| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77106901 |
| LAW OFFICE ASSIGNED | LAW OFFICE 116 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
In the Office Action dated December 8, 2008, the Examining Attorney has refused registration of the mark 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 ("Applicant's Mark") under Section 2(d) of the Trademark Act based on a likelihood of confusion with the following mark (the "Cited Mark"): Reg. No. 3,537,447- TENAR for "pharmaceutical preparations used to treat cough, cold allergy, asthma and other respiratory symptoms," in Class 5; registered November 25, 2008 by Centrix Pharmaceutical, Inc. of Birmingham, Alabama. Applicant respectfully submits that confusion between Applicant's Mark and the Cited Marks is unlikely because the marks differ in sound, appearance and commercial impression, and the goods covered by the marks are distinguishable. In determining whether a likelihood of confusion exists, the Examining Attorney should consider the factors listed in E.I. Du Pont de Nemours & Co., Inc., 171 U.S.P.Q. 563 (C.C.P.A. 1973). Such factors include the similarities or dissimilarities of the marks and the goods with which the marks are used. Id. Each factor is to be accorded its due weight in the likelihood of confusion analysis. Id. A proper application of the Du Pont factors establishes that there is no likelihood of confusion between Applicant's Mark and the cited registration. A. Differences between the Marks A comparison of the marks shows that the marks at issue are distinctly different in sound and appearance and, in turn, convey different commercial impressions. It is well established that "it is the entire mark which creates the commercial impression." G.D. Searle & Co. v. Chas. Pfizer & Co., 105 U.S.P.Q. 391 (C.C.P.A. 1955). The differences in the marks are readily apparent. Applicant's Mark comprises three syllables and seven letters, while the Cited Mark comprises only two syllables and five letters. Further, Applicant's Mark ends in "IS," which makes Applicant's Mark sound more mellifluous. The "AR" ending of the Cited Mark is much more abrupt, even harsh-sounding when spoken. These visual and audible differences are sufficient to preclude confusion. Further, the addition of other matter to a mark is often sufficient to avoid consumer confusion, even if the additional term is descriptive or suggestive. See In re Hunke & Jocheim, 185 U.S.P.Q. 188 (T.T.A.B. 1975) (HI-DURABLE for stationary not similar to DURABUL for record books); Ferro v. Martin-Marietta, 164 U.S.P.Q. 140 (T.T.A.B. 1969) (LECTROPATCH not confusingly similar to ELECTRO due to addition of PATCH). In the present case, the additional matter is not descriptive or suggestive, but arbitrary. Confusion is therefore unlikely. Because Applicant's Mark and the Cited Mark differ in sight, sound and commercial impression, Applicant urges that consumers would not confuse the marks. B. The Goods as Described in the Application and Registrations are Different It has been long established that in evaluating the possibility of confusion under Section 2(d), the examiner must base his or her determination on the goods as they are described in the application for registration and in the cited registration. See e.g. In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990); In re American Olean Tile Company, Inc., 1 USPQ2d 1823 (TTAB 1986); In re Shawnee Milling Company, 225 USPQ 747 (TTAB 1985). On their face, Applicant's goods and the goods of the cited registrant are superficially "related" in that both are pharmaceuticals. However, both the Trademark Trial and Appeal Board and the Federal Circuit have soundly and repeatedly rejected the notion that confusion is likely simply because both marks may be found in the same broadly-defined product arena: "In more recent years, the Board and its reviewing tribunal.have backed away from the application of such 'per se' rules, emphasizing instead that each case must be decided on its own particular merits." In re British Bulldog, 24 USPQ 854, 858 (TTAB 1984). In the TENARIS application, Applicant specifies a number of goods with which it intends to use its mark. Significantly, none of these pharmaceutical preparations are for respiratory infections, which is the intended use of the registrant's goods. It seems a stretch to suggest, for example, that cough syrup would be confused with a medicine used to treat cancer patients. Accordingly, a sophisticated consumer such as a physician or pharmacist would not confuse the cough and sinus medicine sold under the Cited Mark with the pharmaceutical preparations to be sold under Applicant's Mark. In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act and approve this application for publication. A prompt and favorable action is solicited. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_76748136-173031987_._TENARIS_Sub._Dec___POA.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT7\IMAGEOUT7\771\069\77106901\xml1\ROA0002.JPG |
| \\TICRS\EXPORT7\IMAGEOUT7\771\069\77106901\xml1\ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Associate Power of Attorney and Substitute Declaration |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Mary Pat Weyback/ |
| SIGNATORY'S NAME | Mary Pat Weyback |
| SIGNATORY'S POSITION | Attorney of record, DC Bar |
| DATE SIGNED | 06/05/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jun 05 17:41:27 EDT 2009 |
| TEAS STAMP | USPTO/ROA-XX.XX.X.XXX-200 90605174127241089-7710690 1-4305a0c96546d131acc2b3e 2b4767dac-N/A-N/A-2009060 5173031987867 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
In the Office Action dated December 8, 2008, the Examining Attorney has refused registration of the mark 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 ("Applicant's Mark") under Section 2(d) of the Trademark Act based on a likelihood of confusion with the following mark (the "Cited Mark"):
Reg. No. 3,537,447- TENAR for "pharmaceutical preparations used to treat cough, cold allergy, asthma and other respiratory symptoms," in Class 5; registered November 25, 2008 by Centrix Pharmaceutical, Inc. of Birmingham, Alabama.
Applicant respectfully submits that confusion between Applicant's Mark and the Cited Marks is unlikely because the marks differ in sound, appearance and commercial impression, and the goods covered by the marks are distinguishable.
In determining whether a likelihood of confusion exists, the Examining Attorney should consider the factors listed in E.I. Du Pont de Nemours & Co., Inc., 171 U.S.P.Q. 563 (C.C.P.A. 1973). Such factors include the similarities or dissimilarities of the marks and the goods with which the marks are used. Id. Each factor is to be accorded its due weight in the likelihood of confusion analysis. Id. A proper application of the Du Pont factors establishes that there is no likelihood of confusion between Applicant's Mark and the cited registration.
A. Differences between the Marks
A comparison of the marks shows that the marks at issue are distinctly different in sound and appearance and, in turn, convey different commercial impressions. It is well established that "it is the entire mark which creates the commercial impression." G.D. Searle & Co. v. Chas. Pfizer & Co., 105 U.S.P.Q. 391 (C.C.P.A. 1955).
The differences in the marks are readily apparent. Applicant's Mark comprises three syllables and seven letters, while the Cited Mark comprises only two syllables and five letters. Further, Applicant's Mark ends in "IS," which makes Applicant's Mark sound more mellifluous. The "AR" ending of the Cited Mark is much more abrupt, even harsh-sounding when spoken. These visual and audible differences are sufficient to preclude confusion.
Further, the addition of other matter to a mark is often sufficient to avoid consumer confusion, even if the additional term is descriptive or suggestive. See In re Hunke & Jocheim, 185 U.S.P.Q. 188 (T.T.A.B. 1975) (HI-DURABLE for stationary not similar to DURABUL for record books); Ferro v. Martin-Marietta, 164 U.S.P.Q. 140 (T.T.A.B. 1969) (LECTROPATCH not confusingly similar to ELECTRO due to addition of PATCH). In the present case, the additional matter is not descriptive or suggestive, but arbitrary. Confusion is therefore unlikely.
Because Applicant's Mark and the Cited Mark differ in sight, sound and commercial impression, Applicant urges that consumers would not confuse the marks.
B. The Goods as Described in the Application and Registrations are Different
It has been long established that in evaluating the possibility of confusion under Section 2(d), the examiner must base his or her determination on the goods as they are described in the application for registration and in the cited registration. See e.g. In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990); In re American Olean Tile Company, Inc., 1 USPQ2d 1823 (TTAB 1986); In re Shawnee Milling Company, 225 USPQ 747 (TTAB 1985).
On their face, Applicant's goods and the goods of the cited registrant are superficially "related" in that both are pharmaceuticals. However, both the Trademark Trial and Appeal Board and the Federal Circuit have soundly and repeatedly rejected the notion that confusion is likely simply because both marks may be found in the same broadly-defined product arena: "In more recent years, the Board and its reviewing tribunal.have backed away from the application of such 'per se' rules, emphasizing instead that each case must be decided on its own particular merits." In re British Bulldog, 24 USPQ 854, 858 (TTAB 1984).
In the TENARIS application, Applicant specifies a number of goods with which it intends to use its mark. Significantly, none of these pharmaceutical preparations are for respiratory infections, which is the intended use of the registrant's goods. It seems a stretch to suggest, for example, that cough syrup would be confused with a medicine used to treat cancer patients. Accordingly, a sophisticated consumer such as a physician or pharmacist would not confuse the cough and sinus medicine sold under the Cited Mark with the pharmaceutical preparations to be sold under Applicant's Mark.
In view of the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act and approve this application for publication. A prompt and favorable action is solicited.
