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`IN THE UNITED STAT s PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRAD MARK TRIAL AND APPEAL BOARD
`
`DOCUMENT PUBLISHING GROUP,
`
`C.,
`
`doing business as HEALTHWARE SYSTEMS,
`
`Petitioner,
`
`V.
`
`ANTEK, INC.,
`
`Registrant.
`
`Hummumummmluummmmmnu
`
`03-29-2004
`US. Patent & TMOfclTM Mail Rcpt 0t_ #73
`
`: Cancellation No. 92042437
`
`PETITIONER'S MOTION FQR SUSPENSION OF PROCEEDINGS
`
`Petitioner, Document Publishing Group, Inc., pursuant to Trademark Rule 2.117(a),
`
`respectfully requests that the cancellation proceedings be suspended in full pending the final
`
`determination of the civil action in which the parties to the cancellation action are now engaged:
`
`Document Publishing Group, Inc., dba Health Ware Systems v. Antek, Inc., U.S.D.C. for the
`
`Northern District of Illinois, Eastern Division, Civil Action No. 04C 2194.
`
`Petitioner filed its civil action against Registrant on March 24, 2004 alleging claims for federal
`
`unfair competition, cancellation of the federal registration, and Illinois deceptive practices. A true and
`
`correct copy of Petitioner's Complaint is attached as Exhibit A.
`
`Many of the issues raised in the complaint, and which the district court must decide, are issues
`
`that are relevant to the determination of cancellation of U.S. Trademark Registration No. 2,564,447.
`
`For example, the district court will need to resolve issues of priority and likelihood of confusion. These
`
`are the same issues that the Board must resolve in this cancellation proceeding. However, the Board is
`
`without authority to decide issues of trademark infringement and unfair competition, which may be
`
`

`
`r
`
`\ -
`'
`
`Cancellation No. 92042437
`
`Petition to Cancel
`
`Registration No. 2,564,447 for the mark
`ANTEK HEALTHWARE
`
`decided by the Federal court. "To the ext nt that a civil action in a Federal district court involves issues
`
`in common with those in a proceeding be ore the Board, the decision of the Federal district court is
`
`binding upon the Board, while the decisio of the Board is not binding upon the court. Ordinarily, the
`
`Board will suspend proceedings in the cas before it if the final determination of the other proceeding
`
`will have a bearing on the issues before th Board." TBMP §5l0.02(a). That is the case here.
`
`WHEREFORE, Petitioner, Docume t Publishing Group, Inc., requests that its Motion for
`
`Suspension of Proceedings be granted and t at the Cancellation proceedings be suspended in full until
`
`final determination of the civil action.
`
`espectfully submitted,
`
`OCUMENT PUBLISHING GROUP, INC.,
`
`ba Hea1thWare Systems
`
`Date: March 25, 2004
`
`B
`
`AmeM.O1son
`
`Kathryn E. Garipay
`
`OLSON & HIERL, LTD.
`20 North Wacker Drive, 36”‘ Floor
`
`Chicago, Illinois 60606
`
`(312) 580-1180
`
`Attorneys for Petitioner
`
`

`
`:1
`
`‘I!
`
`Cancellation No. 92042437
`
`Petition to Cancel
`
`Registration No. 2,564,447 for the mark
`ANTEK HEALTHWARE
`
`CERTIF CATE OF MAILING
`
`I hereby certify that the foregoing PETITIONER'S MOTION TO SUSPEND
`PROCEEDINGS with attached copy of civil complaint are being deposited with the United States
`
`Postal Service on the date shown below w th sufficient postage prepaid as First Class Mail in an
`envelope addressed to: Box TTAB, No Fe, Commissioner for Trademarks, 2900 Crystal Drive,
`Arlington, Virginia 22202-3514, on this 2 ‘“ day of March, 2004.
`
`Kathryn E. Garipay i
`
`i
`
`CERTIFIC * TE OF SERVICE
`
`I hereby certify that a copy of the fore oing PETITIONER'S MOTION TO SUSPEND
`PROCEEDINGS with attached copy of civ l complaint was served by mailing a copy of the same
`by First Class Mail, postage prepaid, to: Michel D. Oliver, Esq., Elizabeth S. McClure, Esq., BOWIE
`& JENSEN, LLC, 29 West Susquehanna Ave ue, Suite 600, Towson, Maryland 21240, on this 25”‘
`day of March, 2004.
`
`'59’
`
`7C0 M
`
`Kathryn E. I aripay
`
`

`
`
`
`IN THE UNI ED STATES DISTRICT COURT
`
`FOR THE NO THEN DISTRICT OF ILLINO
`
`E STERN DIVISION
`
`E
`9%‘?
`
`..,g
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`
`DOCUMENT PUBLISHING GROUP, INC,
`
`dba HEALTHWARE SYSTEMS,
`
`Plaintiff,
`
`v.
`
`ANTEK, lNC.,
`
`Defendant.
`
`C MPLAINT
`
`03-29-2004
`U.S. Patent & TMOfclTM Mail Rcpt Dt. #78
`
`Plaintiff, Document Publishing Gro p, Inc., dba Hea1thWare Systems, for its complaint against
`
`Defendant, Antek, Inc., alleges as follows:
`
`JURISDIC ION AND VENUE
`
`1.
`
`This action for trademark infri gement and unfair competition arises under the Lanham
`
`Act (15 U.S.C. §1051, et seq.) and under state law, which related claims arise out of the same
`
`operative facts.
`
`2.
`
`This court has jurisdiction pursu tto 15 USC §1121, 28 USC §1331,
`
`28 USC §1338 and 28 USC §1367.
`
`3.
`
`Venue is proper in the Northern
`
`istfict of Illinois, Eastern Division under
`
`28 USC §1391 because, inter alia, Plaintiff was
`
`d is being damaged in this District and Defendant
`
`does business in this District.
`
`EXHIBIT g
`
`A
`
`

`
`THE PARTIES
`
`4.
`
`Plaintiff, Document Publ shing Group, Inc., doing business as HealthWare Systems, is
`
`an Illinois corporation having an address of 1710 Todd Farm Drive, Elgin, Illinois 60132.
`
`5.
`
`Defendant, Antek, Inc., is : Maryland corporation having an address of 10 Franklin
`
`Boulevard, Reisterstown, Maryland 2113i»
`
`6.
`
`This Court has personal j
`
`sdiction over Defendant inter alia pursuant to 735 ILCS
`
`5/2-209 in that Defendant has committed a tortious act in this district which constitutes the subject
`
`matter of this action, has transacted busines within the State of Illinois, and is doing business in Illinois.
`
`FACTU A BACKGROUND
`
`7.
`
`Plaintiff is a developer and p ovider of software products and solutions for automating
`
`office administration in the health care indus
`
`. For example, Plaintiff develops and sells computer
`
`software products for use in patient registrati n, management of patient files and information, and for
`
`patient billing and claims processing.
`
`8.
`
`Plaintiff, through its predecessu» in interest, has for many years and before 2000,
`
`promoted, offered, sold and rendered in commrce and is still offering for sale, selling and rendering in
`
`commerce software products, and computer co sulting and computer programming services to others
`
`under the trademark, service mark and trade n e HEALTHWARE SYSTEMS.
`
`9.
`
`Plaintiff is the owner by assignmnt of the mark HEALTHWARE SYSTEMS.
`
`10.
`
`Plaintiff, through its predecessor n interest, has been using the HEALTHWARE
`
`SYSTEMS mark and trade name since at least as early as June 1, 1998.
`
`11.
`
`Plaintiff has continuously used the HEALTHWARE SYSTEMS mark in commerce to
`
`-2-
`
`

`
`identify and distinguish its goods and se
`
`ices from the goods and services of others.
`
`12.
`
`Plaintiff has expended t'
`
`e, money, effort and resources in advertising and promoting
`
`throughout the United States its compute software products, and computer consulting and computer
`
`programming services under the HEALT 1 ARE SYSTEMS mark and name.
`
`13.
`
`The mark HEALTHWARE SYSTEMS is distinctive of Plaintiffs computer sofiware,
`
`computer consulting, and computer progr u
`
`ing services.
`
`14.
`
`Plaintiff is the owner by assi
`
`ent of U.S. Service Mark Application Serial
`
`No. 76/091,954 for the service mark HEAL HWARE SYSTEMS for computer consulting and
`
`computer programming services.
`
`15.
`
`Defendant owns U.S. Tradems. k Registration No. 2,564,447 for the trademark
`
`ANTEK HEALTHWARE for "computer so ‘
`
`are, namely, software used to automate office
`
`administration in the health care industry".
`
`16.
`
`On information and belief, Defndant has not used the ANTEK HEALTHWARE mark
`
`before February 23, 2001.
`
`17.
`
`The earliest date of priority that D efendant could claim in the ANTEK
`
`HEALTHWARE mark is May 12, 2000, which i as the filing date of its intent-to-use application for
`
`the ANTEK HEALTHWARE mark which ma
`
`ed into the trademark registration at issue
`
`18.
`
`Defendant is advertising and selli g computer sofiware under the ANTEK
`
`HEALTHWARE mark. For example, Defendant". computer software, like Plaintiffs, also includes
`
`software used in patient registration, management o f patient information and files, patient billing, and
`
`claims processing.
`
`

`
`
`
`19.
`
`Plaintiff markets and sell
`
`it computer software and services under the HEALTHWARE
`
`SYSTEMS mark and name to the health are industry.
`
`20.
`
`Defendant also markets an sells its computer software under the ANTEK
`
`HEALTHWARE mark to the health care i dustry.
`
`21.
`
`Plaintiff, through its predec ssor in interest, has applied in Serial No. 76/091,954 to
`
`register the mark HEALTHWARE SYSTE S for "computer programming; computer programming
`
`for others".
`
`22.
`
`The U.S. Patent and Tradem k Office has cited U.S. Trademark Registration
`
`No. 2,564,447 for the trademark ANTEK H ALTHWARE as a bar to registration of the
`
`HEALTHWARE SYSTEMS mark by Plainti f pursuant to Section 2(d) of the Trademark Act.
`
`23.
`
`The U.S. Patent and Trademar Office is refusing registration to Plaintiffs
`
`HEALTHWARE SYSTEMS mark on the gro
`
`ds that the HEALTHWARE SYSTEMS mark so
`
`resembles the ANTEK HEALTHWARE mark hat it is ''likely to cause confusion, or to cause mistake
`
`or to deceive" consumers. A true and correct c
`
`y of the October 15, 2002 Office Action issued by
`
`the U.S. Patent and Trademark Office is attache as Exhibit A.
`
`24.
`
`The U.S. Patent and Trademark 0 free is of the opinion that the marks
`
`HEALTHWARE SYSTEMS and ANTEK HIEAL HWARE are confusingly similar. (Exhibit A).
`
`25.
`
`The U.S. Patent and Trademark Of ce is of the opinion that Plaintiffs computer
`
`consulting and computer programming services an Defendant's computer soflware products are
`
`closely related. (Exhibit A).
`
`

`
`COUNT I - FED RAL UNFAIR COMPETITION
`
`26.
`
`Plaintiff adopts and reall es paragraphs 1 though 25 inclusive.
`
`27.
`
`The ANTEK HEALTHW ‘
`
`’ mark is similar to the HEALTHWARE SYSTEMS
`
`mark and trade name.
`
`28.
`
`Plaintiff has prior and supe "or rights in the I-[EALTHWARE SYSTEMS mark and
`
`trade name.
`
`29.
`
`The ANTEK HEALTHW ‘
`
`" mark is confiisingly similar to the HEALTHWARE
`
`SYSTEMS mark and trade name.
`
`30.
`
`Defendant's computer sofiw - is the same as and related to Plaintiffs computer
`
`software products, and computer consulting .~ d computer programming services.
`
`31.
`
`Defendant's computer sofiware products compete with Plaintiffs computer software
`
`products, and computer consulting and compu er programming services.
`
`32.
`
`The products Defendant offers . d sells under the ANTEK HEALTHWARE mark ‘are
`
`offered to the same class of consumers as Plaint'ff's products and services provided under the
`
`HEALTHWARE SYSTEMS mark and trade n e.
`
`33.
`
`The ANTEK HEALTHWARE In k so resembles the HEALTHWARE SYSTEMS
`
`mark and trade name as to be likely, when used 0 or in conjunction with the promotion and sale of
`
`Defendant's computer software, to cause confusio i or to cause mistake or to cause deception.
`
`34.
`
`The products on which Defendant p omotes and uses the ANTEK HEALTHWARE
`
`mark are the same as, are related to and are in corn etition with, and are sold to the same class of
`
`consumers, of Plaintiffs products and services.
`
`-5-
`
`

`
`35.
`
`Defendant's use of the ‘ TEK HEALTHWARE mark is likely to cause confusion,
`
`mistake or deceive the public into belie ' g that Defendant's products are products of Plaintiff, or are in
`
`some manner sponsored by or otherwise 4 sociated with Plaintiff so as to cause irreparable damage
`
`and injury to Plaintiff.
`
`36.
`
`Defendant's use of the AN EK HEALTHWARE mark constitutes a false designation
`
`of origin and false representation in violatin of Section 43 (a) of the Lanham Act (15 USC §1125(a)).
`
`37.
`
`Defendant's use of the ANT K HEALTHWARE mark has caused substantial and
`
`irreparable harm, damage and injury to Plai tiff and to the public, and will continue to cause such harm,
`
`damage and injury to Plaintiff and to the pub ic unless Defendant is permanently enjoined by this Court
`
`to immediately cease such use and to surrendr for cancellation U.S. Trademark Registration
`
`No. 2,564,447.
`
`38.
`
`Plaintiff has no adequate remed at law.
`
`COUNT II - CANCELLA ION OF REGISTRATION
`
`39.
`
`Plaintiff adopts and realleges par graphs 1 through 38 inclusive.
`
`40.
`
`Defendant is the owner of U.S. T ademark Registration No. 2,564,447 for the
`
`ANTEK HEALTHWARE mark for "computer s flware, namely, sofiware used to automate office
`
`administration in the health care industry", which registration issued on April 23, 2002.
`
`41.
`
`The Trademark Office has cited U. '.. Trademark Registration No. 2,564,447 as a bar
`
`to registration of the HEALTHWARE SYSTEMS
`
`ark in Serial No. 76/091,954 and is refusing
`
`registration under Section 2(d) of the Trademark At. (Exhibit A).
`
`42.
`
`Plaintiff is and will be continued to b damaged by the continued registration of the
`
`-6-
`
`

`
`ANTEK HEALTHWARE mark in U.S. Trademark Registration No. 2,564,447.
`
`43.
`
`The continued registratio » of the ANTEK HEALTHWARE mark in U.S. Trademark
`
`Registration No. 2,564,447 has caused su stantial and irreparable harm, damage and injury to Plaintiff,
`
`and will continue to cause such harm, (1 age and injury to Plaintiff unless Defendant is ordered to
`
`surrender for cancellation U.S. Trademark Registration No. 2,564,447 and that registration is cancelled
`
`in whole.
`
`44.
`
`Plaintiff has no adequate re edy at law.
`
`COUNT III - STATE DECEPTIVE TRADE PRACTICES
`
`45.
`
`Plaintiff adopts and realleges aragraphs 1 through 44 inclusive.
`
`46.
`
`Defendant's use of the ANTE < HEALTHWARE mark is likely to cause confusion or
`
`misunderstanding as to the source, sponsorshi an , or approval of the goods offered and sold under the
`
`ANTEK HEALTHWARE mark.
`
`47.
`
`Defendant's use of the ANTEK l ALTHWARI-A3 mark is likely to cause confusion or
`
`misunderstanding as to Defendant's affiliation, onnection, or association with Plaintiff.
`
`48.
`
`Defendant's use of the ANTEK ll ALTHWARE mark constitutes a violation of the
`
`Illinois Uniform Deceptive Trade Practices Act ( 15 ILCS 510).
`
`49.
`
`Defendant's use of the ANTEK ALTHWARE mark has caused substantial and
`
`irreparable harm, damage and injury to Plaintiff . d to the public, and will continue to cause such harm,
`
`damage and injury to Plaintiff and to the public un ess Defendant is permanently enjoined by this Court
`
`to immediately cease such use.
`
`50.
`
`Plaintiff has no adequate remedy at 1w.
`
`.7.
`
`

`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff, Documnt Publishing Group, Inc., dba HealthWare Systems,
`
`respectively requests this Court to enter:
`
`1.
`
`Judgment for Plaintiff and gainst Defendant on Count I for unfair competition in
`
`violation of 15 USC §1l25().
`
`Judgment for Plaintiff and a ainst Defendant on Count H.
`
`Judgment for Plaintiff and ag inst Defendant on Count IH for state deceptive trade
`
`practices in violation of 815 I CS 510.
`
`A preliminary and permanent i junction restraining Defendant, its officers, directors,
`
`agents, servants, representative, employees, licensees, successors, assigns, assignees
`
`and all persons acting in active oncert or participation with Defendant, or on behalf of
`
`Defendant, from doing, causing, iding or abetting any of the following:
`
`a.
`
`engaging in any acts or ac ivities directly or indirectly calculated to trade upon
`
`the reputation or goodwill o f Plaintiff or to unfairly compete with Plaintiff in any
`
`manner;
`
`b.
`
`c.
`
`directly or indirectly infrinng the HEALTHWARE SYSTEMS mark;
`
`using in the sale, offering fo sale, promotion, advertising, and marketing of
`
`goods or services or in any avertising, catalogs, letterhead, business cards,
`
`promotional items, promotionl material or other materials whatsoever the mark
`
`ANTEK HEALTHWARE, or : y mark incorporating "HEALTHWARE" in
`
`such manner so as to cause con sion, or be likely to cause confusion, mistake
`
`-3-
`
`

`
`or deceive Plainti 1 s customers and the purchasing public into the belief that the
`
`goods or services c ffered by Defendant are sponsored by or otherwise
`
`associated or come ted with Plaintiff; and
`
`d.
`
`using in the sale, of ring for sale, promotion, advertising and marketing of
`
`goods or services an mark which incorporates the word "HEALTHWARE".
`
`An order finding that ANTE HEALTHWARE is confiisingly similar to the
`
`HEALTHWARE SYSTEMS
`
`ark and trade name.
`
`An order finding that the AN K HEALTHWARE mark is likely to be confiised with
`
`the HEALTHWARE SYSTE S mark and trade name.
`
`An order directing the U.S. Patnt and Trademark Office to cancel in whole U.S.
`
`Trademark Registration No. 2,5 t» 4,447.
`
`An order requiring Defendant to ay Plaintiffs reasonable attorney's fees and all costs
`
`incurred in this action.
`
`

`
`9.
`
`An order granting such 0 | er relief as the court may deem just and proper.
`
`Res - ectfiilly submitted,
`
`DO
`dba
`
`I NT PUBLISHING GROUP, INC.,
`ALTHWARE SYSTEMS
`
`Date: March 24, 2004
`
`By: 1
`
`e M. Olson
`
`athryn E. Garipay
`ll avid A. Gottardo
`
`IDLSON & HIERL, LTD.
`2 North Wacker Drive
`
`3 nth Floor
`
`C 'cago, Illinois 60606
`
`(3 2) 580-1180
`
`A rneys for Plaintiff,
`D I CUMENT PUBLISHING GROUP, INC.
`
`-10-
`
`

`
`
`
`UNITED STATES PATE T AND TRADEMARK OFFICE
`
`SERIAL NO: 76/091954
`
`APPLICANT:HEALTI—1WARE SYSTEMS, INC.
`
`CORRESPONDENT ADDRESS:
`MATTHEW X, KELLEY
`KELLEY, KELLEY & KELLEY
`1535 WEST SCHAUMBURG ROAD, SUITE 204
`SCHAUMBURG, ILLINOIS 60194
`
`MARK:
`HEALTHWARE SYSTEMS
`CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
`CORRESPONDENT EMAIL ADDRESS:
`N/A
`
`OCT
`
`1 5
`
`RETURN ADDRESS:
`Commissioner for Trademarks
`2900 Crystal Drive
`""‘“g‘°“' VA m°2‘””
`ecom109@uspto.gov
`
`Please provide in all correspondence:
`.'l'd, ‘I
`b, kd
`'
`:L.'.iagca.ii§.i§.:§. "um " "'3'
`an
`2. Date ofthis Office Action.
`3. Examining Attorney‘: name and
`Law Oflice number.
`4. Your telephone number and e-mail
`address.
`
`OFFICE CTION
`
`TO AVOID ABANDONMENT, WE MUST RE EIVE A PROPER RESPONSE TO THIS
`OFFICE ACTION WITHIN 6 MONTHS OF 0 R MAILING OR E-MAILING DATE.
`
`RE: Serial Number 76/091954
`
`The Office has reassigned this application to the uncle signed examining attorney.
`
`as suspended pending the disposition of
`On August 2, 2001, action on this application
`Application Serial No. 76047879. The referenced pplication has matured into a registration.
`Therefore, registration is refused as follows.
`
`Likelihood of Confusion
`
`15 U.S.C.
`The examining attorney refuses registration under Trademark Act Section 2(d),
`§1052(d), because the applicant’s mark, when used on r in connection with the identified services,
`so resembles the marks in U.S. Registration No. 2564 47as to be likely to cause confusion, or to
`cause mistake, or to deceive. TMEP §§l207.01 et seq.
`ee the enclosed registration.
`
`The examining attorney must analyze each case in t o steps to determine whether there is a
`likelihood of confusion. First, the examining attome must look at the marks themselves for
`similarities in appearance, sound, connotation and co
`ercial impression.
`In re E. I. DuPont de
`Nemours & C0,, 476 F.2d 1357, 177 USPQ 563 (C.C.P.
`. 1973). Second, the examining attorney
`must compare the goods or services to determine if they
`e related or if the activities surrounding
`
`
`
`

`
`
`
`In re August Storck KG, 218 USPQ
`their marketing are such that confilsion as to origin is likely.
`823 (TTAB 1983); In re International Tele hone and Telegraph Corp., 197 USPQ 910 (TTAB
`1978); Guardian Products Co.,
`v. Scott P per Co., 200 USPQ 738 (TTAB 1978). TMEP
`§§l207.01 et seq.
`
`The test of likelihood of confusion is not whet er the marks can be distinguished when subjected to
`a side-by-side comparison. The issue is whe her the marks create the same overall impression.
`Visual Information Institute, Inc. v. Vicon Indus ries Inc., 209 USPQ 179 (TTAB 1980). The focus
`is on the recollection of the average purchaser
`ho normally retains a general rather than specific
`impression of trademarks. Chemetron Corp. v Morris Coupling & Clamp Co., 203 USPQ 537
`(TTAB 1979); Sealed Air Corp.
`v. Scott Pa er Co., 190 USPQ 106 (TTAB 1975); TMEP
`§1207.0l(b).
`
`The goods and services of the parties need n t be identical or directly competitive to find a
`likelihood of confusion. They need only be relat d in some manner, or the conditions surrounding
`their marketing be such,
`that
`they could be encountered by the same purchasers under
`circumstances that could give rise to the mistake belief that the goods and services come from a
`common source.
`In re Martin ’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
`(Fed. Cir. 1984); In re Corning Glass Works, 22 USPQ 65 (TTAB 1985); In re Rexel Inc., 223
`USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB
`1978); In re International Telephone & Telegrap Corp., 197 USPQ 910 (TTAB 1978). TMEP
`§ 1207.01 (a)(i).
`
`In the present case, the applicant has applied to register the mark HEALTHWARE SYSTEMS for
`computer consultation and computer programming for others. The registered mark is ANTEK
`HEALTHWARE for computer software, namely so ware used to automate office administration in
`the health care industry.
`'
`
`The respective marks are comprised in whole or si nificant part of the term HEALTHWARE.
`Such a term is arbitrary and distinctive as used i
`connection with the identified goods and
`services. Consequently, the marks share the same
`ver-all sound, appearance and commercial
`impression. The inclusion of “Systems” in the appli ant’s mark does not change this conclusion
`because it
`is a non-dominant descriptive term whe
`used in conjunction with the identified
`services.
`
`registrant. Both involve the use of software in the he lth care industry for purportedly the same
`purpose. Thus, the examining attorney must conclude
`at it is highly foreseeable that customers
`of the registrant might encounter the applicant’s servic s and mark in the marketplace given the
`similar channels of trade within which the identifie
`goods and services travel. Therefore,
`confusion as to source of origin or sponsorship is likely t occur.
`
`The examining attorney must resolve any doubt as to th issue of likelihood of confusion in favor
`of the registrant and against the applicant who has a le
`1 duty to select a mark which is totally
`dissimilar to trademarks already being used.
`In re Hype Shoppes (Ohio), Inc., 837 F.2d 463, 6
`USPQ2d 1025 (Fed. Cir., 1988); Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191
`(TTAB 1979). TMEP §§l207.01(d)(i).
`
`

`
`Other Issues
`Although the examining attorney has refuse registration, the applicant may respond to the refusal
`to register by submitting evidence and arg
`ents in support of registration.
`If the applicant
`chooses to respond to the refusal to registe , the applicant must also respond to the following
`issues.
`
`Request For Information
`The examining attorney requires information .= bout the services to conclude final examination of
`this application. The applicant must provide prduct information for the services. Specifically, the
`applicant must state whether his services may =- used in the healthcare industry.
`In addition, the
`applicant must indicate whether his services
`ay involve office administration.
`In other words,
`may the computer consultation and/or progr
`'
`ing involve aspects of office automation in any
`guise or manner, either directly or indirectly?. If so, how? This information is not readily available
`to the examining attorney, and is pertinent to
`nal examination of this application. Conclusory
`statements from the applicant or its attorney re arding the descriptiveness standard will not be
`sufficient to meet this requirement for informatio .
`
`to furnish such
`states "The examine may require the applicant
`Trademark Rule 2.6l(b)
`information and exhibits as may be reasonabl a necessary to the proper examination of the
`application". The Trademark Trial and Appeal B 9 rd has upheld a refusal of registration based on
`the applicant's failure to provide information requsted under this rule.
`In re Babies Beat Inc., 13
`USPQ2d 172.9 (TTAB l990)(failure to submit pate t information regarding configuration).
`
`If the applicant has any questions or needs assist n ce in responding to this Office action, please
`telephone the assigned examining attorney.
`
`. Gene V.
`.
`aciol, II
`Tradema k Attorney Advisor
`Law Offi e 109
`
`(703) 308 9109 x295
`
`How to respond to this Office Action:
`
`To respond formally using the Office’s Trademark Elctronic Application System (TEAS), visit
`htgp://www.uspto.gov/teas/index.html and follow the i structions.
`
`To respond formally via E-mail, visit htt://www.usto.ov/web/trademarks/tmelecres.htm
`and follow the instructions.
`
`To respond formally via regular mail, your response sho ld be sent to the mailing Return Address
`listed above and include the serial number, law office and examining attorney’s name on the upper
`right corner of each page of your response.
`
`

`
`To check the status of your application at . y time, visit the Office’s Trademark Applications and
`Registrations Retrieval (TARR) system at ht a://tarr.us to.ov/
`
`For general and other useful information abo t trademarks, you are encouraged to visit the Office’s
`web site at htt n ://www.us to.ov/main/trad marks.htm
`
`FOR INQUIRIES OR QUESTIONS ABOU THIS OFFICE ACTION, PLEASE CONTACT
`THE ASSIGNED EXAMINING ATTORN Y.
`
`

`
`
`
`*** «User: gmaciol
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`*~k~k
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`jrial Nu
`
`er: 76047879
`
`*7‘
`
`.3 10/10/02 12:18:51 PM
`
`-k*
`
`Mark
`
`ANTEK HEALTHWARE
`
`Goods and Services
`
`[Ty ed Drawing]
`
`G & S: Computer software, namely,
`US 021 023 026 036 O 8.
`IC 009.
`software used to automate offi e administration in the health care
`industry.
`FIRST USE: 20010223.
`FIRST USE IN COMMERCE: 20010223
`
`Mark Drawing Code
`(1) TYPED DRAWING
`
`Serial Number
`76047879
`
`Filing Date
`May 12, 2000
`
`Filed ITU
`FILED AS ITU
`
`Publication for Opposition Date
`September 4, 2001
`
`Registration Number
`2564447
`"—’:'j—4
`
`Registration Date
`April 23, 2002
`
`_
`Owner Name and Address
`INC. CORPORATIO MARYLAND 10 Franklin Boulevard
`(REGISTRANT) ANTEK,
`Reisterstown MARYLAND 21136
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Live Dead Indicator
`LIVE
`
`Attorney of Record
`Michael D. Oliver
`
`+++ C‘/\—\v~r~‘m-
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`1
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