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  76/449386

 

The applicant’s amended identification of goods is acceptable.

 

SECTION 2(D) LIKELIHOOD OF CONFUSION REFUSAL

Registration was previously refused under Section 2(d) in view of Registration No. 1467954.  That refusal is repeated and made FINAL.

 

The applicant argues that the SINUS portion of the applicant’s mark SINUSIN and of the registrant’s mark SINUSAN is highly suggestive and/or descriptive in relation to the parties goods and submits third party registrations for similar goods which also contain the prefix SINUS as further evidence of this argument. 

 

While the SINUS portion of the registrant’s and applicant’s marks is highly suggestive or descriptive of products used to treat or deal with sinus conditions, if a mark containing SINUS when viewed as a whole is still similar enough in sound, appearance, meaning or connotation, that is enough to find a likelihood of confusion.

 

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 has submitted SINUSPAX, SINUSALIA, SINUSOL, SINUSSTOP, SINUSAVE, and SINUSOLUTIONS as examples of registered and allowed marks which all have SINUS as the first part of the mark and which are all used on medications or homeopathic preparations or supplements.  However, the applicant should note that in each of these marks the portions of the marks that are not SINUS are very different from each other.  PAX, ALIA, SOL, STOP, SAVE and SOLUTIONS are not similar at all to each other or to SAN or SIN in appearance, sound, meaning or connotation.  If the SINUS portion of all of the marks is descriptive and therefore weak, then the remaining portion of the marks arguably would be the stronger or more distinguishing source indicating portion of the marks.  In the case of the applicant’s and registrant’s marks the non-descriptive portions of the marks are almost identical sound and appearance.

 

The applicant attempts to argue that the SIN and SAN portions of the applicant’s and registrant’s marks are not similar and are readily distinguishable in terms of sound, appearance and meaning and that when viewed as a whole the marks are different and create different commercial impressions.  However, the suffix in both marks is comprised of three letters and the first and last letters of the suffix are the same and the vowels I and A in the respective marks are similar sounding vowels.   SIN and SAN are very similar in sound and appearance.  A single letter difference in marks which are otherwise identical will not overcome a likelihood of confusion.  Blansett Pharmacal Co. Inc. v. Carmrick Laboratories Inc.   (TTAB) 25 USPQ2d 1473.

 

For purposes of the Section 2(d) analysis when the marks are viewed as a whole, they are similar in sound and appearance.

 

There is no correct pronunciation of a trademark.  Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985); In re Great Lakes Canning, Inc., 227 USPQ 483 (TTAB 1985); In re Mack, 197 USPQ 755 (TTAB 1977).  The marks in question clearly could be pronounced the same.  TMEP §1207.01(b)(iv).  SINUSAN and SINUSIN could be pronounced exactly the same or with only a slight almost undetectable difference.

 

Slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983).

 

While the term SINUS may be weak and the Office has allowed several registrations which have SINUS as the first part of the mark to co-exist on the register, the existing marks when compared as entire marks are not overall similar in sound, appearance, meaning or connotation.

 

The applicant’s marks are used on the same type of goods.  These goods would be sold through the same channels of trade to the same purchasers.

 

If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services.  ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980).  TMEP §1207.01(b). 

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

When viewed in similar channels of trade and using general recollection consumers are likely to confuse SINUSAN and SINUSIN and mistakenly believe that the goods come from the same source.  The refusal to register the applicant’s mark in accordance with section 2(d) of the Trademark Act is repeated and made FINAL.

 

Please note that the only appropriate responses to a final action are (1) compliance with the outstanding requirements, if feasible, (2) filing of an appeal to the Trademark Trial and Appeal Board, or (3) filing of a petition to the Director if permitted by 37 C.F.R. §2.63(b). 37 C.F.R. §2.64(a); TMEP §715.01.  Regarding petitions to the Director, see 37 C.F.R. §2.146 and TMEP Chapter 1700.  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). 

 

 

/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.

 

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.