UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/528165
APPLICANT: EHOB, Inc.
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CORRESPONDENT ADDRESS: CLIFFORD W. BROWNING WOODARD, EMHARDT ET AL. LLP BANK ONE CENTER/TOWER 111 MONUMENT CIRCLE, SUITE 3700 INDIANAPOLIS INDIANA 46204-5137 |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom106@uspto.gov
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MARK: DERMAGARD
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CORRESPONDENT’S REFERENCE/DOCKET NO: 16016-77
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/528165
The assigned trademark examining attorney has reviewed the referenced application filed on July 7, 2003 and has determined the following.
Section 2(d) - Likelihood of Confusion Refusal
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. 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’s mark is DERMAGARD. The registrant’s mark is DERMAGARD. The marks are identical. Therefore, the first prong of the likelihood of confusion test is met.
The second prong of the likelihood of confusion test is a comparison of the goods and or services. The applicant’s goods are Human tissue therapy equipment for the prevention and management of tissue trauma, namely, a therapeutic pad to aid in the management of tissue trauma. And the registrant’s goods are human tissue therapy equipment for the prevention and management of tissue trauma, namely, convoluted mattress pads. The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, 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 and/or 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 Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
In this case, the marks are identical and the goods are identical. Consequently, the second prong of the likelihood of confusion test is met and registration is refused under Section 2(d) of the Trademark Act.
Although the trademark examining attorney has refused registration, 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.
/Naakwama Ankrah/
Trademark Attorney
Law Office 106
(703) 308-9106, ext. 462
(703) 746-8106 (fax)
Ecom106@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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.