UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/568996
APPLICANT: BAVARIAN NORDIC A/S
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: IMVACTRA
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CORRESPONDENT’S REFERENCE/DOCKET NO: BN FTM 17
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 76/568996
The assigned examining attorney has reviewed the referenced application and determined the following:
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 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. 1592717 (IMMVAC) as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. The examining attorney looks 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 (CCPA 1973). The examining attorney also compares 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).
The registrant’s mark is IMMVAC (and design) for “veterinary preparations, namely anti-endotoxin vaccines and antiserum for horses and cattle, engineered to help prevent and treat endotoxemia.”
The applicant’s proposed mark is IMVACTRA for “pharmaceutical preparation.”
The goods may be identical. Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers. TMEP §1207.01(a)(iii).
If the goods of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods. ECI Division of E Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980). TMEP §1207.01(b). Therefore, since it is presumed that the applicant’s goods encompass the registrant’s goods, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would otherwise apply. Nonetheless, the marks are similar.
Although the registrant’s mark contains a design element, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976). TMEP §1207.01(c)(ii). The IMMVAC wording of the registrant’s mark is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods.
The sound of the applicant’s IMVACTRA mark incorporates the registrant’s IMMVAC mark. The applicant adds a final –TRA syllable to the registrant’s mark. The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”). TMEP §1207.01(b)(iii).
The Trademark Trial & Appeal Board has indicated that where the marks being compared are used on medicinal products, great care must be taken to prevent any possibility of confusion and that a "higher standard" applies to ensure that no harmful confusion results. See: Schering Corp. v. Alza Corp., 207 USPQ 504 (TTAB 1980). A likelihood of confusion in the area of pharmaceuticals can lead to serious consequences making it is even more important to avoid that which will cause such confusion. See: American Home Products Corporation v. USV Pharmaceutical Corporation, 190 USPQ 357 (TTAB 1976) and cases cited therein. In the field of medicinal remedies, the Courts may not speculate as to whether there is probability of confusion between similar names. If there is any possibility of such confusion in the case of medicines, public policy requires that the use of the confusingly similar name be enjoined. See: Morgenstern Chemical Company, Inc. v. G.D. Searle & Company, 116 USPQ 480 (CA3 1958).
Because of the similarity between the parties’ marks and goods, a likelihood of confusion exists, and the examining attorney must refuse registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
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 issues.
The applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
The identification of goods is indefinite. The applicant must amend the identification to more clearly state the nature of the goods by indicating the specific disease or condition to be treated by the pharmaceutical preparations; or, if appropriate, by naming the specific type of preparations. TMEP § 1402.01.
If accurate, the applicant may use:
Pharmaceutical vaccines against pneumococcal infections, in class 5.
For your convenience, the Trademark Acceptable Identification of Goods and Services Manual is available on the Office’s web site at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/. The Manual includes explanations and notices of classification policy, and provides examples of acceptable identifications.
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.
To permit proper consideration of the application, the applicant must submit information as to whether IMVACTRA has any significance or meaning in relation to the applicant’s goods. 37 C.F.R. Section 2.61(b); TMEP § 814.
Trademark Operation Relocating October And November 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Robert Coggins/
Attorney-Advisor
Law Office 115
U.S. Patent and Trademark Office
robert.coggins@uspto.gov
703-308-9115 x111
To reach the undersigned attorney by telephone after October 21, 2004, please call (571) 272-9467.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.