| To: | St. Jude Medical, Atrial Fibrillation Di ETC. (jelgin@wrf.com) |
| Subject: | TRADEMARK APPLICATION NO. 78953256 - SJM - 824100001 |
| Sent: | 8/6/2007 10:45:11 AM |
| Sent As: | ECOM117@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 78/953256
MARK: SJM
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: St. Jude Medical, Atrial Fibrillation Di ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 8/6/2007
This letter responds to applicant’s response filed on July 11, 2007. The trademark examining attorney has reviewed applicant’s response and has determined the following:
Applicant was instructed to submit evidence of common ownership and a substitute specimen. The substitute specimen was not attached to the response and has not been received under separate cover by the Office. Also, the evidence of common ownership is not sufficient to overcome citing U.S. Registration No. 2555729 in this NON-FINAL Office action.
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2555729 (SJM plus design). 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.
Comparison of the Marks
When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).
Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source. In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972). For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison. The question is whether the marks create the same overall impression. Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
In this case, the cited mark and applicant’s mark are identical, even down to the octagonal design and font.
When the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Electrical Ass’n, 222 USPQ 350 (TTAB 1983).
Comparison of the Goods & Services
The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and services come from a common source. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
In this case, applicant is using its mark in connection with: “medical services in the areas of prevention, diagnosis or treatment of cardiac arrhythmia, physiological mapping, electrophysiologic testing and electrophysiologic studies,” which are very closely related to registrant’s various cardiac devices and systems, as applicant might employ registrant’s medical apparatus in the course of its medical services.
If the goods or services of the respective parties are closely related, the degree of similarity between marks required to support a finding of likelihood of confusion is not as great as would apply with diverse goods or services. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); ECI Division of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ 443 (TTAB 1980); TMEP §1207.01(b).
Here, because the marks are identical and the goods/services are very closely related, registration is refused under Section 2(d).
Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement:
In order to avoid the likelihood of confusion refusal above, applicant submitted evidence that it is a sister company to registrant. The fact that two sister corporations are controlled by a single parent corporation does not mean that they are related companies. Where two corporations are wholly owned subsidiaries of a common parent, use by one sister corporation is not considered to inure to the benefit of the other unless the applicant sister corporation exercises appropriate control over the nature and quality of the goods or services on or in connection with which the mark is used. In re Pharmacia Inc., 2 USPQ2d 1883 (TTAB 1987); Greyhound Corp. v. Armour Life Insurance Co., 214 USPQ 473 (TTAB 1982). Therefore, applicant must submit additional information about the extent of control it exercises over registrant’s goods. Where an applicant and registrant merely have certain stockholders, directors or officers in common, the applicant must demonstrate with detailed evidence or explanation how those relationships establish unity of control. Cf. Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981). In addition, such evidence or explanation should generally be in an affidavit or with a declaration under 37 C.F.R. §2.20. Id.
Applicant was instructed to submit a substitute specimen because the specimen of record does not show proper service mark use, as the advertising on the website appears to be for computer software instead of medical services. Applicant stated that it was sending its specimen under separate cover, but no specimen was received. Applicant will submit (1) a substitute specimen that supports use of the mark in commerce with the identified services, and (2) the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §§2.56 and 2.59(a); TMEP §904.09. If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c).
The following is a sample declaration under 37 C.F.R. §2.20 with a supporting statement for a substitute specimen:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting there from, declares that the substitute specimen was in use in commerce at least as early as the filing date of the application; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
_____________________________
(Print or Type Name and Position)
_____________________________
(Date)
Examples of acceptable specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services. TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the filing basis from Section 1(a) (use in commerce) to Section 1(b) (intent to use basis) and submit a specimen at a later time with an allegation of use. However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. 15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100.
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a service mark. 15 U.S.C. §§1051, 1053, and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.
If applicant has questions about its application or needs assistance, please telephone the assigned trademark examining attorney directly at the number below.
/Toby E. Bulloff/
Toby E. Bulloff
Trademark Examining Attorney
Law Office 117
p: (571) 270-1531
f: (571) 270-2531
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.
