UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/244693
APPLICANT: medac Gesellschaft fur klinische Spezial ETC.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: TREOSTEM
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 35-203
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
Serial Number 76/244693
Refusal to Register
The previously referenced prior pending applications, Ser. Nos. 76/181342 and 76/181343, now have matured into registrations and are cited as a bar to registration of the applicant’s mark.
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2965441 and 2965442. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations.
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 (C.C.P.A. 1973). 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). TMEP §§1207.01 et seq.
In the present case, the marks are very similar in sound and appearance.
In addition, they cover related pharmaceutical goods. The applicant’s goods are pharmaceutical preparations used to treat recipients of bone marrow transplants, stem cell transplants, and chemotherapy. The registrant’s goods are a house mark for a wide variety of stem cell treatments. If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980). TMEP §1207.01(b).
There is no correct pronunciation of a trademark. Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985); In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).
Because the use of such similar marks in connection with closely related goods creates a likelihood of confusion, registration of the applicant’s mark must be refused.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
/Doritt Carroll/
Trademark Examining Attorney
Law Office 116
Phone: (571) 272-9138
Fax: (571) 273-9138
www.gov.uspto.report/teas/index.html
HOW TO RESPOND TO THIS OFFICE ACTION:
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.