| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 77105207 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Amendment
Please delete the existing identification of goods in Intl. Class 1 and insert the following:
Chemicals, biochemicals and organic preparations for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives, all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; kits comprising enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; cell cultures for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory use and scientific use
Remarks
In the Office Action issued on June 5, 2007, the trademark examining attorney refused registration of the Applicant’s IMPRINT mark for chemical, biochemical and organic preparations in Intl. Class 1 on likelihood of confusion grounds in view of the prior registered mark IMPRINT for use with chemicals used in the manufacture of paper, excluding sensitized photographic proofing paper. Based on the inherent differences between the goods designated in the cited registration and the amended goods designated in the present application, including the nature and sophistication of the purchasers of these goods, the Applicant contends that no confusion is likely between the cited and proposed marks. Accordingly, the Applicant respectfully requests that the refusal to register on likelihood of confusion grounds be withdrawn and that this application be approved for publication.
An analysis of the likelihood of confusion requires the consideration of a number of factors, including: (1) similarity of the marks, (2) similarity of the goods and services, (3) similarity of channels of trade, and (4) the conditions under which and buyers to whom sales are made. In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (CCPA 1973). Where, as in the present case, the Applicant's mark and cited mark are identical, “[t]he essential inquiry . . . is whether there is likely to be sufficient overlap of the respective purchasers of the parties’ goods and services to confuse actual and potential purchasers.” Electronic Design & Sales Inc. v. Electronic Data Svs. Corp., 21 U.S.P.Q.2d 1388, 1390 (Fed. Cir. 1992). In determining whether an overlap exists between purchasers of the Applicant's and the cited applicant’s goods and services, it is not enough that the respective goods may be categorized in the same general field. As the Federal Circuit has reiterated, “[w]e are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world". Id. at 1391. A likelihood of confusion must be based on the actual and potential purchasers of the goods. Id. at 1390.
The Applicant’s amended listing of goods is specifically directed to chemicals, biochemicals and organic preparations for research, scientific and diagnostic use (emphasis added). The purchasers of the Applicant’s goods are purchasing agents at research and medical facilities in charge of obtaining chemicals, biochemicals and organic preparations. In contrast, the designated chemicals of the cited registration are directed specifically to the paper manufacturing industry and will be purchased by purchasing agents at paper manufacturing plants. The Applicant’s and the cited applicant’s goods and services are distinct, unrelated, and non-competitive. The only potential overlap of the respective parties goods occurs when such goods are broadly classified as chemicals. However, this potential overlap is insufficient to warrant a finding of a likelihood of confusion between the marks especially in light of the industry specific limitations present in the cited registration and in the present application, as amended.
In addition to the distinctions between the Applicant’s goods and the cited registrant’s goods, the purchasers of the respective goods of the parties are not only different, but they are all highly sophisticated consumers. Neither the Applicant’s goods nor the cited registrant’s goods will be purchased on impulse. Rather the goods of both parties will be purchased after careful consideration and background research. The purchasers of the Applicant’s and the cited registrant’s goods will know exactly what they are purchasing and from whom it is being purchased from.
Based on the foregoing, the Applicant respectfully requests that the refusal to register its IMPRINT mark on likelihood of grounds be withdrawn and that this application be approved for publication.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 001 |
| DESCRIPTION | |
| Chemicals, biochemicals and organic preparations for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, use in industrial manufacturing processes, laboratory research use and scientific use; enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, use in industrial manufacturing processes, laboratory research use and scientific use; kits comprising enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, use in industrial manufacturing processes, laboratory research use and scientific use; cell cultures for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, use in industrial manufacturing processes, laboratory research use and scientific use | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 001 |
| DESCRIPTION | |
| Chemicals, biochemicals and organic preparations for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives, all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; kits comprising enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; cell cultures for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory use and scientific use | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /sss/ |
| SIGNATORY'S NAME | Sean S. Swidler |
| SIGNATORY'S POSITION | Attorney of Record |
| DATE SIGNED | 07/13/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jul 13 16:22:41 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 070713162241704081-771052 07-370516720e8d15039907dd 1388cc7525b2-N/A-N/A-2007 0713161633779769 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Amendment
Please delete the existing identification of goods in Intl. Class 1 and insert the following:
Chemicals, biochemicals and organic preparations for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives, all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; kits comprising enzymes, reagents, DNA polymerase, RNA polymerase, nucleotides and oligonucleotides and derivatives all for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory research use and scientific use; cell cultures for research use, scientific diagnostic use, diagnostic research use, diagnostic medical research use, industrial scientific use, industrial research use, laboratory use and scientific use
Remarks
In the Office Action issued on June 5, 2007, the trademark examining attorney refused registration of the Applicant’s IMPRINT mark for chemical, biochemical and organic preparations in Intl. Class 1 on likelihood of confusion grounds in view of the prior registered mark IMPRINT for use with chemicals used in the manufacture of paper, excluding sensitized photographic proofing paper. Based on the inherent differences between the goods designated in the cited registration and the amended goods designated in the present application, including the nature and sophistication of the purchasers of these goods, the Applicant contends that no confusion is likely between the cited and proposed marks. Accordingly, the Applicant respectfully requests that the refusal to register on likelihood of confusion grounds be withdrawn and that this application be approved for publication.
An analysis of the likelihood of confusion requires the consideration of a number of factors, including: (1) similarity of the marks, (2) similarity of the goods and services, (3) similarity of channels of trade, and (4) the conditions under which and buyers to whom sales are made. In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563, 567 (CCPA 1973). Where, as in the present case, the Applicant's mark and cited mark are identical, “[t]he essential inquiry . . . is whether there is likely to be sufficient overlap of the respective purchasers of the parties’ goods and services to confuse actual and potential purchasers.” Electronic Design & Sales Inc. v. Electronic Data Svs. Corp., 21 U.S.P.Q.2d 1388, 1390 (Fed. Cir. 1992). In determining whether an overlap exists between purchasers of the Applicant's and the cited applicant’s goods and services, it is not enough that the respective goods may be categorized in the same general field. As the Federal Circuit has reiterated, “[w]e are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world". Id. at 1391. A likelihood of confusion must be based on the actual and potential purchasers of the goods. Id. at 1390.
The Applicant’s amended listing of goods is specifically directed to chemicals, biochemicals and organic preparations for research, scientific and diagnostic use (emphasis added). The purchasers of the Applicant’s goods are purchasing agents at research and medical facilities in charge of obtaining chemicals, biochemicals and organic preparations. In contrast, the designated chemicals of the cited registration are directed specifically to the paper manufacturing industry and will be purchased by purchasing agents at paper manufacturing plants. The Applicant’s and the cited applicant’s goods and services are distinct, unrelated, and non-competitive. The only potential overlap of the respective parties goods occurs when such goods are broadly classified as chemicals. However, this potential overlap is insufficient to warrant a finding of a likelihood of confusion between the marks especially in light of the industry specific limitations present in the cited registration and in the present application, as amended.
In addition to the distinctions between the Applicant’s goods and the cited registrant’s goods, the purchasers of the respective goods of the parties are not only different, but they are all highly sophisticated consumers. Neither the Applicant’s goods nor the cited registrant’s goods will be purchased on impulse. Rather the goods of both parties will be purchased after careful consideration and background research. The purchasers of the Applicant’s and the cited registrant’s goods will know exactly what they are purchasing and from whom it is being purchased from.
Based on the foregoing, the Applicant respectfully requests that the refusal to register its IMPRINT mark on likelihood of grounds be withdrawn and that this application be approved for publication.