| 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
Examining Attorney : Georgia Ann Carty Ellis Law Office : 117 Applicant : Stryker Corporation Serial No. : 78/741,847 Filing Date : October 27, 2005 For : IBED
Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
Dear Sir:
SUPPLEMENTAL RESPONSE Responsive to the Official Action dated January 9, 2007, the statutory period for response expiring July 9, 2007, Applicant on May 3, 2007 filed a Request for Reconsideration and on July 3, 2007, filed a Notice of Appeal. On June 20, 2007, the Examining Attorney responded to the Request for Reconsideration stating that since the Request was filed without a Notice of Appeal, the Request was treated as an unofficial Request for Reconsideration. Because Applicant has now filed a Notice of Appeal, Applicant requests that the Request for Reconsideration be treated as an official Request for Reconsideration and, further, wishes to supplement the Request for Reconsideration as follows: REMARKS
The application is rejected under Trademark Act § 2(d) 15 U.S.C. § 1052(d) based on U.S. Reg. No. 3,039,500 (“the ‘500 registration”). While each mark differs in design, the content lettering “iBed” is the same albeit presented differently. The goods are considered related by the Examining Attorney in that the ‘500 registration includes the recitation “beds”, while the proposed amended goods are directed to a wireless communication system comprising a number of items including a patient bed. At the onset, Applicant submits that the description of goods in the ‘500 registration is unduly broad, and Applicant has initiated a dialogue with the registrant of the ‘500 registration based on a belief that the channels of trade between Applicant’s goods and those of a Registrant are vastly different. If Applicant and Registrant cannot reach agreement, Applicant will pursue partial cancellation pursuant to Section 18 of the Trademark Act. Despite the foregoing, Applicant would request reconsideration of the Examining Attorney’s position based on the fact that /the purchasing agent of a hospital or like institution would be a very sophisticated consumer since a system of the type recited would be quite expensive and used in a highly defined environment. Such systems are complex and relatively expensive as opposed to a simple stand‑alone domestic bed or mattress. Accordingly, Applicant submits that there would be no likelihood of confusion between one having a nearly identical mark on a bed itself as opposed to a wireless communication system of the type described in the proposed amendment despite the fact that that system would include a patient or hospital bed. Applicant notes that in the final action of January 9, 2007, the Examining Attorney also entered a Final Refusal under § 2(e)(1) of the Trademark Act. Applicant respectfully requests reconsideration of this refusal. Applicant submits that the term “iBed” would clearly not merely describe a system of the type set forth in the above‑referenced proposed amendment. There is nothing in the expression “iBed” that would suggest or describe to a potential user a wireless communication system. Certainly not one with the three distinct ingredients included in the description. The fact that the expression begins with the letter “i” in and of itself sets the term apart from a merely descriptive term. “i” could be viewed to refer to any number of different meanings such as: 1) “I” the person; 2) “I” for the Internet; 3) “I” for information; 4) “I” for ingredient; 5) “I” for inclination; or 6) “I” as a possible aspect of a person or type of bed. In addition, the subject refusal is inapposite to the ‘500 registration itself, which specifically recites a “bed” in addition to other sleep or rest‑related activity. Further, with reference to the proposed amendment, Applicant would request entry of the amendment, if only to place the matter in better condition for appeal. In light of the foregoing, Applicant respectfully requests reconsideration of the Official Action of January 9, 2007. Respectfully submitted,
STRYKER CORPORATION
By Van Dyke, Gardner, Linn & Burkhart, LLP
Date: July 9, 2007 /catherine s. collins/ Catherine S. Collins P.O. Box 888695 Grand Rapids, MI 49588-8695 (616) 975-5506
DVD/CSC:mln:lmsc STR03 T-119 |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /catherine s. collins/ |
| SIGNATORY'S NAME | Catherine S. Collins |
| SIGNATORY'S POSITION | Attorney of record |
| DATE SIGNED | 07/09/2007 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jul 09 16:23:09 EDT 2007 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 070709162309647256-787418 47-370b21e4457c01070df169 0f069d89141b6-N/A-N/A-200 70709160613219482 |
| 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
Examining Attorney : Georgia Ann Carty Ellis
Law Office : 117
Applicant : Stryker Corporation
Serial No. : 78/741,847
Filing Date : October 27, 2005
For : IBED
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Dear Sir:
SUPPLEMENTAL RESPONSE
Responsive to the Official Action dated January 9, 2007, the statutory period for response expiring July 9, 2007, Applicant on May 3, 2007 filed a Request for Reconsideration and on July 3, 2007, filed a Notice of Appeal. On June 20, 2007, the Examining Attorney responded to the Request for Reconsideration stating that since the Request was filed without a Notice of Appeal, the Request was treated as an unofficial Request for Reconsideration. Because Applicant has now filed a Notice of Appeal, Applicant requests that the Request for Reconsideration be treated as an official Request for Reconsideration and, further, wishes to supplement the Request for Reconsideration as follows:
REMARKS
The application is rejected under Trademark Act § 2(d) 15 U.S.C. § 1052(d) based on U.S. Reg. No. 3,039,500 (“the ‘500 registration”). While each mark differs in design, the content lettering “iBed” is the same albeit presented differently. The goods are considered
related by the Examining Attorney in that the ‘500 registration includes the recitation “beds”, while the proposed amended goods are directed to a wireless communication system comprising a number of items including a patient bed.
At the onset, Applicant submits that the description of goods in the ‘500 registration is unduly broad, and Applicant has initiated a dialogue with the registrant of the ‘500 registration based on a belief that the channels of trade between Applicant’s goods and those of a Registrant are vastly different.
If Applicant and Registrant cannot reach agreement, Applicant will pursue partial cancellation pursuant to Section 18 of the Trademark Act. Despite the foregoing, Applicant would request reconsideration of the Examining Attorney’s position based on the fact that /the purchasing agent of a hospital or like institution would be a very sophisticated consumer since a system of the type recited would be quite expensive and used in a highly defined environment. Such systems are complex and relatively expensive as opposed to a simple stand‑alone domestic bed or mattress. Accordingly, Applicant submits that there would be no likelihood of confusion between one having a nearly identical mark on a bed itself as opposed to a wireless communication system of the type described in the proposed amendment despite the fact that that system would include a patient or hospital bed.
Applicant notes that in the final action of January 9, 2007, the Examining Attorney also entered a Final Refusal under § 2(e)(1) of the Trademark Act. Applicant respectfully requests reconsideration of this refusal. Applicant submits that the term “iBed” would clearly not merely describe a system of the type set forth in the above‑referenced proposed amendment. There is nothing in the expression “iBed” that would suggest or describe to a potential user a wireless communication system. Certainly not one with the three distinct ingredients included in the description. The fact that the expression begins with the letter “i” in and of itself sets the term apart from a merely descriptive term. “i” could be viewed to refer to any number of different meanings such as: 1) “I” the person; 2) “I” for the Internet; 3) “I” for information; 4) “I” for ingredient; 5) “I” for inclination; or 6) “I” as a possible aspect of a person or type of bed. In addition, the subject refusal is inapposite to the ‘500 registration itself, which specifically recites a “bed” in addition to other sleep or rest‑related activity.
Further, with reference to the proposed amendment, Applicant would request entry of the amendment, if only to place the matter in better condition for appeal.
In light of the foregoing, Applicant respectfully requests reconsideration of the Official Action of January 9, 2007.
Respectfully submitted,
STRYKER CORPORATION
By Van Dyke, Gardner, Linn & Burkhart, LLP
Date: July 9, 2007 /catherine s. collins/
Catherine S. Collins
P.O. Box 888695
Grand Rapids, MI 49588-8695
(616) 975-5506
DVD/CSC:mln:lmsc
STR03 T-119