UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/106901
MARK: TENARIS
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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: Tibotec Pharmaceuticals Ltd.
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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.
THIS IS A FINAL ACTION.
If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
This Office action is in response to applicant’s communication filed on June 5, 2009.
FINAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The proposed mark is TENARIS for human pharmaceuticals for the treatment of auto-immune, immunological, inflammation and inflammatory diseases and disorders, cardiovascular diseases and disorders, metabolic diseases and disorders, central nervous system diseases and disorders, infectious-related diseases and disorders, anti-viral diseases and disorders, oncological related diseases and disorders, neurological related diseases and disorders, pain, dermatological related diseases and disorders, reproductive and urological diseases and disorders, and psychiatric related diseases and disorders, in Class 5.
The registered mark is TENAR for pharmaceutical preparations used to treat cough, cold, allergy,
asthma and other respiratory symptoms, in Class 5.
The marks begin the with the identical letters TENAR and the applicant’s mark differs only in the last two letters. Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Both parties provide pharmaceuticals, including for identical or related uses, such as anti-viral and anti-infectious uses. The Trademark Trial and Appeal Board and its appeals court have applied a higher standard to likelihood of confusion cases involving medicinal and pharmaceutical products. Although physicians and pharmacists are no doubt carefully trained to recognize differences in the characteristics of pharmaceutical products, they are not trained to recognize the difference between similar trademarks used on such products. Any confusion involving such goods could give rise to serious and harmful consequences such as mistakenly choosing wrong medication. See Glenwood Labs., Inc. v. Am. Home Prods. Corp., 455 F.2d 1384, 1386, 173 USPQ 19, 21 (C.C.P.A. 1972); Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1305-06 (TTAB 2004); Blansett Pharmacal Co. v. Camrick Labs., Inc., 25 USPQ2d 1473, 1477 (TTAB 1992). Thus, a lower threshold of proof is applied in assessing confusing similarity with respect to drugs and medicinal products. In addition to possible confusion by physicians and pharmacists, consumers may have bottles with both drugs next to each other in a medicine cabinet, and take the wrong medication, considering the similarity of the marks.
The examining attorney refers to the attached twenty registrations showing the same parties providing pharmaceuticals to treat both conditions treated by applicant’s pharmaceuticals and the conditions treated by registrant’s pharmaceuticals. These registrations are attached as a representative sample showing the relatedness of the goods.
Consumers, physicians, and pharmacists who see the parties’ similar marks used on their related goods are likely to be confused about the source of the goods.
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@uspto.gov
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.