| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 77013608 |
| LAW OFFICE ASSIGNED | LAW OFFICE 115 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Identification of Goods
Applicant requests that its identification of goods be amended from “medical fluid injectors equipped with controller area network (CAN) interfaces” to the following: “controller area network (CAN) interfaces of medical fluid injectors.” This more accurately describes applicant’s ACCULINK interface feature, which is also described on the attached brochure (brochure.pdf). Further, this amendment clarifies applicant’s goods and is within the scope of the original identification, so should be permissible under TMEP § 1402.06.
Section 2(d) Refusal
Reconsideration is respectfully requested of the refusal to register ACCULINK in view of Reg. No. 3,021,353. Applicant submits, based on various factors including those recited in In re E.I. DuPont DeNemours & Co., 177 U.S.P.Q. 563 (CCPA 1973), that applicant’s use of ACCULINK is not likely to cause confusion vis-a-vis the cited mark. In particular, confusion is not likely in view of, inter alia, the distinctions between the respective goods, the distinct classes of customers for the goods, and the conditions under which and buyers to whom sales are made.
It is respectfully submitted that applicant’s goods are sufficiently distinct from the goods in the cited registration that confusion is not likely. Specifically, applicant’s goods are a technological feature of its medical injectors that allow the injectors to communicate with imaging equipment such as computed tomography (CT) scanners. CT scans are medical procedures that use radiation to generate a three dimensional image of the internal details of an organ or body part. Some CT scans also employ injected contrast agents such as dyes to create a more accurate image of the subject. Among other medical equipment, applicant manufactures medical fluid injectors designed to inject contrast agents into patients for medical imaging procedures.
Applicant’s ACCULINK product is a connection port on its injector that facilitates communication between the injector and medical imaging equipment such as CT scanners. See attached brochure (brochure.pdf). Applicant’s ACCULINK feature allows imaging technologists to program and control the imaging procedure, including the injection of medical fluid(s), from the imaging system control panel. For example, applicant’s ACCULINK interface would allow an imaging technologist to alter the flow of contrast media from the medical injector during a CT scan of a patient’s head.
In contrast, registrant’s goods are “medical stent systems comprising catheters, guide wires and stents.” Registrant’s goods are a non-surgical alternative for treating atherosclerosis of the carotid artery, an artery that serves the head, neck, and chest. See attached excerpt from registrant’s web site (abbott.pdf) and attached entry for “common carotid artery” on www.wikipedia.org (carotid.pdf). Registrant’s goods are used in the cardiovascular field for treating patients with blockage of the carotid artery who are at risk for conventional cardiac surgery. Registrant’s catheters and guide wires are used to place stents in patients’ arteries and the stents are left there permanently to increase the diameter of the artery.
Due to the distinctions between the respective goods, confusion between applicant’s ACCULINK mark and the cited mark is unlikely.
Further, applicant’s and registrant’s goods are directed to different customers. Applicant’s goods are sold to and used by radiologists, x-ray and imaging technicians, and radiology departments of hospitals. In contrast, registrant’s stents, catheters, and guidewires appear to be used exclusively by cardiologists and vascular surgeons. Radiologists and cardiologists, while both medical doctors, are not generally found in the same departments and do not typically use the same equipment. Both applicant’s and registrant’s customers are highly sophisticated consumers of medical equipment, and are not likely to be confused as to the source of either of the company’s products. The products are directed to distinctive classes of sophisticated customers, and to the extent there would be any overlap in particular customers, such overlap would be de minimis and fortuitous.
It is well established that if the goods or services in question are not related or are marketed to different types of consumers or in different channels of trade, then “even if the marks are identical, confusion is not likely.” TMEP 1207.01(a)(i). For example, the Federal Circuit has held that RITZ for use with kitchen textiles is not confusingly similar to RITZ for use with cooking and wine selection classes, even though the parties’ goods and services might be used together. Shen Manufacturing Co. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed. Cir. 2004). The Federal Circuit stated that just because the parties’ goods and services might be used together did not mean that they were “related” for likelihood of confusion purposes, since the relatedness finding is just one aspect of the factual inquiry as to whether the goods and services are related in the minds of the consuming public. Id. at 1355-56. Citing the distinct type and category of goods and services, the court concluded that, “there is no indication that the consuming public would perceive them as originating from the same source.” Id. at 1356.
Just as was the case in Shen Manufacturing, there is no indication that applicant’s ACCULINK CAN interfaces of its medical fluid injectors and registrant’s ACCULINK stent systems are related in the minds of the highly sophisticated consuming public.
Conclusion
In view of the foregoing, applicant respectfully requests withdrawal of the Section 2(d) refusal over Reg. No. 3,021,353. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_204912350-181749800_._BROCHURE.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0002.JP G |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0003.JP G | |
| ORIGINAL PDF FILE | evi_204912350-181749800_._ABBOTT.PDF |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0004.JP G |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0005.JP G | |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0006.JP G | |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0007.JP G | |
| ORIGINAL PDF FILE | evi_204912350-181749800_._Carotid.pdf |
| CONVERTED PDF FILE(S) (7 pages) |
\\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0008.JP G |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0009.JP G | |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0010.JP G | |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0011.JP G | |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0012.JP G | |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0013.JP G | |
| \\TICRS2\EXPORT12\770\136 \77013608\xml1\ROA0014.JP G | |
| DESCRIPTION OF EVIDENCE FILE | brochure; web pages |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | |
| Medical fluid injectors equipped with controller area network (CAN) interfaces | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | |
| controller area network (CAN) interfaces of medical fluid injectors | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /jcj/ |
| SIGNATORY'S NAME | Julie C. Jennings |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 05/10/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu May 10 18:43:40 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XXX.X.XXX.XX-20 070510184340802015-770136 08-37061ef5e4ca833336394c afd295f3236-N/A-N/A-20070 510181749800942 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Identification of Goods
Applicant requests that its identification of goods be amended from “medical fluid injectors equipped with controller area network (CAN) interfaces” to the following: “controller area network (CAN) interfaces of medical fluid injectors.” This more accurately describes applicant’s ACCULINK interface feature, which is also described on the attached brochure (brochure.pdf). Further, this amendment clarifies applicant’s goods and is within the scope of the original identification, so should be permissible under TMEP § 1402.06.
Section 2(d) Refusal
Reconsideration is respectfully requested of the refusal to register ACCULINK in view of Reg. No. 3,021,353. Applicant submits, based on various factors including those recited in In re E.I. DuPont DeNemours & Co., 177 U.S.P.Q. 563 (CCPA 1973), that applicant’s use of ACCULINK is not likely to cause confusion vis-a-vis the cited mark. In particular, confusion is not likely in view of, inter alia, the distinctions between the respective goods, the distinct classes of customers for the goods, and the conditions under which and buyers to whom sales are made.
It is respectfully submitted that applicant’s goods are sufficiently distinct from the goods in the cited registration that confusion is not likely. Specifically, applicant’s goods are a technological feature of its medical injectors that allow the injectors to communicate with imaging equipment such as computed tomography (CT) scanners. CT scans are medical procedures that use radiation to generate a three dimensional image of the internal details of an organ or body part. Some CT scans also employ injected contrast agents such as dyes to create a more accurate image of the subject. Among other medical equipment, applicant manufactures medical fluid injectors designed to inject contrast agents into patients for medical imaging procedures.
Applicant’s ACCULINK product is a connection port on its injector that facilitates communication between the injector and medical imaging equipment such as CT scanners. See attached brochure (brochure.pdf). Applicant’s ACCULINK feature allows imaging technologists to program and control the imaging procedure, including the injection of medical fluid(s), from the imaging system control panel. For example, applicant’s ACCULINK interface would allow an imaging technologist to alter the flow of contrast media from the medical injector during a CT scan of a patient’s head.
In contrast, registrant’s goods are “medical stent systems comprising catheters, guide wires and stents.” Registrant’s goods are a non-surgical alternative for treating atherosclerosis of the carotid artery, an artery that serves the head, neck, and chest. See attached excerpt from registrant’s web site (abbott.pdf) and attached entry for “common carotid artery” on www.wikipedia.org (carotid.pdf). Registrant’s goods are used in the cardiovascular field for treating patients with blockage of the carotid artery who are at risk for conventional cardiac surgery. Registrant’s catheters and guide wires are used to place stents in patients’ arteries and the stents are left there permanently to increase the diameter of the artery.
Due to the distinctions between the respective goods, confusion between applicant’s ACCULINK mark and the cited mark is unlikely.
Further, applicant’s and registrant’s goods are directed to different customers. Applicant’s goods are sold to and used by radiologists, x-ray and imaging technicians, and radiology departments of hospitals. In contrast, registrant’s stents, catheters, and guidewires appear to be used exclusively by cardiologists and vascular surgeons. Radiologists and cardiologists, while both medical doctors, are not generally found in the same departments and do not typically use the same equipment. Both applicant’s and registrant’s customers are highly sophisticated consumers of medical equipment, and are not likely to be confused as to the source of either of the company’s products. The products are directed to distinctive classes of sophisticated customers, and to the extent there would be any overlap in particular customers, such overlap would be de minimis and fortuitous.
It is well established that if the goods or services in question are not related or are marketed to different types of consumers or in different channels of trade, then “even if the marks are identical, confusion is not likely.” TMEP 1207.01(a)(i). For example, the Federal Circuit has held that RITZ for use with kitchen textiles is not confusingly similar to RITZ for use with cooking and wine selection classes, even though the parties’ goods and services might be used together. Shen Manufacturing Co. v. Ritz Hotel Ltd., 73 USPQ2d 1350 (Fed. Cir. 2004). The Federal Circuit stated that just because the parties’ goods and services might be used together did not mean that they were “related” for likelihood of confusion purposes, since the relatedness finding is just one aspect of the factual inquiry as to whether the goods and services are related in the minds of the consuming public. Id. at 1355-56. Citing the distinct type and category of goods and services, the court concluded that, “there is no indication that the consuming public would perceive them as originating from the same source.” Id. at 1356.
Just as was the case in Shen Manufacturing, there is no indication that applicant’s ACCULINK CAN interfaces of its medical fluid injectors and registrant’s ACCULINK stent systems are related in the minds of the highly sophisticated consuming public.
Conclusion
In view of the foregoing, applicant respectfully requests withdrawal of the Section 2(d) refusal over Reg. No. 3,021,353.
