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  76/558101

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Likelihood of Confusion - §2(d) 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, so resembles the mark in U.S. Registration No. 2505775, 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 has applied to register the mark ZEUS in typed form for “medical oxygen conservation device for delivery of oxygen.”  The registered mark is ZEUS in typed form for “medical apparatus, namely, anesthesia machines.”

 

The marks are identical in sound, appearance and meaning.  The marks are used or intended for use in connection with related goods.  Anesthesia is defined as:

 

an·es·the·sia also an·aes·the·sia (àn´îs-thê¹zhe)  noun

1.    Total or partial loss of sensation, especially tactile sensibility, induced by disease, injury, acupuncture, or an anesthetic, such as chloroform or nitrous oxide.

2.   Local or general insensibility to pain with or without the loss of consciousness, induced by an anesthetic.[1]

 

Anesthesia is used by medical professionals.  The applicant’s “medical oxygen conservation device” is also either used by or prescribed by professionals for individual use.  Therefore, the same consumers are likely to encounter both marks within the same trade channels, and will likely be confused as to the source of the goods.

 

The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those goods.  See In re Rexel Inc., 223 USPQ 830, 831, (TTAB 1984), and cases cited therein; TMEP §§1207.01 et seq.

 

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).  TMEP §1207.01(d)(vii). 

 

The overall similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  Even if doubt existed as to the issue of likelihood of confusion, the examining attorney must resolve it in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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 chooses to respond to the refusal to register, the applicant must also respond to the following issue.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  TMEP §1402.01.  The applicant may adopt the following identification, if accurate: 

             Medical oxygen conservation devices for delivery of oxygen, namely, oxygen regulators,

            in International Class 10.

 

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 that are not within the scope of goods set forth in the present identification.

 

The applicant may wish to consult the revised on-line identification manual on the PTO homepage for acceptable common names of goods and services at the following address: 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.

 

 

 

 

 

/LGKovalsky/

Laura Gorman Kovalsky

Trademark Attorney

703/308-9110, x147

703/746-8110 - fax

laura.kovalsky@uspto.gov

  (for informal inquiries only)

 

 

 

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.