Offc Action Outgoing

This letter responds to the applicant’s communication of October 18, 2007. The applicant has amended the identification of goods to read “locking retainers for external artificial limbs which replace arms, hands, legs, or feet.” This wording is acceptable, but the goods are incorrectly classified in Class 40, as explained below. In addition, the refusal of registration based on the likelihood of confusion with Reg. No. 3165517 is continued, as explained below.

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

The examining attorney continues the refusal of 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 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 applicant has applied for use of its mark on locking retainers for external artificial limbs which replace arms, hands, legs, or feet. 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 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.

The applicant argues that there is no likelihood of confusion because its goods are used in the field of artificial limbs, while the registrants goods are used in the field of hip replacement surgery. (The applicant indicates that the registrant indicated that its goods are used in hip replacement surgery in documents filed in its application.) However, the registration is not limited to goods used in hip replacement surgery because the identification of goods is broad. Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii).

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.

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

Informality

Classification of Goods

The goods are classified incorrectly. The applicant must amend the application to classify the goods in Class 10. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).

/Leigh Caroline Case/

Trademark Attorney, Law Office 105

(571) 272-9140

RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.