UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/625354
APPLICANT: NIDEK CO., LTD.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
MARK: NAVEX
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: S-9302
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.
|
Serial Number 76/625354
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2293697. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
A likelihood of confusion determination requires a two-part analysis. First the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether 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 Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
The marks are compared 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.
Applicant’s mark, NAVEX and registrant’s mark NAVIX are similar in sound and appearance. The literal elements of the respective marks differ by only one letter and the marks are essentially phonetically identical and are thus similar sounding. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv).
Although the cited registration includes a stylized letter X since the literal portions of both marks are nearly identical in sound and appearance, the addition of the design element does not obviate the similarity between the marks in this case. In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii).
Applicant’s goods are “refractive surgery apparatus” and registrant’s services are “medical services.” The goods in the application are used in connection with the delivery of medical services, specifically surgery, so the goods and services are closely related. Even though applicant’s mark is filed in connection with goods and the cited registration covers services, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream).
Since the marks are confusingly similar and the goods and services are closely related there is a likelihood of confusion. Accordingly, the examining attorney refuses registration under Trademark Act Section 2(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.
Identification of Goods
The current wording used to describe the goods needs clarification because it is indefinite as to the purpose and use of the apparatus. Applicant may adopt the following identification of goods, if accurate: “Surgical apparatus, namely refractive instruments for use in laser corneal surgery” TMEP §1402.01.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
/John M. Wilke/
Attorney Examiner
Law Office 105
571-272-5871
571-273-5871
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.