Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/503449

 

This application was suspended on September 6, 2003 pending the disposition of earlier filed application nos. 78-142853 and 78-975086.  Serial no. 78-142853 is withdrawn as a potential likelihood of confusion cite, as it has been abandoned.  Earlier filed application no. 76-503449 has matured into a registration which is cited against the applicant in the refusal below.

 

Section 2(d) - Likelihood of Confusion Refusal

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2999273.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); 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 proposed mark is COVAL for:

 

PHARMACEUTICAL PRODUCTS AND SUBSTANCES, NAMELY, ANALGESIC/ANTIRHEUMATIC AGENTS, ANTIDIMENTIA MEDICATIONS, NOOTROPIC MEDICATIONS, ANTIEPILEPTIC MEDICATIONS, DEHABITUATING MEDICATIONS, HYPNOTIC AND SEDATIVE AGENTS, NEUROPATHOLOGICAL PREPARATIONS AND OTHER NEUROTROPIC AGENTS, ANTISPASMOTIC MEDICATIONS, ANTI-PARKINSON AGENTS AND OTHER AGENTS EFFECTIVE AGAINST EXTRAPYRAMIDAL DISTURBANCES, PSYCHOPHARMA-COLOGICAL AGENTS, ANTIHYPERTONIC MEDICATIONS, AGENTS FOR ARTERIO-SCLEROSIS, BETA-RECEPTOR BLOCKERS AND CALCIUM CHANNEL BLOCKERS, INHIBITORS OF THE RENIN-ANGIOTENSIN SYSTEM, DIURETIC AGENTS, AGENTS PROMOTING CIRCULATION, LIPID SUPPRESSORS, GASTROINTESTINAL AGENTS, MEDICATIONS FOR MIGRAINE, UROLOGIC MEDICATIONS, IN CLASS 5.

 

The registered mark is COVAL for:

 

Pharmaceutical preparations for the treatment of cancer and infectious disease, in Class 5.

 

The marks are identical.  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.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

The parties provide related pharmaceutical preparations.  The courts and scholarly authorities have long recognized a “doctrine of greater care” in pharmaceutical cases because of life and death risks to consumers regarding trademarks for drugs.  This doctrine mandates a conservative approach to determining a likelihood of confusion between trademarks used on pharmaceutical preparations due to the harmful (and potentially lethal) consequences of mistakenly taking the wrong medication.  “For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations.”  3 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §23:12; (4^th ed. 2003); See also Glenwood Laboratories, Inc., v. American Home Products Corp., 455 F.2d 1384, 173 USPQ 19 (C.C.P.A. 1972); Sterling Drug, Inc., v. Sankyo Co., 139 USPQ 395 (TTAB 1963); American Home Products Corp. v. USV Pharmaceutical Corp., 190 USPQ 357 (TTAB 1976); Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980).  Thus courts have allowed a lower threshold of proof of confusing similarity for drugs and medicinal preparations.

 

Consumers who see the parties identical marks used on their related pharmaceutical preparations are likely to be confused about the goods.

 

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.

 

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

 

 

 

 

 

 

 

/Ellen Awrich/

Trademark Examining Attorney

Law Office 116

571-272-9123

ellen.awrich@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.