UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/337842
APPLICANT: RHEINMAGNET Horst Baermann GmbH
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CORRESPONDENT ADDRESS: DUANE M. BYERS NIXON & VANDERHYE, P.C. 1100 NORTH GLEBE ROAD, SUITE 800 ARLINGTON, VIRGINIA 22201-4714
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom105@uspto.gov
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MARK: BIOFLEX
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CORRESPONDENT’S REFERENCE/DOCKET NO: 3571-24
CORRESPONDENT EMAIL ADDRESS:
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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.
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Serial Number 76/337842
The Office has reassigned this application to the undersigned examining attorney.
The finality of the previous office action is withdrawn in order to address the applicant’s amended identification and to address issues which have been brought forward upon further review of the application.
“Bandages for wounds or damages to muscles, tendons, ligaments and living tissue” is indefinite and may belong in both classes 5 and 10. The applicant must more specifically indicate the type of bandage. Adhesive bandages and surgical bandages belong in class 5. Compression and elastic bandages belong in class 10. The applicant must add the type of bandage in the identification and must classify the goods accordingly.
The Class 10 identification is acceptable.
The section 2(d) refusal in view of Registration No. 2059934 is maintained.
The applicant’s mark BIOFLEX is identical in all aspects to the registered mark BIOFLEX.
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The applicant has argued that the registrant’s mark is weak and therefore should be afforded limited scope of protection. However, even a weak mark is entitled to protection against the registration of a similar mark for closely related goods or services. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (C.C.P.A. 1974).
The applicant provides examples of third party registrations in support of its contention that the registrant’s mark is weak. Third-party registrations, by themselves, are entitled to little weight on the question of likelihood of confusion. In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). Third-party registrations are not evidence of what happens in the marketplace or that the public is familiar with the use of those marks. In re Comexa Ltda, 60 USPQ2d 1118 (TTAB 2001); National Aeronautics and Space Admin. v. Record Chem. Co., 185 USPQ 563 (TTAB 1975); TMEP §1207.01(d)(iii). Further, existence on the register of other confusingly similar marks would not assist applicant in registering yet another mark which so resembles the cited registered mark that confusion is likely. In re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
It should also be noted that of the ten marks that the applicant submitted as evidence, one of the marks is owned by the applicant, one of the marks is cancelled, one of the marks is the mark cited against the applicant, two of the marks were previously cited against the applicant and the other marks can be distinguished because of additional matter or goods which are not as closely related as the applicant’s and registrant’s 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 which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
The registrant uses its mark on goods identified as “adhesive films and foams for medical use.” The attached evidence from the registrant’s website, www.scapana.com shows that some of the applicant’s adhesive films and foams are for use in wound care and for use as bandages. Some of the applicant’s goods are used in wound care and are bandages. The applicant and registrant use their marks on the same type of goods and on related medical goods.
The applicant’s use of language in the identification of goods to exclude the specific language used in the registration does not alter the fact that some of the applicant’s goods are the same type of goods as the registrant’s goods and that they perform the same functions, nor does it alter the fact that the goods that are not the same are related in that they would be provided to the same class of customer through the same channels of trade.
Because of the similarity between the applicant’s and registrant’s marks and because the marks are used on the same and related goods which are offered through the same channels of trade to the same class of customer consumers are likely to mistakenly believe that the goods come from the same source. For these reasons registration of the applicant’s mark is refused in accordance with Section 2(d) of the Trademark Act.
/Kelley L. Wells/
Kelley L. Wells
Examining Attorney
Law Office 105
(703) 308-9105x124
(703) 872-9825 fax
ecom105@uspto.gov
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.