Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 76670647 has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant hereby responds to the Office Action dated April 18, 2007, to which a response is due by October 18, 2007.

The Examiner has refused registration because of a likelihood of confusion with the mark in U.S. Registration No. 2981351.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.

Reconsideration is requested based on the grounds

that the goods and market for applicant’s mark “ELDORADO”

are totally different from Registration No. 2981351;

“ELDORADO” for “computer software recorded on floppy discs,

compact discs and digital video discs for functional genome

analysis sold as a unit in Class 9.”  Applicant’s

 

product description, as amended, is “interactive patient

 

information and identification software used in connection with

 

the management and tracking of blood and blood products exclusively

 

for use by medical staff in blood banks and health care clinics” in

 

International Class 9 and “providing use of an on-line, non-

 

downloadable interactive patient information system for transfusion

 

management information in the nature of tracking and tracing blood

 

and blood products exclusively for use by medical staff in blood

banks and health care clinics” in International class 043.

The leading case in deciding likelihood of confusion is E.I. DuPonte de Nemours and Co., 177 USPQ 563 (CCPA 1973) which sets out in detail the factors to be considered.  There are thirteen factors, a number of which will not ordinarily be of significance in an ex parte application.  Essentially, the following factors are of significance in this case:  (2) the similarity of the goods; (3) the relationship between the parties’ channels of trade; and (4) the classes of prospective purchasers.

  The Similarity of the Goods

The Examiner has stated that the Class 9 goods are highly related because both include computer related goods and services for use in medical analysis.  Furthermore, the goods and services of both parties are used specifically for blood analysis, as genome testing and analysis involves the collection of blood samples.

The courts have noted that goods are related when they are sold to the same class of consumers.  Matrix Motor Co., Inc. v. Toyota Jidosha Kabushiki Kaisha, 290 F. Supp. 2d 1083, 1092  (C.D. Cal.2003)  However the fact that two goods fall within the same general field of products is not sufficient reason to conclude they are related.  Id.  Further, in M2 Software Inc. v. M2 Communications,Inc., 78 U.S.P.Q. 2d 1944, (Fed. Cir., 2006); the Federal Circuit upheld the TTAB’s finding that although goods are in the same media format, (Cd ROMs featuring music v. Cd ROMs in the fields of health, pharmacy, and medicine), they are unrelated.  The court found that it is the “sense of relatedness that matters” in assessing a likelihood of confusion.

This is not a confusion of the goods or services situation.  The products involved between these two marks have few, if any, similarities.  The Wyndgate product and services relate to blood supply safety and patient compatibility with specific blood products.  The product is used by blood banks and hospitals to make decisions about the suitability of a specific blood component for patient care purposes.  The Wyndgate product and services help guide and control the processes associated with the collection, processing, and distribution of blood and blood products for the purpose of transfusing a blood product to a patient.  Wyndgate’s product is classified as a Medical Device by the Food and Drug Administration because it aids in medical decision making.

     The Genomatix software is an on-line database used by researchers providing known gene sequences as well as proprietary algorithms for genome research.  Genome information is typically used for purposes such as disease modeling and genetic analysis for determining a genetic predisposition to a disease. It does not appear in any way to involve the collection, processing or distribution of blood in relation to transfusion of patient.

    

(3) The Relationship Between the Parties’ Channels of Trade

and

(4)  The Classes of Prospective Purchasers

Items three and four are interrelated and will be considered together here.  Wyndgate’s product and services are sold to discriminating purchasers in blood centers and hospitals.  The buyers are sophisticated buyers, often researching competitive software for two years or more before deciding on a purchase.  The purchase is typically made by a Blood Bank Chief Technologist or Chief Information Officer for use in Blood Banks or hospitals. The Wyndgate product and services are marketed to blood banks and hospitals for use in a clinical setting.  The product and services are not marketed to scientists or researchers since it would have no applicability in a research laboratory setting.  The Wyndgate product contract costs a minimum of $50,000.00 and up to $500,000.00 for the license fee to use the product and service plus a yearly charge of 25% of the sale price to cover maintenance and ongoing support.  Wyndgate provides an intensive two week training period for use of the product and the Wyndgate product is customized for each individual customer.  Following the training period, extensive customer maintenance and support follows the initial purchase.

         

On the other hand, the product owned by Genomatix, is genome annotation software.  It is based on the publicly available reference genome assemblies of 15 different organisms.  It is a database of genome information that is marketed to scientists and researchers in the field of gene regulation as more of a subscription type software, and it costs approximately $16,900.00 per year for Academic/Non-profit licenses.  No other price structures are listed on the Genomatix website.  Reference is made to the Genomatix website www.genomatix.de.  The Genomatix website also lists their customers substantiating that their client base is primarily academic which is completely different from Applicant’s market in blood banks and hospitals.  Finally, there is no evidence from the Genomatix website indicating that Genomatix is involved in the collection of blood samples nor is there any indication of a future expansion into this area.

     Another critical factor concerning likelihood of confusion between both marks is the sophistication of the class of prospective purchasers of the subject products.  The decision to buy a software product worth thousands of dollars is obviously not done on impulse, and involves a careful consideration of the reliability and dependability of the manufacturer and the seller of the product.  Further, the purchasers of applicants’ product and services enroll in a lengthy contract term, negating an impulse purchase.  In short, it is inconceivable that purchasers of the parties’ respective products could be confused as to the source of those products, or even about the relationship between Global Med Technologies, Inc. d/b/a Wyndgate Technologies and Genomatix.

     The product manufactured by applicant is not inexpensive and casually purchased, therefore a higher standard of care is exercised when purchasing.  “Confusion is less likely where the goods are expensive and are purchased after careful consideration than when they are purchased casually.”  J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §23:96 citing to Magnaflux v. Sonoflux Corp., 231 F.2d 669, 109 USPQ 313 (CCPA 1956).  In making purchasing decisions regarding “expensive” goods, the reasonably prudent person standard is elevated to the standard of the “discriminating purchaser.”  See Weiss Association, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ 2d. 1840 (F.Cir. 1990).  Clearly, the purchasers of this type of product and service are “discriminating purchasers” and the reasonably prudent buyer is assumed to take more care in purchasing this type of item.  Where the relevant buyer class is composed solely of professionals, or commercial purchasers, it is reasonable to set a higher standard of care than exists for consumers.

     In this case, the products are sold through different trade channels, used for different purposes, and purchasers are clearly sophisticated and in different classes.  The cumulative dissimilarities are sufficient to outweigh any similarity between the respective marks, and a discriminating purchaser is not likely to be confused between the two marks.

 

     Therefore, it is submitted that the application as now

presented for consideration is in condition to be passed to

publication and action to that end is courteously solicited.  If

any issues remain to be resolved, it is requested that the

Examining Attorney contact attorney for applicant.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for SOFTWARE FOR MANAGEMENT AND TRACKING OF BLOOD AND BLOOD PRODUCTS
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed: Class 009 for INTERACTIVE PATIENT INFORMATION SOFTWARE USED IN CONNECTION WITH THE MANAGEMENT AND TRACKING OF BLOOD AND BLOOD PRODUCTS EXCLUSIVELY FOR USE BY MEDICAL STAFF IN BLOOD BANKS AND HEALTH CARE CLINICS
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 042 for PROVIDING TEMPORARY USE OF ON-LINE, NONDOWNLOADABLE SOFTWARE FOR TRANSFUSION MANAGEMENT INFORMATION IN THE NATURE OF TRACKING AND TRACING BLOOD AND BLOOD PRODUCTS
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

Proposed: Class 042 for PROVIDING USE OF AN ON-LINE, NON-DOWNLOADABLE INTERACTIVE PATIENT INFORMATION SYSTEM FOR TRANSFUSION MANAGEMENT IN THE NATURE OF TRACKING AND TRACING BLOOD AND BLOOD PRODUCTS EXCLUSIVELY FOR USE BY MEDICAL STAFF IN BLOOD BANKS AND HEALTH CARE CLINICS
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).

ADDITIONAL STATEMENTS
Translation
"The foreign wording in the mark translates into English as THE GILDED ONE."

SIGNATURE(S)
Declaration Signature
I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.
Response Signature
Signature: /ELLEN REILLY/     Date: 10/17/2007
Signatory's Name: ELLEN REILLY
Signatory's Position: ATTORNEY OF RECORD

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 76670647
Internet Transmission Date: Wed Oct 17 18:49:20 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2007101718492046
9779-76670647-4000f6ed91695776fa2e5a5be9
79024-N/A-N/A-20071017181924343320