| To: | B. Braun Medizintechnologie GmbH (znakcity@aol.com) |
| Subject: | TRADEMARK APPLICATION NO. 76567692 - DIALOG+ - Bra942T1 |
| Sent: | 10/4/05 9:45:28 AM |
| Sent As: | ECOM103@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/567692
APPLICANT: B. Braun Medizintechnologie GmbH
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
If no fees are enclosed, the address should include the words "Box Responses - No Fee." |
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MARK: DIALOG+
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CORRESPONDENT’S REFERENCE/DOCKET NO: Bra942T1
CORRESPONDENT EMAIL ADDRESS: |
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 76/567692
Applicant is requesting reconsideration of a final refusal dated March 3, 2005.
The trademark examining attorney has carefully reviewed the request for reconsideration and is not persuaded by applicant’s arguments. No new issue has been raised and no new compelling evidence has been presented with regard to the point(s) at issue in the final action. TMEP §715.03(a). Accordingly, applicant’s request for reconsideration is denied and the refusal is continued. 37 C.F.R. §2.64(b); TMEP §715.04.
The application file will be returned to the Trademark Trial and Appeal Board for resumption of the appeal.
Applicant incorrectly contends that the refusal on the ground of likelihood of confusion should be withdrawn on the basis of a draft consent agreement that is not signed or dated by either Applicant or the Registrant. Such an unsigned and undated agreement cannot be the basis for concluding that there is an actual agreement between the two parties.
In addition, the draft consent is not acceptable because it provides no reasons as to why the parties believe there is no likelihood of confusion. In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent agreement found to be “naked” because the agreement did not restrict the markets in such a way as to avoid confusion).
If applicant wishes to submit a proper consent agreement from the registrant consenting to the registration of the mark, this refusal will be reconsidered. Please note that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d). In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985); TMEP §1207.01(d)(viii).
Factors to be considered in weighing a consent agreement include: whether the agreement is unilateral or bilateral; whether the parties agree that no confusion exists; whether the trade channels of the respective goods are related and a statement indicating a clear indication of the respective, separate trade channels; whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and whether the marks have been used for a period of time without evidence of actual confusion. See In re Mastic, 829 F.2d 1114, 1115, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987) (relying on the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (C.C.P.A. 1973)).
/Mark V. Sparacino/
Trademark Attorney
Law Office 103
571-272-9708