UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/354082
APPLICANT: West Coast Infertility, Inc.
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CORRESPONDENT ADDRESS: KEVIN R. MARTIN ALLMARK TRADEMARK SERVICE 5327 ROMFORD DR # A SAN JOSE CA 95124-5637
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom110@uspto.gov
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MARK: EMBRYOGLUE
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CORRESPONDENT’S REFERENCE/DOCKET NO: TA-1201-WCI-
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 76/354082
On April 8, 2002, action on this application was suspended pending the disposition of Application Serial No. 75570736. The referenced application has matured into a registration. Therefore, registration is refused as follows.
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 services, so resembles the mark in U.S. Registration No. 2715939 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registration.
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.
The applicant has applied to register the mark EMBRYOGLUE for “medical services involving the implantation of an embryo inside the uterus using a specially developed endoscopic procedure.” The registered mark is EMBRYOGLUE. The registered mark is for “[p]harmaceutical preparations and medicines for the preparation, cultivation and preservation of cells, tissues and organs.”
When the applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). TMEP §1207.01(b). In this case, the marks are identical in appearance, sound, connotation and commercial impression.
If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). TMEP §1207.01(a).
After careful review and analysis, the examining attorney has determined that the goods of the parties are substantially related in that both provide medical goods and services related to the embryo. Thus, taken as a whole, the overall similarities among the marks and the goods and services are so great as to create a likelihood of confusion among potential consumers. Moreover, 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). Hence, the examining attorney must refuse registration of the mark.
/George M Lorenzo/
Examining Attorney
Law Office 110
Phone: (703) 308-9110, ext 143
Fax: (703) 746-8110
E-mail: ECOM110@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.