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  76/430815

 

On May 15, 2003, action on this application was suspended pending the disposition of Application Serial No. 76/410373.  The referenced pending application has since registered.  Therefore, registration is now 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 goods/services, so resembles the mark in U.S. Registration No. 2801827 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 AIR-LOCK for external prostheses and orthotics, namely, leg, foot, arm and hand prostheses.

 

The registered mark is AIRLOC for orthopedic aids, namely, orthopedic bandages, orthopedic joint supports and orthopedic support joints, namely, orthopedic braces, orthopedic girdles and belts, orthopedic foot supports, orthopedic compression and support stockings, and ortheses and prostheses, namely, ankle joint ortheses and prostheses.

 

            A.            Similarity of the Marks:

 

The applicant’s and registrant’s marks are highly similar and they create a similar commercial impression.  Here, the marks sound the same and are similar in appearance, as such, they are phonetic equivalents.  In addition, the marks identify closely related goods.

 

The marks are essentially phonetic equivalents and are thus similar sounding.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); 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).

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  TMEP §1207.01(a). 

 

B.                 Similarity of the Goods:

 

The goods of the applicant and the registrant are prostheses and orthotic goods and orthopedic goods, respectively.  The goods of both the applicant and the registrant will travel in the same channels of trade.  As such, one must conclude that purchasers familiar with the registrant's mark "AIRLOC" for orthopedic goods, upon encountering the applicant's mark "AIR-LOCK" for prostheses and orthotic goods are likely to mistakenly believe that the goods emanate from a common source.

 

The examining attorney has included several registrations as a sampling of the existing registrations showing that the goods of the applicant and the goods of the registrant often emanate from a common source. 

 

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).

 

Because the marks are highly similar and they identify closely related goods, their contemporaneous use is likely to cause confusion.  Therefore, the proposed mark is refused registration pursuant to Section 2(d) of the Trademark Act.

 

RESPONSE:

 

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.

 

To respond to this Office action electronically, the applicant must:

 

• include the serial number in the subject line;

o       send the response to mailto:ecom105@uspto.gov.  E-mail sent to any other address will NOT be processed, and may result in ABANDONMENT of the application;

o       submit specimens and/or evidence as scanned images or digital photographs in .GIF or .JPG format only.  NO OTHER FORMATS WILL BE PROCESSED (TMEP §304.01);

o       respond within six-months from the Office action mailing date, or within the period stated in the Office action;

o       respond in English; and

o       sign the response electronically, e.g. /john smith/.  See 37 CFR §2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

If the applicant wishes to receive future office actions by e-mail, the applicant must state in the response that “The applicant authorizes the USPTO to communicate with the applicant electronically at the following e-mail address: ____________.”  Note: only one e-mail address may be used for correspondence.  TMEP §804.07. 

 

The examining attorney will send correspondence only to the e-mail address listed in the application.  A request to change an e-mail address may be submitted by signed e-mail to one of the above e-mail addresses.

 

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

 

/Marlene Bell/

Marlene Bell

Trademark Examiner

Law Office 105

(703) 308-9105 X 173

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