 949 F.2d 576, 582 (2d Cir. 1991) (Where plaintiff’ s magazine catered to the

interests of older adults and defendant’s publishing house marketed its book and tapes to all

people who seek speci?cally to enhance their charisma, the court found that the products neither

compete nor serve the same purpose. “Although both [defendant’s] publishing house and

[plaintiff‘s] magazine are in the ?eld of publishing, this does not render them proximate”);

McGraw-Hill, Inc. v. Comstock Partners, Inc, 743 F. Supp. 1029 , 1034 (S.D.N.Y. 1990)

(“while [the parties] furnish products related to the broad ?eld of finance, [they] are as

completely unrelated as night and day”); Electronic Data Systems Corp. v. EDSA Micro Corp,

23 USPQ2d 1460, 1463 (T.T.A.B. 1992) (N0 likelihood of confusion for goods marketed under
the similar marks EDS and EDSA for computer programs for electrical distribution system

analysis and design and computer programming services including the design, implementation

and management of electronic data processing program respectively. “[T]he issue of whether or

not two products are related does not revolve around the question of whether a term can be used

that describes them both, or whether both can be classi?ed under the same general category”);

Heartsprmgs, Inc. v. Heartsprz’ng, Inc, 143 F.3d 550, 558 (10th Cir. 1998) (“Beyond . . . the fact

the parties conduct business within the very broad category of products for children, there is little

overlap between the parties’ products, services or marketing strategies”).

Further, common experience shows that even marks that are identical, which is not the

case here, can coexist on goods and services that are not related. For example, the following

marks are all well—known, yet exist without any confusion:

0 UNITED airlines and UNITED van lines;

0 EAGLE shirts, EAGLE pencils, EAGLE pretzels, EAGLE brand condensed milk;

0 CHAMPION spark plugs and CHAMPION sports wear;

0 DELTA airlines, DELTA dental insurance and DELTA faucets;

0 ACE retail hardware stores and ACE bandages;

o TROPICANA Las Vegas hotel and TROPICANA orange juice; and

o The DOW stock market index and DOW chemical company

Just as the aforementioned identical marks can coexists on non—related goods, so too may

Applicant’s Mark and the Cited Marks. As shown below, Applicant’s services are dramatically

different from those of the Cited Marks. Accordingly, there is no overlap between the services

and thus no likelihood of confusion between Applicant’s Mark and the Cited Marks.

21. Applicant’s services are not related to those of the ‘882 Mark.
The services provided under Applicant’s Mark are in no way related, similar or

competitive to the services provided under the ‘882 Mark, and thus Applicant’s Mark is not

likely to be confused with the ‘882 Mark. Applicant’s Mark is used with “nutrition counseling.”

In contrast, the services provided under the ‘882 Mark are “rerecorded audio tapes, Video tapes

and computer disks relating to health, educational books in the ?eld of health, and conducting

educational seminars and training in the ?eld of health.”

The Examiner claims these goods and services are related because the registrant and

Applicant both provide “health and wellness related services.” Even if this is accurate, it still

does not show that the goods and services of the ‘882 Mark are related to Applicant’s services.

The ‘882 Mark encompasses a number of goods such as books and tapes as well as some training

services. These goods and services are much different than Applicant’s nutrition counseling

service. The registrant’s goods and services are focused on one—way communication to a

consumers where there may be no interaction between the registrant and the consumer.

On the other hand, Applicant’s services are related to counseling, which necessarily

means an interaction between a consumer and Applicant. Moreover, Applicant’s services are

focused on the narrow area of nutrition. To ?nd likelihood of confusion merely because both the

Applicant and the registrant of the ‘822 Mark provide what might be generally characterized as

“health and wellness services” is to apply too broad a brush. Applicant has limited the

description of its services to apply to the speci?c nutrition counseling submarket in which it

utilizes its mark. In no way do the goods and services of the ‘882 application encompass, or

relate to, nutrition counseling or any type of counseling. The Examiner has presented no

evidence that the goods and services of the ‘882 Mark may also include the nutritional

counseling or that consumers would believe the goods and services to be related. Thus, the
services provided by Applicant are not related the goods and services in the ‘882 Mark and there

is no possibility of confusion between Applicant’s Mark and the ‘882 Mark.

b. Applicant’s services are not related to those of the ‘951 Mark.

Similar to the ‘882 Mark, the services in the ‘951 Mark are also not related, similar or

competitive to the services provided under Applicant’s Mark. The services provided under the

‘951 Mark are “medical services featuring age management and wellness medical services.” The

services of the ‘951 Mark may be related to health, but they are speci?cally limited to age

management and wellness medical services.

The Examiner premises his contention of a likelihood of confusion on the claim that the

medical services of the ‘951 Mark are in the broad ?eld of health and wellness services. Simply

because the Applicant and registrant might be classi?ed as engaged in the general ?eld of

“health and wellness,” this is not suf?cient to demonstrate that the respective services are related.

The services offered under the ‘951 Mark are narrowly focused on age management and wellness

and have no relationship to Applicant’s nutritional counseling services. The FLORIDA

HEALTHSPAN TNSTITUTE’S services in no way relate to nutritional counseling and the

Examiner has presented no evidence that consumers would view the services as related.

Accordingly, the services provided by Applicant are not related the services in the ‘951 Mark

and there is no possibility of confusion between Applicant’s Mark and the ‘951 Mark.

c. Applicant’s services are not related to those of the ‘604 Mark.

Similar to the ‘882 Mark and ‘951 Mark, the services in the ‘604 Mark are also not

related, similar or competitive to the services provided under Applicant’s Mark. The services

10
provided under the ‘604 Mark are “nutritional and metabolic food supplements.” The services of

the ‘604 Mark may be related to health, but they are expressly limited to the provision of

supplements.

The Examiner claim of a likelihood of confusion is based on his allegation that the goods

of the ‘604 Mark and Applicant’s Mark may emanate from a single source. The Examiner

presents some evidence which purports to show that consumers may regard the services as

coming from a single entity. However, none of this evidence shows companies that provide the

same type of services that are offered under the ‘604 Mark and Applicant’s Mark. Thus, services

of Applicant’s Mark and the ‘604 Mark may coexists without any possibility of likelihood of

confusion.

3. The Remaining DuPont Factors do not Support a Finding of Likelihood of
Confusion.
Finally, the remaining DuPont factors con?rm that there is no likelihood of confusion

between the marks. Indeed, there has been no actual confusion between the Applicant’s Mark

and the Cited Marks, Applicant has no logical intent or motive to have Applicant’s Mark

confused with the Cited Marks, and there is no evidence that the Cited Marks are particularly

strong. In addition, the channels of trade in this case are different and distinct.

Moreover, the fact that the Cited Marks all contain the word HEALTHSPAN and are

related to health, yet coexist on the Principal Register further supports a ?nding that Applicant’s

Mark and the Cited Marks are not confusingly similar.

III. CONCLUSION

For the reasons provided herein, the Applicant respectfully requests that the PTO approve

its application to register the mark HEALTHSPAN (and Design) and permit Applicant’s Mark to

be published for opposition. In the event that the PTO has any further questions or concerns

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regarding Applicant’s Mark or the subject matter addressed herein, the Applicant requests that

the PTO contact its attorney, Kirk A. Damman (314/444-7783) rather than to issue a ?nal

r’ej ection.

Respectfully submitted,

,, ,a.
LEWIS, RICE & FINGERSH, L.C.

/
By
Kirk A. Damman
500 North Broadway, Suite 2000
St. Louis, MO 63102-2147
Telephone: 314/444—1366
Facsimile: 314/612-1396

Attorneys for Applicant
HealthSpan Solutions, LLC

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