Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

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.

 

Serial Number  78/807683

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

TEAS PLUS

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

Prior Conflicting Applications

 

Information regarding pending Application Serial Nos. 78622455 and 78556131 is enclosed.  The filing dates of the referenced applications precede applicant’s filing date.  There may be a likelihood of confusion under Trademark Act Section 2(d) between applicant’s mark and the referenced marks.  If one or more of the referenced applications registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.

 

If applicant believes that there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

Likelihood of Confusion

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2316951.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

Applicant proposes the mark COMPLETE for use in connection with “artificial joints” and “orthopedic joint implants.”  Registrant provides “medical apparatus, namely, hand-held blood glucose monitors” in connection with the mark COMPLETE.

 

In the first step of the analysis, the examining attorney finds that the marks are identical.

 

In the second step of the analysis, the examining attorney finds that the registrant’s goods and the applicant’s goods are commercially related.  The applicant has described devices for use in treating medical conditions.  The examining attorney has attached copies of third party registrations to show that a single registrant provides artificial joints and implants and devices for measuring heart rates or blood glucose levels.

 

 

For these reasons, it is likely that the purchasing public would confuse the goods as originating from the same source.  Therefore, the examining attorney refuses registration of the applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

 

Applicant May Respond

 

Although the examining attorney has refused registration, 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 informalities.

 

Dual Filing Basis – Applicant May Rely Solely on Use

 

With respect to “orthopedic joint implants” in international class 10, if applicant wishes to proceed relying on use in commerce under Trademark Act Section 1(a) as the sole basis for registration, with the claim of priority under Trademark Act Section 44(d), then applicant should so advise the examining attorney.  If applicant chooses to do so, this Office will approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, once all other outstanding issues are resolved.  TMEP §§806.02(f) and 806.04(b).

 

If applicant does not indicate otherwise, this Office will presume that applicant wishes to rely on the foreign registration as an additional basis for registration.  Thus, the application will not be approved for publication until a copy of the foreign registration and, if appropriate, an English translation signed by the translator, have been filed.  TMEP §§1004.01 and 1004.01(b).

 

Claim of Prior Registration – Not Relevant

 

Applicant’s claim of ownership of Application Serial No. 2728130 for the mark COMPLETION will not be printed on any registration that may issue from this application because the mark is different and provides a different commercial impression than the mark COMPLETE.

 

Only prior registrations for the same or similar marks are considered related registrations for purposes of an ownership claim.  37 C.F.R. §2.36; TMEP §812.

 

 

 

If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.

 

/D. Beryl Gardner/

Examining Attorney

Law Office 112

571-272-9162 (office)

571-273-9162 (fax)

beryl.gardner@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.