Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/321448.  The pending mark cited in the Office action of December 6, 2001, has registered.

 

Foreign Registration

Action on this application was suspended pending receipt of a certification or certified copy of  the certificate of registration in the country of origin of the applicant. 

 

The Trademark Office has not received the certification or certified copy of the foreign registration.  The applicant must indicate the status of prosecution of the foreign application.

 

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. 2,672,525.  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 ULTIMAX and the registrant's mark ULTRAMAX are similar in appearance, sound, connotation, and commercial impression.  These marks contain the terms “ult” and “max.”

 

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 cranial, oral, and maxillo-facial plates and screws, and the registrant uses its mark on vascular grafts, and patches and vascular grafts comprised of artificial material.  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.

 

Relationship of Applicant and Registrant

The applicant should indicate its relationship to the registrant, if any.  If either the applicant or registrant owns all or substantially all of the other entity, and the applicant and registrant constitute a single source although they are separate legal entities, the nature of the relationship may overcome the Section 2(d) refusal.  In re Wella A.G., 8 USPQ2d 1365 (Fed. Cir. 1988).

 

Assignment of Cited Registration

If the registered mark cited has been assigned to the applicant, the applicant is responsible for proving ownership.  TMEP section 812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. Section 1060; 37 C.F.R. Section 2.185.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. Section 2.20, of the chain of title, specifying each party in the chain, the nature of each conveyance, and the relevant dates. 

 

 

                                                                                            Leigh Caroline Case

      /Leigh Caroline Case/

                                                                                                Trademark Attorney, Law Office 105

 

                  Ecom105@uspto.gov    Law Office e-mail                  (703) 872-9875                     Law Office Fax

                  (703) 308-9105               Law Office phone                  (703) 308-9105 x 148                  Attorney phone

 

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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