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  76/324825 ENCORE

 

The Office has reassigned this application to the undersigned examining attorney.

 

Upon further examination of the referenced application, the assigned examining attorney has determined the following.  The Office apologizes for any inconvenience.

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 1464457 and 2426314 as to be likely to cause confusion, or to cause mistake, or to deceive.  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. 

 

Applicant’s mark is ENCORE for orthopedic and medical appliances and products, namely, back supports, wrist supports, knee supports, ankle supports, elbow supports, shoulder supports, cervical collars and supports, knee braces, elastic bandages, arm slings, patient limb and body safety restraints, shoulder immobilizers, wrist straps, abdominal binders, padded heel and elbow protectors, patient positioning and restraint straps, hot and cold gel packs, compression hosiery, fracture invalid walkers, splint immobilizers, chemically activated hot and cold gel therapy packs and covers, heating and cooling units for hot and cold packs, thermometers and wraps, compression therapy garments and equipment, namely, mechanical apparatus for stretching, exercising and treating all muscles of the body; medical rehabilitation equipment, namely, hot and cold therapy units, namely, whirlpools; continuous passive motion equipment, electrotherapy equipment, therapeutic and clinical ultrasound diagnostic apparatus, TENS units, therapeutic exercise equipment, namely, exercise machines for therapeutic purposes, patient treatment tables, patient traction tables, traction apparatus.

 

The first registrant’s mark is ENCORE (Reg. No. 1464457) is for electrode for transcutaneous electrode nerve stimulator.

 

The second registrant’s mark is ENCORE (Reg. No. 2426314) for medical apparatus and equipment for lifting, handling and transporting patients, namely invalid hoists, invalid lifts, standing aids, medical stretchers, slings and disposable slings; and parts and fittings therefore.

 

The applicant’s mark is identical and therefore confusingly similar to the cited marks.

 

The goods/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/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).  TMEP §1207.01(a)(i). 

 

The parties’ goods are related.  The applicant’s TENS units are related to the  to the first registrant’s electrode for transcutaneous electrode nerve stimulator, which is a TENS unit.  The goods are used together and would be encountered by the same consumers.

 

The applicant’s goods are also related to the second registrant’s goods.  Many of the applicant’s goods would be used for lifting, handling, and transporting patients.  The applicant’s various body supports, slings, restraints, and the therapy equipment for stretching, exercising and rehabilitation, as well as the walkers, and traction tables are all related to the registrant’s goods for lifting, standing, handling and transportation of patients.

 

Since the marks are identical, and the goods are highly related, it is likely purchasers would confuse the sources of the goods.  The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).  Accordingly, the mark is refused registration under Section 2(d).

 

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.

 

Response

No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.  In addition to the identifying information required at the beginning of this letter, the applicant should provide a telephone number to speed up further processing.

 

If the applicant has any questions or needs assistance in responding to this office action, please telephone the assigned examining attorney.

 

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.

 

 

/Idi Aisha Clarke/

Trademark Attorney

Law Office 105

(703) 308-9105 Ext. 248

Fax: (703) 872-9825

 

 

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.