| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
| SERIAL NUMBER | 78759248 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
The Examining Attorney requested that the Applicant clarify its description of goods. With the above amendment, Applicant has complied with the Examining Attorney’s request. In addition, the Examining Attorney suggested that the term “lens blanks” is indefinite, and thus should be revised to “contact lens blanks.” Applicant appreciates the Examining Attorney’s suggestion, however, the term “lens blanks” is a generic term used in the optical industry for lenses that have been partly processed to a patient’s prescription. As each patient has a unique prescription, lenses are manufactured to a semi-finished format (i.e. a lens blank), which is then processed to the individual patient’s prescription in the laboratory. The Applicant directs the Examining Attorney to several of Applicant’s registered marks, including Reg. No. 2941710, 2964308, and 2940870, which contain the term “lens blanks” in the description of goods. In addition, the Examining Attorney has refused registration of Applicant’s SYNCHRONY mark on the ground that the mark is likely to be confused with the registered mark, SYNCHRONY, Reg. No. 2,971,323, used in connection with “medical devices, namely ocular implants in the field of ophthalmology.” Applicant respectfully submits that confusion is unlikely because the goods offered under these marks are dissimilar, the relevant consumers are sophisticated and unlikely to be confused when faced with the two marks, and the channels of trade are not the same. 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., 476 F.2d 1357, 171 U.S.P.Q. 563 (C.C.P.A. 1973). Such factors include the similarities or dissimilarities of goods with which the marks are used, the consumers of the respective goods and whether such consumers are sophisticated purchasers and the channels of trade through which the goods travel. Id. It is well settled that each factor is to be given its due weight in the likelihood of confusion analysis. Id. A proper application of the DuPont factors establishes that there is no likelihood of confusion between Applicant’s mark and the cited mark. Applicant’s goods differ from the goods provided by the registrant. Applicant provides optical goods such as spectacles, sunglasses, and lenses, while the registrant provides intraocular lenses, which are designed to be surgically implanted into the eye of a patient. Spectacle lenses are put into frames which consumers can choose to wear or take off, whereas intraocular lenses are surgically implanted into patients’ eyes permanently. Thus the goods are markedly different and confusion is unlikely. Neither Applicant nor registrant sell their goods directly to individual consumers, instead both Applicant and registrant’s goods are purchased by sophisticated professionals. The relevant consumers of Applicant’s product are optical wholesalers who specialize in purchasing optical goods, such as spectacle and ophthalmic lenses. The relevant consumers of registrant’s product are hospital agents and medical specialists who specialize in purchasing medical devices. These consumers will not confuse Applicant’s spectacle or sunglass lenses, which are put into frames, with registrant’s intraocular lenses, which are surgically implanted into patients’ eyes. As both Applicant and registrant have sophisticated consumers who have expertise in purchasing goods for their practice, who are capable of distinguishing the goods provided under the marks, confusion is unlikely. Both the Federal Circuit and the Trademark Trial and Appeal Board have consistently held that when the relevant consumers are specialized professionals, these consumers are less likely to be confused even in the face of similarities between the marks. See e.g. Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 U.S.P.Q.2d 1390 (T.T.A.B. 1991) (hospital purchasing agents not likely to confuse HPM medical instruments with HP laboratory and medical instruments); see also Raytheon Co. v. Litton Business Systems, Inc., 169 U.S.P.Q. 438 (T.T.A.B. 1971) (highly experienced and informed business personnel not likely to confuse ROYTRON data processing tape punches and RAYTHEON data processing equipment); Dynamics Research Corp. v. Langenau Mfg. Co., 217 U.S.P.Q. 649 (Fed. Cir. 1983) (large corporate purchasing agents not likely to confuse DRC sheet metal fabric and DRC encoders and back gauges for press brakes). Further reducing any likelihood of confusion between the marks is the fact that Applicant’s and registrant’s goods do not travel in the same channels of trade. Applicant and registrant have narrowly restricted channels of trade through which their goods travel, thereby reducing the likelihood of confusion between the marks. Applicant’s goods are distributed solely through optical wholesalers to opticians and optical retailers. In contrast, registrant’s goods are marketed and provided to medical practitioners, surgeons and hospitals. As Applicant’s and registrant’s goods are marketed and sold through distinct channels of trade, confusion is unlikely. Therefore, Applicant respectfully requests that the Examining Attorney’s refusal to register be withdrawn. Finally, the Examining Attorney requested clarification as to the filing basis. Applicant intends to rely on Section 1(b) as the sole basis for registration, with a claim of priority under Section 44(d). Applicant does not intend to rely upon Section 44(e). In view of the foregoing, the application is in condition for allowance. Applicant respectfully requests that the mark be passed to publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| optical goods, apparatus and instruments; spectacles, sunglasses, goggles, contact lenses, lens blanks and ophthalmic lenses of all types, including spectacle lenses, sunglasses lenses, progessive lenses; replacement parts and accessories, namely, cases, chains and cleaning cloths for eyeglasses and sunglasses; optical goods, apparatus and instruments; spectacles, sunglasses, goggles, contact lenses, lens blanks and ophthalmic lenses of all types, including spectacle lenses, sunglasses lenses, progessive lenses; parts and accessories for all the aforesaid goods | |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(d) |
| FOREIGN APPLICATION NUMBER | 1264410 |
| FOREIGN FILING DATE | 07/05/2005 |
| FOREIGN REGISTRATION COUNTRY |
CA |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 009 |
| DESCRIPTION | |
| optical goods and apparatus, namely, spectacles, sunglasses, coated lenses, lens blanks, lens wafers; ophthalmic lenses of all types, namely, coated lenses, spectacle lenses, sunglasses lenses and progressive lenses; replacement parts for all the aforesaid goods | |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(d) |
| FOREIGN APPLICATION NUMBER | 1264410 |
| FOREIGN FILING DATE | 07/05/2005 |
| FOREIGN REGISTRATION COUNTRY |
CA |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /nicolemmurray/ |
| SIGNATORY'S NAME | Nicole M. Murray |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 11/13/2006 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Nov 13 12:27:49 EST 2006 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XX-20 061113122749835250-787592 48-3405c8e6a34388b93d41a9 791ffbe6c72f2-N/A-N/A-200 61113122028854347 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The Examining Attorney requested that the Applicant clarify its description of goods. With the above amendment, Applicant has complied with the Examining Attorney’s request. In addition, the Examining Attorney suggested that the term “lens blanks” is indefinite, and thus should be revised to “contact lens blanks.” Applicant appreciates the Examining Attorney’s suggestion, however, the term “lens blanks” is a generic term used in the optical industry for lenses that have been partly processed to a patient’s prescription. As each patient has a unique prescription, lenses are manufactured to a semi-finished format (i.e. a lens blank), which is then processed to the individual patient’s prescription in the laboratory. The Applicant directs the Examining Attorney to several of Applicant’s registered marks, including Reg. No. 2941710, 2964308, and 2940870, which contain the term “lens blanks” in the description of goods.
In addition, the Examining Attorney has refused registration of Applicant’s SYNCHRONY mark on the ground that the mark is likely to be confused with the registered mark, SYNCHRONY, Reg. No. 2,971,323, used in connection with “medical devices, namely ocular implants in the field of ophthalmology.” Applicant respectfully submits that confusion is unlikely because the goods offered under these marks are dissimilar, the relevant consumers are sophisticated and unlikely to be confused when faced with the two marks, and the channels of trade are not the same.
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., 476 F.2d 1357, 171 U.S.P.Q. 563 (C.C.P.A. 1973). Such factors include the similarities or dissimilarities of goods with which the marks are used, the consumers of the respective goods and whether such consumers are sophisticated purchasers and the channels of trade through which the goods travel. Id. It is well settled that each factor is to be given its due weight in the likelihood of confusion analysis. Id. A proper application of the DuPont factors establishes that there is no likelihood of confusion between Applicant’s mark and the cited mark.
Applicant’s goods differ from the goods provided by the registrant. Applicant provides optical goods such as spectacles, sunglasses, and lenses, while the registrant provides intraocular lenses, which are designed to be surgically implanted into the eye of a patient. Spectacle lenses are put into frames which consumers can choose to wear or take off, whereas intraocular lenses are surgically implanted into patients’ eyes permanently. Thus the goods are markedly different and confusion is unlikely.
Neither Applicant nor registrant sell their goods directly to individual consumers, instead both Applicant and registrant’s goods are purchased by sophisticated professionals. The relevant consumers of Applicant’s product are optical wholesalers who specialize in purchasing optical goods, such as spectacle and ophthalmic lenses. The relevant consumers of registrant’s product are hospital agents and medical specialists who specialize in purchasing medical devices. These consumers will not confuse Applicant’s spectacle or sunglass lenses, which are put into frames, with registrant’s intraocular lenses, which are surgically implanted into patients’ eyes. As both Applicant and registrant have sophisticated consumers who have expertise in purchasing goods for their practice, who are capable of distinguishing the goods provided under the marks, confusion is unlikely. Both the Federal Circuit and the Trademark Trial and Appeal Board have consistently held that when the relevant consumers are specialized professionals, these consumers are less likely to be confused even in the face of similarities between the marks. See e.g. Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 U.S.P.Q.2d 1390 (T.T.A.B. 1991) (hospital purchasing agents not likely to confuse HPM medical instruments with HP laboratory and medical instruments); see also Raytheon Co. v. Litton Business Systems, Inc., 169 U.S.P.Q. 438 (T.T.A.B. 1971) (highly experienced and informed business personnel not likely to confuse ROYTRON data processing tape punches and RAYTHEON data processing equipment); Dynamics Research Corp. v. Langenau Mfg. Co., 217 U.S.P.Q. 649 (Fed. Cir. 1983) (large corporate purchasing agents not likely to confuse DRC sheet metal fabric and DRC encoders and back gauges for press brakes).
Further reducing any likelihood of confusion between the marks is the fact that Applicant’s and registrant’s goods do not travel in the same channels of trade. Applicant and registrant have narrowly restricted channels of trade through which their goods travel, thereby reducing the likelihood of confusion between the marks. Applicant’s goods are distributed solely through optical wholesalers to opticians and optical retailers. In contrast, registrant’s goods are marketed and provided to medical practitioners, surgeons and hospitals. As Applicant’s and registrant’s goods are marketed and sold through distinct channels of trade, confusion is unlikely. Therefore, Applicant respectfully requests that the Examining Attorney’s refusal to register be withdrawn.
Finally, the Examining Attorney requested clarification as to the filing basis. Applicant intends to rely on Section 1(b) as the sole basis for registration, with a claim of priority under Section 44(d). Applicant does not intend to rely upon Section 44(e).
In view of the foregoing, the application is in condition for allowance. Applicant respectfully requests that the mark be passed to publication.