Suspension Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

Serial Number   78/738897      

 

NOTICE OF SUSPENSION

 

SUSPENSION PROCEDURE:  This suspension notice serves to suspend action on the application for the reason(s) specified below.  No response is needed.  37 C.F.R. §2.67.  However, the examining attorney will conduct periodic status checks and may issue inquiries at 6 month intervals from the mailing date of this notice.  TMEP §716.05.  If a status inquiry Office action issues, applicant will have 6 months from the mailing or e-mailing date of the status inquiry to respond.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No(s). 76608718

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application(s), the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).  See 37 C.F.R. §2.83; TMEP §§1208 et seq.  A copy of information relevant to this pending application(s) was sent previously.

 

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant application(s) or other arguments related to the ground for suspension.  TMEP §716.03.  Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue.  If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

 

This letter responds to applicant’s communication filed on October 30, 2006.  The following amendments are accepted and made part of the record: identification of goods and significance.

 

In response to applicant’s arguments with reference to the prior pending application, it is noted that the English translation of applicant’s mark, TRES, and the dominant portion of the prior pending application, TRE, is identical: three.  Thus, applicant’s mere deletion of the highly descriptive term, SHEATH, does not present a separate commercial impression nor obviate the similarity of the marks.  

 

Additionally, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  Here, the goods are both medical devices marketed and sold to hospitals and doctors.  Thus, both can be found in the same channels of trade such that the average consumer would be likely to believe that the goods come from a common source. 

 

Accordingly, action on this application is suspended pending the disposition of Application Serial No. 76608718.

 

 

USPTO

/kelly a choe/

Kelly A Choe

Trademark Attorney

Law Office 113

Telephone: 571. 272.9429

Response: www.gov.uspto.report/teas