Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/174504.  This application has been reassigned to the examining attorney listed below.  The refusal based on the likelihood of confusion with Reg. No. 2412802 is withdrawn.  Serial No. 75518007 has registered.  Therefore, the following issue is outstanding.

 

Refusal Based on Section 2(d) - Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on the identified goods, is likely to be confused with the registered mark in Registration No. 3165517.  TMEP sections 1207.01 et seq.  A copy of this registration is attached.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation, and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  In comparing the marks, similarity in any one of the elements of sound, appearance, or meaning is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977). 

 

Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

The applicant's mark SUMMIT and the registrant's mark SUMMIT are identical in appearance, sound, connotation, and commercial impression.  Both marks contain the term “summit.” 

 

The examining attorney must also consider the applicant's and registrant's goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  The goods or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related 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 mistaken belief that the goods or 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, 229 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 & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

The applicant has applied for use of its mark on locking retainers for external prostheses for limbs.  The registrant uses its mark on medical devices, instruments, and apparatus for the implantation of orthopaedic artificial prostheses, namely, acetabular cups, bone screws, abutments, placement guides, mountings, and supports for prostheses.  Both parties’ goods are used with prostheses; the registrant’s “supports for prostheses” could include the applicant’s “locking retainers for external prostheses for limbs,” for example.  Therefore, the applicant's and registrant's goods are likely to be encountered by the same purchasers in the same channel of trade.  The applicant's and registrant's goods are sufficiently similar to cause the incorrect conclusion that the goods come from the same source.

 

For the reasons stated above, the examining attorney finds that because a likelihood of confusion exists between the applicant's mark and a registered mark, registration of the applicant's mark is barred under Section 2(d) of the Trademark Act.

 

 

 

/Leigh Caroline Case/

Trademark Attorney, Law Office 105

(571) 272-9140

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.