To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Healthy Weight Partnership, Inc. (eric@fgd-law.com)
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`U.S. Trademark Application Serial No. 90541020 - HEALTHY TOGETHER - 504.012US
`
`April 12, 2022 09:24:08 AM
`
`ecom113@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application Serial No. 90541020
`
`Mark:   HEALTHY TOGETHER
`
`Correspondence Address:   
`
`     Eric I. Collins, Esq.
`     FURMAN GREGORY DEPTULA
`  
`         4 13TH STREET
`         BOSTON MA 02129
`  
`Applicant:   Healthy Weight Partnership, Inc.
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`    
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`Reference/Docket No. 504.012US
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`Correspondence Email Address:    
`
`    eric@fgd-law.com
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`SUSPENSION NOTICE
`No Response Required
`
`Issue date:   April 12, 2022
`
`Pursuant to TMEP §716.01, applicant is advised of the following status of the application.   
`
`In an Office Action issued on September 23, 2021, the following issues were outstanding with this application:
`
`(1)   Section 2(d) – Likelihood of Confusion Refusal
`(2)   Potential Section 2(d) Refusal – One Pending Application
`(3)   Identification Of Services Overly Broad And Indefinite – Amendment Required
`(4)   Clarification Of The Number Of Classes For Which Registration Is Sought Required
`(5)   Advisory – Multiple Class Application Requirements For Applications Based On Section 1(b)
`(5)
`On March 17, 2022, applicant responded to the Office Action. In Response, applicant:
`
`Argued against the Section 2(d) – Likelihood of Confusion Refusal; and
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`Amended the identification of goods and services.  
`
`The trademark examining attorney has thoroughly reviewed applicant’s response and has determined the following:
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`(1)        Applicant’s arguments against the Section 2(d) Likelihood of Confusion Refusal are not persuasive and the Section 2(d) Likelihood of
`Confusion Refusal is maintained and CONTINUED;
`(2)        Application Serial No. 90462052 is still pending, and action on the instant application is suspended pending final disposition of that
`application; and
`(3)        Applicant’s amended identification of goods and services are acceptable and made of record. Accordingly, the Identification and
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`Clarification of Number of Classes Requirements are satisfied.
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`Preliminary Response to Applicant’s Arguments
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`Applicant argues that the cited marks are inherently weak and not entitled to broad protection. Additionally, applicant argues that there is no
`likelihood of confusion because of applicant’s ownership of a prior registration for the same mark in Class 44 which co-exists with the cited
`registrations. Lastly, applicant asserts that the goods and services, as amended, are sufficiently unrelated such that confusion is unlikely.
`
`First, marks deemed “weak” or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user
`of a similar mark for closely related goods and services. Here, the marks share the identical wording HEALTHY TOGETHER, and are for use in
`connection with overlapping goods and services. In particular, the registrations use broad wording to describe “providing health information”
`and “healthcare” which presumably encompasses applicant’s software for providing information related to the treatment of obesity. Moreover,
`healthcare providers often provide healthcare services and information through mobile applications and online software. Lastly, the goods and
`services in the prior registration are not identical to the goods and services in the instant application, and the prior registration has not co-existed
`for at least five years with the cited registrations. Thus, applicant’s prior registration does not overcome the Section 2(d) refusal. Thus, the
`similarities in the marks and relatedness of the goods and services supports a finding that the compared marks are confusingly similar.
`Accordingly, applicant’s arguments are unpersuasive to overcome the refusal and so the Section 2(d) Refusal is maintained and continued.
`
`ACTION SUSPENDED
`
`The application is suspended for the reason specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.  
`
`The pending application below has an earlier filing date or effective filing date than applicant’s application.   If the mark in the application below
`registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered
`mark(s).  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed application
`below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application below was sent previously.
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`            
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`- U.S. Application Serial No. 90462052
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`Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As
`needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP
`
`§716.05.  
`No response required.  Applicant may file a response, but is not required to do so.   
`
`/Danielle L. Anderson/
`Danielle L. Anderson
`Trademark Examining Attorney
`Law Office 113, USPTO
`571-272-6143
`danielle.anderson@uspto.gov
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`    
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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Healthy Weight Partnership, Inc. (eric@fgd-law.com)
`
`U.S. Trademark Application Serial No. 90541020 - HEALTHY TOGETHER - 504.012US
`
`April 12, 2022 09:24:10 AM
`
`ecom113@uspto.gov
`
`United States Patent and Trademark Office (USPTO)
`
`USPTO OFFICIAL NOTICE
`
`Office Action (Official Letter) has issued
`on April 12, 2022 for
`U.S. Trademark Application Serial No. 90541020
`
`A USPTO examining attorney has reviewed your trademark application and issued an Office action.  You may be required to
`respond to this Office action.  Follow the steps below.
`
`(1)   Read the Office action.  This email is NOT the Office action.
`
`(2)  Respond to the Office action, if a response is required.  Respond by the deadline using the Trademark Electronic
`Application System (TEAS).  Your response must be received by the USPTO on or before 11:59 p.m. Eastern Time of the last day
`of the response period.  Otherwise, your application will be abandoned.  See the Office action itself regarding how to respond.
`
`(3)   Direct general questions about using USPTO electronic forms, the USPTO website, the application process, the status of your
`application, and whether there are outstanding deadlines to the Trademark Assistance Center (TAC).
`
`After reading the Office action, address any question(s) regarding the specific content to the USPTO examining attorney identified in
`the Office action.
`
`GENERAL GUIDANCE
`·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid
`missing critical deadlines.
`
`·         Update your correspondence email address to ensure you receive important USPTO notices about your application.
`
`·         Beware of trademark-related scams.  Protect yourself from people and companies that may try to take financial advantage of
`you.  Private companies may call you and pretend to be the USPTO or may send you communications that resemble official
`USPTO documents to trick you.  We will never request your credit card number or social security number over the phone.  And
`all official USPTO correspondence will only be emailed from the domain “@uspto.gov.”   Verify the correspondence originated
`from us by using your Serial Number in our database, TSDR, to confirm that it appears under the “Documents” tab, or contact
`the Trademark Assistance Center.
`
`·         Hiring a U.S.-licensed attorney. 
`If you do not have an attorney and are not required to have one under the trademark rules,
`we encourage you to hire a U.S.-licensed attorney specializing in trademark law to help guide you through the registration
`process.  The USPTO examining attorney is not your attorney and cannot give you legal advice, but rather works for and
`represents the USPTO in trademark matters.
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