UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/635582
APPLICANT: Medtrode, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: MEDTRODE
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CORRESPONDENT’S REFERENCE/DOCKET NO: 26446-205201
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 76/635582
The assigned examining attorney has reviewed the referenced application and has determined the following.
I. SEARCH OF THE OFFICE RECORDS
Application Refused--Section 2(d) Refusal—Likelihood of Confusion
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 and/or services, so resembles the mark in U.S. Registration No. 1768538 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §1207.01 et seq. (Please 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 (CCPA 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 section 1207.01 et seq.
The applicant’s proposed mark is MEDTRODE; the registered mark is MEDITRODE.
Comparison of the Respective Marks
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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.
The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
The examining attorney refuses registration of the proposed mark MEDTRODE on the grounds that it will cause a likelihood of confusion with the registered MEDITRODE mark. The applicant’s proposed mark so resembles the registered mark as to render confusion as to source likely. The marks are essentially phonetic equivalents. Indeed, the only difference between the marks is the additional letter “I” in the cited registration. Similarity in sound alone is sufficient to find a likelihood of confusion. 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). Even slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983). Because the applicant’s proposed mark so resembles the registered mark in relation to sound, appearance, and meaning, confusion as to source is likely.
Comparison of the Respective Goods and/or Services
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source. On-line Careline Inc v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
If the marks of the respective parties are identical or highly similar, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
The examining attorney refuses registration of the mark MEDTRODE because the channels of trade in which the applicant’s goods travel are similar to those used by the registrant. The applicant’s goods are identified generally as neurologic electrodes for medical and research use. The goods named in the registration comprise “electrodes for use with iontophoretic drug delivery devices.”
Since the respective goods are both medical electrodes, they are related and likely to be found in the same channels of trade. Therefore, given the similarity between the respective marks, the relatedness of the goods, and the similarity between the channels of trade, it is likely consumers will be confused as to the ultimate source of these products and associate the registered mark with the applicant’s proposed mark. Accordingly, the examining attorney refuses registration of the applicant’s proposed mark.
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(s):
Applicant Filed Pursuant to Section 1(b) and Section 44(d)—Advisory Statement Regarding Filing the Applicant’s Foreign Registration
The applicant has filed asserting a bona fide intention to use the mark in commerce under Trademark Act §1(b), 15 U.S.C. §1051(b), and claiming priority under §44(d), 15 U.S.C. §1126(d), based on a foreign application.
Under these circumstances, the applicant may choose: 1) to rely solely on its intent to use the mark in commerce as the basis for registration; 2) to rely solely on its expected foreign registration as the basis for registration; or 3) rely on both its intent to use the mark in commerce as well as its expected foreign registration as the basis for registration.
If the applicant wishes to proceed relying on the applicant's intent to use the mark in commerce under Trademark Act Section 1(b) as the sole basis for registration, with the claim of priority under Section 44(d), then the applicant should so advise the examining attorney. TMEP §§806.02(f) and 806.04(b). If the applicant chooses to rely solely on its Section 1(b) claim, this Office will approve the case for publication without waiting for the applicant to submit a certified copy of the foreign registration once all other outstanding issues are resolved. While the application may be approved for publication, the mark will not be registered however, until an acceptable allegation of use has been filed.
If the applicant does not so indicate, this Office will presume that the applicant wishes to rely on the foreign registration as an additional basis for registration and will expect the applicant to submit the certification or certified copy of the foreign registration and, if appropriate, an English translation signed by the translator. TMEP §§1004.01 and 1004.01(b).
All the characters in the applicant’s proposed drawing are presented in acceptable standard characters. Therefore, 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); TMEP §807.03(a).
PLEASE NOTE: If the applicant amends to a standard character claim, then the applicant must ensure the foreign registration also contains a standard character claim. When an application contains a standard character claim and is filed pursuant to Trademark Act Section 44(d) or 44(e) it must be supported by a foreign registration that also contains a standard character claim. TMEP §807.03(f).
If the foreign registration certificate does not indicate the mark is in standard characters or the equivalent, the applicant will be required to either: (1) submit a statement that “under the law of the country of origin, the foreign application or registration includes a standard character claim,” or (2) delete the standard character claim from the U.S. application. 37 C.F.R. §2.52; TMEP §§807.03(f) and 1011.01.
Applicant Improperly Identified the Goods and/or Services
The applicant has provided this Office with the following identification: “medical devices, namely, neurologic electrodes for investigating and measuring neuronal performance and for stimulating and recording neuronal performance in humans and in there living organisms, sold primarily for medical and research use,” in International Class 010.
The wording in the identification of goods is unacceptable as indefinite. The current identification needs clarification because it could include goods classified in other international classes. TMEP §§1402.01 and 1402.03. Specifically, electrodes for medical diagnostic use are classified are properly classified in International Class 010, while electrodes for laboratory and medical research use are properly classified in International Class 009.
The applicant must amend the recitation to specify the common commercial name of the goods. If there is no common commercial name for the products, the applicant must adequately describe the nature of the goods and indicate their intended use(s). TMEP §§1402.01.
The applicant may amend the identification to substitute the following wording, if accurate:
Proposed identification for International Class 009:
Medical or laboratory research devices, namely, neurologic electrodes for investigating, measuring, stimulating and recording neuronal performance in humans and in other living organisms for laboratory or medical research use.
Proposed identification for International Class 010:
Medical diagnostic devices, namely, neurologic electrodes for measuring, stimulating and recording neuronal performance in humans and other living organisms for medical diagnostic use.
If the applicant adopts the proposed identifications, the applicant must prosecute this application as a multiple-class application and pay additional filing fees. The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.61(a)(i) and (ii); TMEP §810.
Please Note: While an application may be amended to clarify or limit the identification of goods and/or services, adding to or broadening the scope of the identification goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend the identification to include any products or services that are not within the scope of the goods and/or services originally set forth in the application.
THE OFFICE PROVIDES AN ONLINE IDENTIFICATION REFERENCE: In order to assist applicants properly identify goods and/or services, the Office now provides an online searchable database of acceptable identifications, along with their international classifications, in the Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
No set form is required for response to this Office action. When responding to this Office action, the applicant must make sure to respond in writing to each refusal and requirement raised. The applicant must sign and date the response. In addition, the applicant should also include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) the applicant's telephone number to speed up further processing.
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.
/Michael Tanner/
Michael Tanner
Trademark Attorney
Law Office 102
Telephone: 571-272-9706
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.