To: | Stereotaxis, Inc. (bwheelock@hdp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 77849318 - ISIS - 5236-200974/ |
Sent: | 2/27/2012 11:13:33 AM |
Sent As: | ECOM109@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 77849318
MARK: ISIS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Stereotaxis, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 2/27/2012
On July 29, 2010, action on this application was suspended pending the disposition of Application Serial No. 78708931. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
Likelihood of Confusion – Refusal
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods, and similarity of trade channels of the goods and/or services. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant has applied to register the mark IRIS for “magnetic navigation systems for medical applications; magnets for medical applications.” The registered mark IRIS for “electric and electronic medical apparatus and instruments, namely, visual prosthesis consisting of an external camera connected by wireless communication to an implant in the retina which stimulates image cells and provides vision to patients; heart pacemakers; programming and testing apparatus for heart pacemakers; defibrillators; cardioverters; cardiac electrodes, medical guidewires; stent implanting apparatus; stents; balloon dilation apparatus; analysis apparatus for blood; medical patient organ and internal systems monitoring, measuring and regulating apparatus; resuscitation apparatus.”
In this instance, the marks are identical and the goods will likely be sold to the same type of consumers and through similar channels of trade. The similarities between the marks and the goods are so great as to create a likelihood of confusion among consumers. Therefore, the examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Although the examining attorney has refused, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.
Identification of Goods
The wording “magnetic navigation systems for medical applications” remains unacceptable as indefinite because the applicant must list the parts or components of the system. As noted in Office Action No. 1, the word “system” in the identification of goods is indefinite and must be amended to list the major parts or components of the system, as well as describe the nature, purpose and use of the system. Applicant should use common generic terms when specifying the parts or components of the system. See TMEP §§1401.02(a), 1402.01.
The applicant may amend the identification as follows: “magnetic navigation systems for medical applications comprised of magnetic devices and controls for controlling the position and/or orientation of magnetic substances and devices in the body; magnets for medical applications.”
Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification. For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
/Stephanie M. Ali, Esq./
Trademark Examining Attorney
Law Office 109
ph: 571.272.9272
fax: 571.273.9109
email: stephanie.ali@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.