| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78741847 |
| LAW OFFICE ASSIGNED | LAW OFFICE 117 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
TRADEMARK STR03 T-119
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Law Office : 117 Examining Attorney : Georgia Ann Carty Ellis Applicant : Stryker Corporation Serial No. : 78/741,847 Filed : October 27, 2005 Mark : iBED
Commissioner for Trademarks P.O. Box 1451 Alexandria VA 22313-1450
Dear Sir:
AMENDMENT/RESPONSE
In response to the final Office Action mailed January 9, 2007, having a six-month period of response ending July 9, 2007, Applicant requests reconsideration. DESCRIPTION OF GOODS Please amend the description of goods as follows: A wireless communication system comprised of (1) a patient handling product, namely a patient bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module in International Class 9. REMARKS Applicant respectfully requests the Examining Attorney to reconsider her final refusal under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). Applicant seeks registration for the mark iBED for a wireless communication system comprised of (1) a patient handling product, namely a patient bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module in International Class 9. The Examining Attorney enters a final refusal to register under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) alleging “because the mark for which registration is sought so resembles the marks shown in U.S. Registration 3039500 as to be likely, when used in connection with the identified goods to cause confusion, or to case mistake, or to deceive.” ARGUMENTSIn testing for a likelihood of confusion, consideration must be given to a wide variety of factors including, but not limited to: (1) similarity or dissimilarity of the goods; (2) similarity or dissimilarity of the channels of trade; (3) the conditions under which sales are made, i.e. impulse purchase; (4) the type of buyers to whom sales are made, i.e. sophistication of the purchasers; and (5) the extent of potential confusion, i.e. whether de minimis or substantial. Shen Manufacturing Co. v. Ritz Hotel Ltd., 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004) citing In re I.E. Dupont DeNemours & Co., 476 F.2d 1357, 1361 [17 U.S.P.Q. 563] (CCPA 1973). Dissimilarity of the Goods Applicant respectfully submits that the goods of the cited registration are sufficiently different from the goods of Applicant’s mark to avoid a likelihood of confusion. The cited Registration No. 3039500 for I-BED plus design is for beds, mattresses, spring mattresses, box springs, pillows, cushions, neck support cushions, headboards for beds, and bed frames. In contrast, Applicant’s mark is for a wireless communication system comprised of (1) a patient handling product, namely a patient bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module. Wireless communication systems for patient handling devices represent a substantially different product than domestic residential beds and mattresses. Wireless communication systems for patient handling devices are complex and are relatively expensive products sold to institutions—not typically to individuals. Though not complex, residential beds also represent a significant expense and are sold typically to individuals. Further, each of the respective goods are classified in a different classification. The cited registration is classified in Class 20, which is for furniture. Applicant’s goods are classified in Class 9, which is for electrical and scientific apparatuses. Dissimilarity of the Channels of Trade The patient handling equipment industry is a separate and distinct industry from the domestic residential bed and mattress industry. As noted above, patient handling equipment is specialized equipment and, further, relatively expensive equipment, which is sold to institutions, such as hospitals or long term care facilities. In contrast, domestic residential beds and mattresses are marketed and distributed through conventional furniture stores and are, therefore, very different channels of trade than the channels of trade through which Applicant’s goods are sold. Further, a consumer looking for a bed would not approach a medical products manufacturing company or its representatives to purchase a bed. Similarly, hospital personnel would not approach a furniture store to purchase Applicant’s goods. Conditions Under Which the Goods are Sold/Sophistication of the Purchasers Applicant’s goods, namely wireless communication systems for patient handling products, are sold by manufacturers’ representatives who are trained and specialized in the medical industry field. Further, wireless communication systems for patient handling products are sold and marketed to nurses, bio-medical engineering staff, or hospital administrators who also have particular training and experience either related to the medical field or in the medical field purchasing operations. In contrast, domestic residential beds are typically sold to home owners in, as noted above, a furniture store where a sampling of beds are typically positioned side-by-side so that the purchaser can try out the respective beds for comfort. Therefore, the customers of Applicant’s goods and those of the cited registration are different and distinct. Further, the goods of the Applicant are not displayed at a furniture store and instead are purchased through personal contact by representatives, who make contact with customers at the customer’s place of business. Therefore, the customers of the cited registration would not be exposed to Applicant’s products at the same location as the goods of the cited registration. Similarly, the customers of Applicant’s goods would not be exposed to the products of the cited registration at the same location as Applicant’s products. Therefore, the conditions under which Applicant’s goods and the goods of the cited registration are sold are distinctly different and occur at very different venues. Additionally, as noted, wireless communication systems for patient handling devices are complex and are relatively expensive products. Though not complex, residential beds also represent a significant expense. Consequently, neither wireless communication systems for patient handling devices nor residential beds are impulse purchases and, instead, are normally purchased after significant evaluation and consideration. The Extent of Potential Confusion Moreover, purchasers of a residential bed do not expect a manufacturer of a residential bed to also manufacture hospital products, such as a wireless communication system for patient handling devices. Likewise, healthcare institutions that purchase hospital products do not expect the manufacture of hospital products to also manufacture residential beds or to authorize the manufacture of residential beds—they are completely different markets. Therefore, Applicant respectfully urges that there is no likelihood of confusion between the cited mark I-BED for beds, mattresses, spring mattresses, box springs, pillows, cushions, neck support cushions, headboards for beds, and bed frames and iBED for a wireless communication system that includes a patient handling product, namely a patient bed; sensors on the product for sensing bed conditions, room conditions and patient conditions; communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module. In this case, Applicant’s goods are substantially different than the goods of the cited registration. The sophisticated and knowledgeable buyers of both Applicant’s goods and the goods of the cited registration are less likely to be confused than an ordinary customer. When the relevant class of buyers is composed of sophisticated or knowledgeable buyers, it is assumed that these buyers are less likely to be confused than ordinary customers. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 17 U.S.P.Q. 563 (CCPA 1973). In support of the arguments presented above, Applicant submits herewith a Declaration of Kevin Conway, the Vice President of Business Development at Stryker Corporation, the Applicant in this trademark application. In light of the above remarks, Applicant respectfully requests reconsideration of the present application and a notice of publication. Should the Examining Attorney have any questions or comments, the Examining Attorney is invited to contact the undersigned at (616) 975-5506. Respectfully submitted, STRYKER CORPORATION By: Van Dyke, Gardner, Linn & Burkhart, LLP May 3, 2007 /catherine s. collins/
Catherine S. Collins 2821 Charlevoix Drive, SE Suite 207 P.O. Box 888695 Grand Rapids, MI 49588-8695 (616) 975-5506 CSC:lmsc Collins@vglb.com |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) |
\\TICRS2\EXPORT12\787\418 \78741847\xml1\ROA0002.JP G |
| \\TICRS2\EXPORT12\787\418 \78741847\xml1\ROA0003.JP G | |
| \\TICRS2\EXPORT12\787\418 \78741847\xml1\ROA0004.JP G | |
| \\TICRS2\EXPORT12\787\418 \78741847\xml1\ROA0005.JP G | |
| DESCRIPTION OF EVIDENCE FILE | Declaration of Kevin Conway |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| Wireless communication system comprised of (1) a patient handling product, namely, a bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| A wireless communication system comprised of (1) a patient handling product, namely, a patient bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /catherine s. collins/ |
| SIGNATORY'S NAME | Catherine S. Collins |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 05/03/2007 |
| RESPONSE SIGNATURE | /catherine s. collins/ |
| SIGNATORY'S NAME | Catherine S. Collins |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 05/03/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu May 03 11:48:52 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XX-2 0070503114852380947-78741 847-370f37e2172bbd8f9516e 57541ab78a2d5-N/A-N/A-200 70503105654000509 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
TRADEMARK
STR03 T-119
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Law Office : 117
Examining Attorney : Georgia Ann Carty Ellis
Applicant : Stryker Corporation
Serial No. : 78/741,847
Filed : October 27, 2005
Mark : iBED
Commissioner for Trademarks
P.O. Box 1451
Alexandria VA 22313-1450
Dear Sir:
In response to the final Office Action mailed January 9, 2007, having a six-month period of response ending July 9, 2007, Applicant requests reconsideration.
DESCRIPTION OF GOODS
Please amend the description of goods as follows:
A wireless communication system comprised of (1) a patient handling product, namely a patient bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module in International Class 9.
REMARKS
Applicant respectfully requests the Examining Attorney to reconsider her final refusal under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).
Applicant seeks registration for the mark iBED for a wireless communication system comprised of (1) a patient handling product, namely a patient bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module in International Class 9.
The Examining Attorney enters a final refusal to register under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) alleging “because the mark for which registration is sought so resembles the marks shown in U.S. Registration 3039500 as to be likely, when used in connection with the identified goods to cause confusion, or to case mistake, or to deceive.”
In testing for a likelihood of confusion, consideration must be given to a wide variety of factors including, but not limited to: (1) similarity or dissimilarity of the goods; (2) similarity or dissimilarity of the channels of trade; (3) the conditions under which sales are made, i.e. impulse purchase; (4) the type of buyers to whom sales are made, i.e. sophistication of the purchasers; and (5) the extent of potential confusion, i.e. whether de minimis or substantial. Shen Manufacturing Co. v. Ritz Hotel Ltd., 73 U.S.P.Q.2d 1350 (Fed. Cir. 2004) citing In re I.E. Dupont DeNemours & Co., 476 F.2d 1357, 1361 [17 U.S.P.Q. 563] (CCPA 1973).
Dissimilarity of the Goods
Applicant respectfully submits that the goods of the cited registration are sufficiently different from the goods of Applicant’s mark to avoid a likelihood of confusion. The cited Registration No. 3039500 for I-BED plus design is for beds, mattresses, spring mattresses, box springs, pillows, cushions, neck support cushions, headboards for beds, and bed frames. In contrast, Applicant’s mark is for a wireless communication system comprised of (1) a patient handling product, namely a patient bed; (2) sensors on the product for sensing bed conditions, room conditions and patient condition; (3) communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and (4) information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module.
Wireless communication systems for patient handling devices represent a substantially different product than domestic residential beds and mattresses. Wireless communication systems for patient handling devices are complex and are relatively expensive products sold to institutions—not typically to individuals. Though not complex, residential beds also represent a significant expense and are sold typically to individuals. Further, each of the respective goods are classified in a different classification. The cited registration is classified in Class 20, which is for furniture. Applicant’s goods are classified in Class 9, which is for electrical and scientific apparatuses.
Dissimilarity of the Channels of Trade
The patient handling equipment industry is a separate and distinct industry from the domestic residential bed and mattress industry. As noted above, patient handling equipment is specialized equipment and, further, relatively expensive equipment, which is sold to institutions, such as hospitals or long term care facilities. In contrast, domestic residential beds and mattresses are marketed and distributed through conventional furniture stores and are, therefore, very different channels of trade than the channels of trade through which Applicant’s goods are sold. Further, a consumer looking for a bed would not approach a medical products manufacturing company or its representatives to purchase a bed. Similarly, hospital personnel would not approach a furniture store to purchase Applicant’s goods.
Conditions Under Which the Goods are Sold/Sophistication of the Purchasers
Applicant’s goods, namely wireless communication systems for patient handling products, are sold by manufacturers’ representatives who are trained and specialized in the medical industry field. Further, wireless communication systems for patient handling products are sold and marketed to nurses, bio-medical engineering staff, or hospital administrators who also have particular training and experience either related to the medical field or in the medical field purchasing operations.
In contrast, domestic residential beds are typically sold to home owners in, as noted above, a furniture store where a sampling of beds are typically positioned side-by-side so that the purchaser can try out the respective beds for comfort. Therefore, the customers of Applicant’s goods and those of the cited registration are different and distinct. Further, the goods of the Applicant are not displayed at a furniture store and instead are purchased through personal contact by representatives, who make contact with customers at the customer’s place of business. Therefore, the customers of the cited registration would not be exposed to Applicant’s products at the same location as the goods of the cited registration. Similarly, the customers of Applicant’s goods would not be exposed to the products of the cited registration at the same location as Applicant’s products. Therefore, the conditions under which Applicant’s goods and the goods of the cited registration are sold are distinctly different and occur at very different venues.
Additionally, as noted, wireless communication systems for patient handling devices are complex and are relatively expensive products. Though not complex, residential beds also represent a significant expense. Consequently, neither wireless communication systems for patient handling devices nor residential beds are impulse purchases and, instead, are normally purchased after significant evaluation and consideration.
The Extent of Potential Confusion
Moreover, purchasers of a residential bed do not expect a manufacturer of a residential bed to also manufacture hospital products, such as a wireless communication system for patient handling devices. Likewise, healthcare institutions that purchase hospital products do not expect the manufacture of hospital products to also manufacture residential beds or to authorize the manufacture of residential beds—they are completely different markets.
Therefore, Applicant respectfully urges that there is no likelihood of confusion between the cited mark I-BED for beds, mattresses, spring mattresses, box springs, pillows, cushions, neck support cushions, headboards for beds, and bed frames and iBED for a wireless communication system that includes a patient handling product, namely a patient bed; sensors on the product for sensing bed conditions, room conditions and patient conditions; communication module for facilitating a communication of the sensed bed, room and patient conditions through a selected communication network to a data gathering module; and information management system for remotely monitoring and reporting the status of the data gathered by the data gathering module.
In this case, Applicant’s goods are substantially different than the goods of the cited registration. The sophisticated and knowledgeable buyers of both Applicant’s goods and the goods of the cited registration are less likely to be confused than an ordinary customer. When the relevant class of buyers is composed of sophisticated or knowledgeable buyers, it is assumed that these buyers are less likely to be confused than ordinary customers. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 17 U.S.P.Q. 563 (CCPA 1973).
In support of the arguments presented above, Applicant submits herewith a Declaration of Kevin Conway, the Vice President of Business Development at Stryker Corporation, the Applicant in this trademark application.
In light of the above remarks, Applicant respectfully requests reconsideration of the present application and a notice of publication.
Should the Examining Attorney have any questions or comments, the Examining Attorney is invited to contact the undersigned at (616) 975-5506.
Respectfully submitted,
STRYKER CORPORATION By: Van Dyke, Gardner, Linn & Burkhart, LLP
May 3, 2007 /catherine s. collins/
Catherine S. Collins
2821 Charlevoix Drive, SE
Suite 207
P.O. Box 888695
Grand Rapids, MI 49588-8695
(616) 975-5506
CSC:lmsc Collins@vglb.com
