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  76/383955

 

This letter responds to the applicant’s communication filed on January 24, 2003.

 

The applicant’s amended identification of goods is acceptable.

 

U.S. Registration 2443022 has been withdrawn as a cite.

 

Regarding Applicant’s arguments against the refusal to register the mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), 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. 

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 1248244 as to be likely, when used in connection with the identified goods, as to cause confusion, or to cause mistake, or to deceive.

 

Applicant applied to register the mark CYTYC for, in pertinent part, “computer hardware and software for use in the detection and diagnosis of cancer and other diseases; microscopes for use in the detection and diagnosis of cancer and other diseases; electronic imaging and image processing apparatus for use in the field of cytology, including molecular diagnostics, and parts and attachments therefor.”  The registered mark is SCITEX for “electronic color image processing apparatus.”

 

The applicant believes the marks of the parties differ in sound and appearance. In addition, the applicant maintains the marks of the parties are pronounced differently.

 

For these reasons, the applicant feels that the marks create a different overall impression to the consumer.  The examining attorney respectfully disagrees with this conclusion.

 

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 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq. 

 

The applicant’s mark is CYTYC and the registrant’s mark is SCITEX.  The marks are essentially phonetic equivalents.  Similarity in sound alone is sufficient to find a likelihood of confusion.  Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963).  TMEP §1207.01(b)(iv).  Therefore, the similarities in the elements that exist are sufficient to find a likelihood of confusion.

 

The applicant believes the goods of the parties are different, because its “electronic imaging apparatus” is used for medical applications while the registrant’s “electronic color image processing apparatus” is used for non-medical purposes.  For these reasons, the applicant believes the goods of the parties are not related. Respectfully, the examining attorney disagrees with this position.

 

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 examining attorney must determine whether there is a likelihood of confusion on the basis of the goods/services identified in the application and registration.  If the cited registration describes the goods/services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the registration encompasses all goods/services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639 (TTAB 1981).  TMEP §1207.01(a)(iii). 

 

The applicant’s goods are “Computer hardware and software for use in the detection and diagnosis of cancer and other diseases; microscopes for use in the detection and diagnosis of cancer and other diseases; electronic imaging and image processing apparatus for use in the field of cytology, including molecular diagnostics, and parts and attachments therefore” and the registrant’s goods are “electronic color image processing apparatus.”  The goods of the parties are related, because they are both “electronic image processing apparatus.” Since the identification of the registrant’s goods is very broad, it is presumed that the registration encompasses all goods of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).  TMEP §1207.01(a)(iii). The conditions surrounding the marketing of the goods may be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. 

 

Because of the similarities between the marks and the goods of the parties, a likelihood of confusion is created.

 

For the foregoing reasons, the refusal to register the mark under Trademark Act Section 2(d) is continued and made FINAL.

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. §2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. §2.65(a).

 

Response

 

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

 

 

 

 

 

 

 

 

 

 

/Charles L.Jenkins,Jr./

Trademark Examining Attorney

Law Office 105

(703)308-9105 ex. 142

(703)746-3022 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.

 

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.