| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 76617366 |
| LAW OFFICE ASSIGNED | LAW OFFICE 105 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney has again refused registration of Applicant’s mark, PsoriaStat alleging there to be a likelihood of confusion with the mark in U.S. Registration No. 2,689,045, i.e., PsoriastatPE2 , and has made the refusal final. This refusal is again traversed. Initially, applicant has received information (originating from the registrant and attached hereto) showing that the registered mark is no longer in use. Applicant requests that, in the event the Examining Attorney does not withdraw the refusal, action on this application be suspended under 37 C.F.R. 2.67 for sufficient time for the registration to be canceled.
As noted in the attached letter, registrant's product has been discontinued. It is likely the registration will be canceled either because registrant cannot file a declaration of use or, if necessary through a cancellation proceeding based on abandonment. That being the case, withdrawal of the likelihood of confusion refusal for this and the following reasons or suspension of action is requested.
As previously noted, a likelihood of confusion determination requires a two-part analysis. First, the marks are compared for similarities in appearance, sound, contention and commercial impression. In re E.I. Dupont Date Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). Secondly, the goods or services are compared to determined whether they are similar or related or whether the activity surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG 218 U.S.P.Q. 823 (TTAB 1983); Trademark Manual Examining Procedure (TMEP) 1207.01 et seq.
In comparing the respective marks for similarities in appearance, sound, contention and commercial impression, the Examining Attorney has alleged Applicant to have merely deleted the PE2 of the Registrant’s mark. However, in comparing the marks, one must compare the mark’s as a whole. The “PE2” portion of the Registrant’s mark is very unique part of the mark and it use, in combination with the word Psoriastat, creates a separate commercial impression from Applicant’s mark. Moreover, Applicants is in stylized form with a capital “S” in the middle of the mark. Registrant’s mark has a corresponding “s” in lower case form. Because of these differences, the respective marks, as a whole, create a separate commercial impression.
Comparing the respective goods, the registered marks is used for a “natural pharmaceutical preparation for the treatment of psoriasis and eczema.” Applicant’s mark, is now more specifically indicated in the amended identification of goods, is for treatment of fungal conditions that may be associated with psoriasis, not for the treatment of psoriasis itself. Accordingly, confusion is unlikely.
In view of the differences between the respective, as a whole, and the respective goods, and in view of the fact the registered mark is no longer in use, Applicant submits there is no likelihood of confusion between Applicants mark and the mark of the U.S. Registration No. 2,689,045. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME | \\TICRS\EXPORT6\IMAGEOUT6 \766\173\76617366\xml1\RO A0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | Letter showing registered mark is no longer in use. |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Alan E. Schiavelli/ |
| SIGNATORY NAME | Alan E. Schiavelli |
| SIGNATORY POSITION | Attorney |
| SIGNATURE DATE | 03/14/2006 |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Mar 14 14:48:56 EST 2006 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XXX.XXX -20060314144856584692-766 17366-3201aeb20a237ea5d5c d9d95ec313fa5fa6-N/A-N/A- 20060314143152600907 |
| PTO Form 1957 (Rev 5/2006) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney has again refused registration of Applicant’s mark, PsoriaStat alleging there to be a likelihood of confusion with the mark in U.S. Registration No. 2,689,045, i.e., PsoriastatPE2 , and has made the refusal final. This refusal is again traversed.
Initially, applicant has received information (originating from the registrant and attached hereto) showing that the registered mark is no longer in use. Applicant requests that, in the event the Examining Attorney does not withdraw the refusal, action on this application be suspended under 37 C.F.R. 2.67 for sufficient time for the registration to be canceled.
As noted in the attached letter, registrant's product has been discontinued. It is likely the registration will be canceled either because registrant cannot file a declaration of use or, if necessary through a cancellation proceeding based on abandonment. That being the case, withdrawal of the likelihood of confusion refusal for this and the following reasons or suspension of action is requested.
As previously noted, a likelihood of confusion determination requires a two-part analysis. First, the marks are compared for similarities in appearance, sound, contention and commercial impression. In re E.I. Dupont Date Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). Secondly, the goods or services are compared to determined whether they are similar or related or whether the activity surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG 218 U.S.P.Q. 823 (TTAB 1983); Trademark Manual Examining Procedure (TMEP) 1207.01 et seq.
In comparing the respective marks for similarities in appearance, sound, contention and commercial impression, the Examining Attorney has alleged Applicant to have merely deleted the PE2 of the Registrant’s mark. However, in comparing the marks, one must compare the mark’s as a whole. The “PE2” portion of the Registrant’s mark is very unique part of the mark and it use, in combination with the word Psoriastat, creates a separate commercial impression from Applicant’s mark. Moreover, Applicants is in stylized form with a capital “S” in the middle of the mark. Registrant’s mark has a corresponding “s” in lower case form. Because of these differences, the respective marks, as a whole, create a separate commercial impression.
Comparing the respective goods, the registered marks is used for a “natural pharmaceutical preparation for the treatment of psoriasis and eczema.” Applicant’s mark, is now more specifically indicated in the amended identification of goods, is for treatment of fungal conditions that may be associated with psoriasis, not for the treatment of psoriasis itself. Accordingly, confusion is unlikely.
In view of the differences between the respective, as a whole, and the respective goods, and in view of the fact the registered mark is no longer in use, Applicant submits there is no likelihood of confusion between Applicants mark and the mark of the U.S. Registration No. 2,689,045.
