UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/697938
MARK: PHASE 4 GEL
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Innovative Medical Products Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The referenced application has been reviewed by the assigned trademark examining attorney. The applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The goods are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
In the case at hand, the applicant seeks registration of PHASE 4 GEL for use on or in connection with surgical gel pads.
The cited mark is PHASE 4 ORTHOTICS, in typed form, for use on or in connection with, I part, foot orthotics, namely, shoe inserts.
The proposed and cited marks are very similar in commercial impression with the common use of the language PHASE 4. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
Moreover, the applicant’s goods are broadly worded and could be used in or with shoes after surgery involving or affecting the foot. Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).
When the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii).
The applicant must respond to the requirement set forth below.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
The application identifies the goods as “surgical gel pads.” The specimen of use also makes it clear that the goods are comprised, at least in part, of “gel.” Accordingly, the word “GEL” in the proposed mark is merely descriptive for a feature of the goods and must be disclaimed apart from the mark as shown.
No claim is made to the exclusive right to use “GEL” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
SIGNIFICANCE OF THE WORDING “PHASE 4”
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
The identification of goods is indefinite. See TMEP §1402.01. The applicant must describe the nature and use of the goods. Please note that the identification of goods “must be specific, definite, clear, accurate, and concise.” TMEP §1402.01. In addition, the description of the goods “should be understandable to the average person and should not require an in-depth knowledge of the relevant field.” Id.
The applicant may adopt the following format for the identification, if accurate:
“surgical gel pads, namely, ______________________ (describe nature and use of goods),” in International Class 10.
On-line Acceptable Identification of Goods and Services Manual information: For the applicant’s reference the examining attorney provides the following address for the identification of goods and services manual on the United States Patent and Trademark Office’s web site:
http://tess2.gov.uspto.report/netahtml/tidm.html
The applicant may wish to consult the on-line identification manual for a listing of acceptable common names of goods and services. While the list is not exhaustive, the manual should give the applicant direction regarding proper international classification and information and specificity required in the applicant’s identification of goods and/or services.
SUBSTITUTE SPECIMEN OF USE REQUIRED
Specifically, the specimen appears to show the mark as gel incorporated in a splint rather than actual gel pads sold separate and apart from the splint.
Therefore, the applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05. If submitting a substitute specimen requires an amendment to the dates of use, the applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
If the applicant cannot satisfy the above requirements, the applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if the applicant amends the basis to Section 1(b), registration will not be granted until the applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), the applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33: “The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §2.35(b)(1).
The following declaration may be used to support an amendment to a Section 1(b), intent to use, application:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark for the identified goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
STATEMENT OF USE IN COMMERCE REQUIRED
The mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application on the application filing date.
15 U.S.C. §1051(a)(3)(C); 37 C.F.R. §2.34(a)(1)(i); TMEP §806.01(a).
The following declaration may be used to support the above statement:
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
ENTITY AND STATE OF ORGANIZATION REQUIRED
If the applicant is a corporation or association, then the applicant must set forth the U.S. state or country (for foreign applicants only) under whose laws applicant is organized. 37 C.F.R. §2.32(a)(3)(ii); TMEP §§803.03(c), 803.04.
If the applicant is a partnership or joint venture, then the applicant must specify the state or country under whose laws the partnership or joint venture is organized; if the applicant is a U.S. partnership or joint venture, the applicant must also list the names, legal entities and national citizenship or the U.S. state or country (if foreign) of organization or incorporation of all the general partners or joint venturers. 37 C.F.R. §2.32(a)(3)(ii)-(iv); TMEP §§803.03(b), 803.04.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Martha L. Fromm/
Martha L. Fromm
Trademark Attorney
Law Office 106
Phone: (571) 272-9320
Fax: (571) 273-9106 (formal responses)
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.