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  76/244693

 

ACTION CONTINUING A FINAL ACTION

 

This final refusal corrects a procedural error.  A non-final action was issued after the final refusal dated April 20, 2006.  The action dated February 4, 2007, therefore was incorrectly styled as a denial of a request for reconsideration.    Because a final was issued previously, this action is considered an action continuing a final refusal.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2965441 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

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 closely similar – TREOSTEM versus TRISTEM. The examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP §1207.01(b)(viii). 

 

While one of the two cited registrations includes a design element, this is not enough to distinguish it from the applicant’s mark.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii). 

 

While the applicant contends that the marks do contain differences, this also does not avoid a likelihood of confusion.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who 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 Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

This is particularly true where pharmaceuticals are concerned.  The courts and scholarly authorities have long recognized a “doctrine of greater care” in pharmaceutical cases because of life and death risks to consumers regarding trademarks for drugs.  This doctrine mandates a conservative approach to determining a likelihood of confusion between trademarks used on pharmaceutical preparations due to the harmful (and potentially lethal) consequences of mistakenly taking the wrong medication.  “For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations.”  3 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §23:12; (4^th ed. 2003); See also Glenwood Laboratories, Inc., v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19 (C.C.P.A. 1972); Sterling Drug, Inc., v. Sankyo Co., 139 USPQ 395 (TTAB 1963); American Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ 357 (TTAB 1976); Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980).  Thus courts have allowed a lower threshold of proof of confusing similarity for drugs and medicinal preparations.

 

The examining attorney incorporates herein by reference evidence attached to the office action dated February 4, 2007.   The evidence includes excerpts from the registrant’s web site, making clear that its goods may be used to fight cancer.  The applicant states that its goods too are used in “bone marrow transplant” and “chemotherapy,” both of which are treatments for cancer.  The remaining evidence simply highlights the fact that stem cell therapy is considered one of the most promising new treatments for cancer.  Accordingly, both parties offer goods that may be used in the treatment of cancer.  The use of such similar marks on related goods creates a likelihood of confusion.

 

Accordingly, the refusal to register the applicant’s mark is continued and made final.

 

Responding to a Final Refusal

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

 

 

/Doritt Carroll/

Trademark Examining Attorney

Law Office 116

Phone:  (571) 272-9138

Fax:      (571) 273-9138

www.gov.uspto.report/teas/index.html

 

 

 

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.