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  76/555329

 

The assigned trademark examining attorney has reviewed the referenced application filed on October 28, 2003, and has determined the following.

 

The examining attorney will decide on the merits of the application when the applicant responds to the following. 37 C.F.R. §2.61(b).

 

Ownership

If the applicant is the owner of Registration Nos. 2189560 and 1806916 the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

Refusal – 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. 2809738 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the attached registration.

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods/services.  The overriding concern is to prevent buyer confusion as to the source of the goods/services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

 

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 applied to register the mark  “BRACCO BU UNIVERSITY” and design, for “printed material in the field of diagnostic imaging and CME accreditation” in class 16,  “internet website in the field of training and educational material for diagnostic imaging and CME accreditation” in class 41.  The Registrant owns the mark “BRACCO THE IMAGE OF INNOVATION” for “pharmaceutical products, namely, contrast media for in-vivo imaging” in class 5, “medical instruments and apparatus for diagnostic imaging procedures such as X-ray, magnetic resonance, ultrasound and nuclear medicine imaging, namely, ultrasonic surgical aspirators, scanners, injection pumps, and other diagnostic imaging tools, namely, catheters and guidewires; and ancillary devices for the aforesaid goods” in class 10, “dissemination of advertising in the field of pharmaceutical products and in the field of contrast media for in-vivo imaging; advertising services, namely, promoting the goods and services of others in the field of contrast media for in-vivo imaging through the dissemination of printed matter, namely, pamphlets, manuals and leaflets” in class 35  “educational services, namely, conducting congresses and conferences in the field of pharmaceutical products and contrast media for in-vivo imaging and distributing course materials in connection therewith; entertainment services in the nature of cultural development activities, namely, medical and scientific exhibits” in class 41 and “Medical diagnostic services pertaining to the diagnosis of medical conditions in individuals” in class 42.

 

The dominant portion of each of the marks is the term “BRACCO”.  Although both of the marks contain additional descriptive wording as well as designs, the overall commercial impression is the distinctive term “BRACCO”.  The marks therefore are similar in sight and sound.

 

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). 

 

The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  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/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 Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

The applicant and the registrant’s goods and services are similar.  Both goods and services deal with education in the field of diagnostic imaging.

 

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.

 

Furthermore, the following requirements must be addressed.

 

Identification / classification

The application identifies two classes however the applicant only submitted fees for one.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  37 C.F.R. §2.6(a)(1).   Also, the applicant must specify abbreviation in the identification.

 

The applicant may adopt the following recitation of services, if accurate: 

 

Class 16     Printed material [specify ie: books, magazines] in the field of diagnostic imaging and CME (continuing medical education) accreditation.

 

Class 41   Providing an Internet website in the field of training and [educational material indefinite / must specify ie: online books newsletters] in the field of diagnostic imaging and CME (continuing medical education) accreditation.

                       

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.   

 

Disclaimer

The applicant must disclaim the descriptive wording “UNIVERSITY” apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  The wording is merely descriptive because it is descriptive of the applicant’s goods and services.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP §1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use UNIVERSITY apart from the mark as shown.

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).

 

Translation/significance

The applicant must indicate whether the wording “ BRACCO” has any significance in the relevant trade or industry or as applied to the goods/services.  37 C.F.R. §2.61(b).

 

The applicant must submit an English translation of all foreign wording in the mark.  37 C.F.R. §2.61(b); TMEP §809.

 

 

 

 

 

/sdwyer/

Sean W. Dwyer

United States Patent

and Trademark Office

Phone:1-703-308-9103 Ext.470

 

 

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 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.