Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION - FINAL

 

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  76/476265

 

This letter responds to the applicant's communication filed on September 29, 2003.  The applicant’s amended recitation of services for INT. CLASS 42 is accepted and made of record.

 

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 marks shown in U.S. Registration Nos. 1984259 and 2598763 as to be likely, when used on the identified goods/services, to cause confusion, or to cause mistake, or to deceive.

 

The examining attorney has considered the applicant's arguments carefully and now withdraws Registration No. 1984259 as a barrier to registration.  However, the examining attorney has found the applicant’s arguments concerning Registration No. 2598763 unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

Likelihood of Confusion

The test under Section 2(d) of the Trademark Act is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion.  See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.

 

In the instant case, the applicant applied to register the mark NEUROPLEX. The cited registration is for the mark NEUROPLEX.   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).  These marks are identical.  The applicant does not dispute that the marks are identical.

 

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).

 

Applicant seeks to register its mark for, as amended, "Diagnostic preparations for scientific or research use; Diagnostic preparations for clinical or medical laboratory use; Medical laboratory services; laboratory research in the field of molecular diagnostics."  Registrant's goods are "electrical and scientific apparatus, namely medical imaging systems."  The applicant argues that the goods and services are unrelated because its goods and services are used for molecular diagnostic purposes and are distinct from medical imaging systems.  The applicant fails to provide any evidence as to why the applicant’s goods and services are “distinct” from the registrant’s medical imaging goods. 

 

The applicant’s molecular diagnostic goods and services are highly related to the registrant’s medical imaging goods because medical imaging devices are used for molecular research.  The examining attorney attaches various articles obtained from the Internet on December 13, 2003, illustrating that medical imaging devices are used in molecular research.  The applicant’s goods, namely, diagnostic preparations, may be used in conjunction with the registrant’s medical imaging devices for molecular diagnostic research.  The applicant may use devices similar to those offered by the registrant in its medical laboratory services.  Consumers in the related industry understand that medical imaging devices are used in molecular research and may confuse the applicant’s goods and services sold under the mark NEUROPLEX as originating from the same source as the registrant’s medical imaging devices sold under the mark NEUROPLEX.

 

The applicant argues that no likelihood of confusion exists between the marks because they move in separate trade channels.  The registrant’s identification of goods does not limit it to certain channels of trade.  Therefore, the registrant is free to market its medical imaging devices in all normal channels of trade, including those selected by the applicant.

 

Lastly, the applicant argues that the goods are not confusingly similar because its customers tend to be sophisticated.  The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).

 

In view of all of the foregoing, the refusal pursuant to Trademark Act Section 2(d) is repeated and made FINAL

Proper Response to a Final Action

 

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). 

 

 

 

 

/Curtis French/

Trademark Attorney

Law Office 115

ecomm115@uspto.gov

703-308-9115 ext. 250

 

 

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.