| 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 respectfully requests reconsideration of its amended identification of goods, “controller area network (CAN) interfaces of medical fluid injectors.” Applicant acknowledges that additions to the identification or a broadening of the scope of the identification are not permitted by the Trademark Office. TMEP §1402.06 et seq.
But according to the Trademark Manual of Examining Procedure, an applicant may amend its identification of goods to goods that are logically included within the initial identification. TMEP §1402.06(a). Applicant submits that in this case the revised goods are logically included within the original goods. The original identification of goods, “medical fluid injectors equipped with controller area network (CAN) interfaces” clearly encompasses the controller area network interfaces, as this is the single feature of the medical injector that is mentioned in the original identification.
Thus, applicant’s proposed amendment restricts its original identification of goods by inserting more specific language that falls within the scope of the original identification. The amended identification is not qualitatively different from the original identification, so applicant respectfully requests that it be accepted by the examining attorney in accordance with TMEP §1402.06(a).
As indicated in applicant’s prior response to Office action, the amended identification of goods more accurately describes applicant’s ACCULINK interface feature. Further, this amendment limits and 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 also respectfully requested of the continued refusal to register ACCULINK in view of Reg. No. 3,021,353. Applicant reiterates the arguments set forth in its response filed May 10, 2007, namely that applicant’s use of ACCULINK is not likely to cause confusion with the cited mark 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.
Applicant’s amended identification of goods makes it particularly apparent that applicant’s goods are sufficiently distinct from the goods in the cited registration that confusion is not likely. Specifically, as described in the prior response, 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. Applicant’s ACCULINK product is a connection port on its medical fluid injector that facilitates communication between the injector and medical imaging equipment such as CT scanners. See attached brochure (brochure.pdf).
In contrast, registrant’s goods are “medical stent systems comprising catheters, guide wires and stents,” a non-surgical alternative for treating atherosclerosis of the carotid artery. 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, highly sophisticated consumers. The goods of the parties are marketed in different channels of trade such that the two products are wholly unrelated in the minds of consumers.
Conclusion In view of the foregoing, applicant respectfully requests acceptance of its amended identification of goods, and withdrawal of the Section 2(d) refusal over Reg. No. 3,021,353. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_204912350-144109935_._BROCHURE.PDF |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS2\EXPORT13\770\136\77013608\xml2\ROA0002.JPG |
| \\TICRS2\EXPORT13\770\136\77013608\xml2\ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | brochure for applicant's product |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jcj/ |
| SIGNATORY'S NAME | Julie C. Jennings |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 08/27/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Aug 27 14:46:43 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XXX.X.XXX.XX-20 070827144643425008-770136 08-380a3fb63a682ee229c6ee 89f32cd74524c-N/A-N/A-200 70827144109935161 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Identification of Goods
Applicant respectfully requests reconsideration of its amended identification of goods, “controller area network (CAN) interfaces of medical fluid injectors.” Applicant acknowledges that additions to the identification or a broadening of the scope of the identification are not permitted by the Trademark Office. TMEP §1402.06 et seq.
But according to the Trademark Manual of Examining Procedure, an applicant may amend its identification of goods to goods that are logically included within the initial identification. TMEP §1402.06(a). Applicant submits that in this case the revised goods are logically included within the original goods. The original identification of goods, “medical fluid injectors equipped with controller area network (CAN) interfaces” clearly encompasses the controller area network interfaces, as this is the single feature of the medical injector that is mentioned in the original identification.
Thus, applicant’s proposed amendment restricts its original identification of goods by inserting more specific language that falls within the scope of the original identification. The amended identification is not qualitatively different from the original identification, so applicant respectfully requests that it be accepted by the examining attorney in accordance with TMEP §1402.06(a).
As indicated in applicant’s prior response to Office action, the amended identification of goods more accurately describes applicant’s ACCULINK interface feature. Further, this amendment limits and 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 also respectfully requested of the continued refusal to register ACCULINK in view of Reg. No. 3,021,353. Applicant reiterates the arguments set forth in its response filed May 10, 2007, namely that applicant’s use of ACCULINK is not likely to cause confusion with the cited mark 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.
Applicant’s amended identification of goods makes it particularly apparent that applicant’s goods are sufficiently distinct from the goods in the cited registration that confusion is not likely. Specifically, as described in the prior response, 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. Applicant’s ACCULINK product is a connection port on its medical fluid injector that facilitates communication between the injector and medical imaging equipment such as CT scanners. See attached brochure (brochure.pdf).
In contrast, registrant’s goods are “medical stent systems comprising catheters, guide wires and stents,” a non-surgical alternative for treating atherosclerosis of the carotid artery. 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, highly sophisticated consumers. The goods of the parties are marketed in different channels of trade such that the two products are wholly unrelated in the minds of consumers.
Conclusion
In view of the foregoing, applicant respectfully requests acceptance of its amended identification of goods, and withdrawal of the Section 2(d) refusal over Reg. No. 3,021,353.
