| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 78807683 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
This communication responds to the Office action of February 24, 2010.
Applicant is seeking to register COMPLETE for orthopaedic joint implants and artificial joints. The Examining Attorney has refused registration under Section 2(d) of the Trademark Act in view of a recently issued registration for the mark COMPETE covering "Medical devices and accessories for use in peripheral vascular procedures, namely, a self-expanding stent system comprised of stents, guidewires, balloons and catheters." Applicant respectfully suggests that there is no likelihood of confusion between its mark and the registered mark and presents arguments in support of the registrability of its mark.
As requested by the Examining Attorney, Applicant has deleted the reference to ownership of the mark COMPLETION. This is being done solely to facilitate approval of the present application. Applicant further advises that it will not rely on Section 44(e) of the Trademark Act as a basis for registration of its mark, and will rely upon Section 1(a). Applicant's Mark Is Not Likely Cause Confusion with the Mark in the Prior Registration Applicant respectfully disagrees that a likelihood of confusion exists between the two marks at issue because (1) the goods offered under these marks are distinct; (2) the relevant consumers of these goods are different; and (3) the relevant consumers are highly sophisticated. Therefore, the refusal to register should be withdrawn. The Examining Attorney has cited a prior registration of the mark COMPLETE. The Office Action notes that both marks relate to "medical products for use in surgery." However, this finding should not be the end of the inquiry. The Applicant's mark and the mark in the cited registration, while both for medical products, can and do co-exist with no likelihood of confusion. Applicant respectfully submits that its mark, for use in connection with highly specialized and distinct orthopaedic implants, will not create any likelihood of confusion with the registered mark.
The nature and scope of a party's goods must be determined on the basis of the goods set forth in the application or registration. See, e.g., Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). If the goods in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field). TMEP section 1207.01(a)(i) ("Goods or Services Need Not Be Identical"). The "cumulative effect of differences in the essential characteristics of the goods" involved is a fundamental inquiry mandated by Section 2(d) of the Trademark Act. Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 USPQ 151, 153 (CCPA 1978). The Trademark Trial and Appeal Board in In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998), discussed a First Circuit case, Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786 (1st Cir. 1983), with approval and stated: Noting that similarity of trade channels or overlap of customers is not established simply because both parties conduct business in the same field and sell their products to the same institution, the court found the purchasing institution, a hospital, not to be the relevant purchaser as it 'is composed of separate departments with diverse purchasing requirements, which, in effect, constitute different markets for the parties' respective goods.' In view of the differences in markets, the level of sophistication of the purchasers and the cost of the products, the court concluded that there was 'no likelihood of confusion of relevant purchasers.' 45 USPQ2d at 1844. It is not enough to say consumers will be confused because the respective products are medical devices or that they will be distributed through hospitals.
In In re Digirad Corp., supra, the Board reversed a Section 2(d) refusal to register "DIGIRAD" for "solid state gamma radiation sensors, signal processors and display apparatus for use in medical isotopic tracing and medical nuclear imaging." The refusal was based on a prior registration of "DIGIRAY" (and design) for an "electronic digital x-ray system comprised of an x-ray scanning beam tube and detector for medical use" and "computer software for use with an electronic digital x-ray system." The applicant conceded "a marginal customer overlap when customers are defined as those buying medical diagnostic equipment." The Board noted that the registrant's equipment was substantial in size and technical complexity and not inexpensive and was marketed to specialists, and that the purchasing decisions were made by knowledgeable individuals. 45 USPQ2d at 1843. Here, too, Applicant's goods are not inexpensive, are marketed to specialists and the purchasing decisions are made by knowledgeable individuals.
In Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., supra, two companies used the identical mark. The opposer sold local anesthetics, cardiovascular medicines and pre-filled syringes to hospital pharmacists and anesthesiologists, and the applicant sold a technical and large blood analyzing machine to specialists in hospital chemistry laboratories. Although both parties sold their goods to hospitals, they sold their goods to different markets. Here, Applicant markets and sells its products to orthopaedic surgeons. The prior Registrant does not so market its products.
The Court of Appeals for the Federal Circuit in Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992), emphasized that likelihood of confusion must exist with respect to actual customers or purchasers: [A]lthough the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services by the same institution does not, by itself, establish similarity of trade channels or overlap of customers . . . The likelihood of confusion must be shown to exist not in a purchasing institution but in "a customer or purchaser.". . . As one of our predecessor courts . . . stated . . .: We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal. 21 USPQ2d at 1391 (italics by the Court; citations omitted). Applying the principles of Digirad, Astra, and Electronic Design & Sale to the record in the present case compels a determination that Applicant's mark will not create any likelihood of confusion with the cited registered mark.
It is respectfully suggested that the mere fact that the parties offer surgical devices is an insufficient basis on which to establish likelihood of confusion. The goods set forth in the cited registration are not in the "orthopaedic field." The goods covered by Reg. No. 3743359 are limited to use in a single, specific procedure, namely, a peripheral vascular procedure. There is nothing in the description of Registrant's goods that relates to orthopaedic implants or artificial joints. The Applicant's products are highly specialized and used solely for orthopaedic implant procedures. The cited registration does not cover these products.
Like the parties in Astra, Applicant and Registrant use the same trademark, but market their goods to different professionals in the medical field. Applicant markets its goods to orthopaedic surgeons. Registrant markets its goods to vascular surgeons (see attached web print out for more information about this specialty). These are completely different and highly specialized fields of medicine. These purchasers do not overlap. They are not found in the same departments of a hospital. Further, Applicant's and Registrant's goods are used to address different medical needs. As such, there can be no likelihood of confusion between Applicant's mark and Registrants' mark. It is the relevant purchasing public with whom we must be concerned. Applicant's orthopaedic products are sold only to medical professionals, who are highly trained in the field of orthopaedics, and who make careful purchasing decisions and thus are sophisticated purchasers. Additionally, Applicant's goods are relatively expensive, and by their nature are purchased with great care.
Specialists in orthopaedics undergo a significant amount of training. Also, a large degree of thought is put into the purchasing decision for Applicant's goods, as a decision on the use of an orthopaedic implant is made by doctors on a patient-by-patient basis. Thus, it is with the minds of medical professionals and the realities of that marketplace that we are concerned with here, not the minds of the typical American purchaser of consumer goods. These sophisticated purchasers will not be confused, even if they were to somehow encounter the goods of Applicant and a prior Registrant. Conclusion The refusal to register under Section 2(d) of the Trademark Act should be withdrawn because: 1. The respective goods differ significantly. 2. The prospective purchasers for the goods differ. 4. The prospective purchasers of the parties' goods are highly sophisticated. In view of the above, the Examining Attorney is respectfully requested to withdraw the refusal to register and pass this application to publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_63122162138-170552606_._pvs.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT10\IMAGEOUT10\788\076\78807683\xml1\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | web site print out |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Applicant does not claim onwership of a prior registration |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /JDL/ |
| SIGNATORY'S NAME | Joseph D. Lewis |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 05/28/2010 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri May 28 17:11:34 EDT 2010 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20100528171134551519-7880 7683-46064e1f033a6ea54d6a 46b146818a6791-N/A-N/A-20 100528170552606702 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
This communication responds to the Office action of February 24, 2010.
Applicant is seeking to register COMPLETE for orthopaedic joint implants and artificial joints. The Examining Attorney has refused registration under Section 2(d) of the Trademark Act in view of a recently issued registration for the mark COMPETE covering "Medical devices and accessories for use in peripheral vascular procedures, namely, a self-expanding stent system comprised of stents, guidewires, balloons and catheters." Applicant respectfully suggests that there is no likelihood of confusion between its mark and the registered mark and presents arguments in support of the registrability of its mark.
As requested by the Examining Attorney, Applicant has deleted the reference to ownership of the mark COMPLETION. This is being done solely to facilitate approval of the present application.
Applicant further advises that it will not rely on Section 44(e) of the Trademark Act as a basis for registration of its mark, and will rely upon Section 1(a).
Applicant's Mark Is Not Likely Cause Confusion with the Mark in the Prior Registration
Applicant respectfully disagrees that a likelihood of confusion exists between the two marks at issue because (1) the goods offered under these marks are distinct; (2) the relevant consumers of these goods are different; and (3) the relevant consumers are highly sophisticated. Therefore, the refusal to register should be withdrawn.
The Examining Attorney has cited a prior registration of the mark COMPLETE. The Office Action notes that both marks relate to "medical products for use in surgery." However, this finding should not be the end of the inquiry. The Applicant's mark and the mark in the cited registration, while both for medical products, can and do co-exist with no likelihood of confusion. Applicant respectfully submits that its mark, for use in connection with highly specialized and distinct orthopaedic implants, will not create any likelihood of confusion with the registered mark.
The nature and scope of a party's goods must be determined on the basis of the goods set forth in the application or registration. See, e.g., Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). If the goods in question are not related or marketed in such a way that they would be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. See, e.g., Local Trademarks, Inc. v. Handy Boys Inc., 16 USPQ2d 1156 (TTAB 1990) (LITTLE PLUMBER for liquid drain opener held not confusingly similar to LITTLE PLUMBER and design for advertising services, namely the formulation and preparation of advertising copy and literature); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986) (QR for coaxial cable held not confusingly similar to QR for various products (e.g., lamps, tubes) related to the photocopying field). TMEP section 1207.01(a)(i) ("Goods or Services Need Not Be Identical"). The "cumulative effect of differences in the essential characteristics of the goods" involved is a fundamental inquiry mandated by Section 2(d) of the Trademark Act. Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 USPQ 151, 153 (CCPA 1978).
The Trademark Trial and Appeal Board in In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998), discussed a First Circuit case, Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786 (1st Cir. 1983), with approval and stated:
Noting that similarity of trade channels or overlap of customers is not established simply because both parties conduct business in the same field and sell their products to the same institution, the court found the purchasing institution, a hospital, not to be the relevant purchaser as it 'is composed of separate departments with diverse purchasing requirements, which, in effect, constitute different markets for the parties' respective goods.' In view of the differences in markets, the level of sophistication of the purchasers and the cost of the products, the court concluded that there was 'no likelihood of confusion of relevant purchasers.'
45 USPQ2d at 1844. It is not enough to say consumers will be confused because the respective products are medical devices or that they will be distributed through hospitals.
In In re Digirad Corp., supra, the Board reversed a Section 2(d) refusal to register "DIGIRAD" for "solid state gamma radiation sensors, signal processors and display apparatus for use in medical isotopic tracing and medical nuclear imaging." The refusal was based on a prior registration of "DIGIRAY" (and design) for an "electronic digital x-ray system comprised of an x-ray scanning beam tube and detector for medical use" and "computer software for use with an electronic digital x-ray system." The applicant conceded "a marginal customer overlap when customers are defined as those buying medical diagnostic equipment." The Board noted that the registrant's equipment was substantial in size and technical complexity and not inexpensive and was marketed to specialists, and that the purchasing decisions were made by knowledgeable individuals. 45 USPQ2d at 1843. Here, too, Applicant's goods are not inexpensive, are marketed to specialists and the purchasing decisions are made by knowledgeable individuals.
In Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., supra, two companies used the identical mark. The opposer sold local anesthetics, cardiovascular medicines and pre-filled syringes to hospital pharmacists and anesthesiologists, and the applicant sold a technical and large blood analyzing machine to specialists in hospital chemistry laboratories. Although both parties sold their goods to hospitals, they sold their goods to different markets. Here, Applicant markets and sells its products to orthopaedic surgeons. The prior Registrant does not so market its products.
The Court of Appeals for the Federal Circuit in Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992), emphasized that likelihood of confusion must exist with respect to actual customers or purchasers:
[A]lthough the two parties conduct business not only in the same fields but also with some of the same companies, the mere purchase of the goods and services by the same institution does not, by itself, establish similarity of trade channels or overlap of customers . . . The likelihood of confusion must be shown to exist not in a purchasing institution but in "a customer or purchaser.". . . As one of our predecessor courts . . . stated . . .:
We are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.
21 USPQ2d at 1391 (italics by the Court; citations omitted). Applying the principles of Digirad, Astra, and Electronic Design & Sale to the record in the present case compels a determination that Applicant's mark will not create any likelihood of confusion with the cited registered mark.
It is respectfully suggested that the mere fact that the parties offer surgical devices is an insufficient basis on which to establish likelihood of confusion. The goods set forth in the cited registration are not in the "orthopaedic field."
The goods covered by Reg. No. 3743359 are limited to use in a single, specific procedure, namely, a peripheral vascular procedure. There is nothing in the description of Registrant's goods that relates to orthopaedic implants or artificial joints. The Applicant's products are highly specialized and used solely for orthopaedic implant procedures. The cited registration does not cover these products.
Like the parties in Astra, Applicant and Registrant use the same trademark, but market their goods to different professionals in the medical field. Applicant markets its goods to orthopaedic surgeons. Registrant markets its goods to vascular surgeons (see attached web print out for more information about this specialty). These are completely different and highly specialized fields of medicine. These purchasers do not overlap. They are not found in the same departments of a hospital. Further, Applicant's and Registrant's goods are used to address different medical needs. As such, there can be no likelihood of confusion between Applicant's mark and Registrants' mark.
It is the relevant purchasing public with whom we must be concerned. Applicant's orthopaedic products are sold only to medical professionals, who are highly trained in the field of orthopaedics, and who make careful purchasing decisions and thus are sophisticated purchasers. Additionally, Applicant's goods are relatively expensive, and by their nature are purchased with great care.
Specialists in orthopaedics undergo a significant amount of training. Also, a large degree of thought is put into the purchasing decision for Applicant's goods, as a decision on the use of an orthopaedic implant is made by doctors on a patient-by-patient basis. Thus, it is with the minds of medical professionals and the realities of that marketplace that we are concerned with here, not the minds of the typical American purchaser of consumer goods. These sophisticated purchasers will not be confused, even if they were to somehow encounter the goods of Applicant and a prior Registrant.
Conclusion
The refusal to register under Section 2(d) of the Trademark Act should be withdrawn because:
1. The respective goods differ significantly.
2. The prospective purchasers for the goods differ.
4. The prospective purchasers of the parties' goods are highly sophisticated.
In view of the above, the Examining Attorney is respectfully requested to withdraw the refusal to register and pass this application to publication.
