| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79043104 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
REQUEST FOR RECONSIDERATION
The applicant hereby respectfully requests the Examining Attorney to reconsider the final refusal to register the applied-for mark. In the Final Office Action of May 20, 2008 the Examining Attorney upheld her refusal to register applicant’s mark on likelihood of confusion grounds, based on U.S. Registration Nos. 1,604,336, 1, 795,580, 2,230,465, 2,552,273, and 2, 677,092. The Examining Attorney withdrew all other earlier refusal grounds and objections to the identification of goods. In order to overcome the Examining Attorney’s refusal to register, the applicant wishes to amend the identification of goods as described in the following. The applicant believes that the limiting amendment to the identification of goods proposed in this Request for Reconsideration eliminates any likelihood of confusion with the above-referenced registrations. Identification of Goods The applicant wishes to limit the identification of goods to prescription pharmaceuticals and prescription veterinary preparations. The amended identification of goods shall, therefore, read as follows: “Pharmaceuticals and veterinary preparations, all for the treatment of urinary tract disorders and diseases and all for sale only by prescription.” The applicant hereby amends the identification of good as set out in the goods identification field of this Response to Office Action Form. The identification as amended does not include any goods that are not within the scope of the goods set forth in the original identification. Likelihood of Confusion Refusal The following will show that the amended limiting identification of goods, as proposed with this Request for Reconsideration, eliminates any likelihood of confusion with the above-referenced U.S. trademark registrations. First, the applicant wishes to incorporate by reference all arguments against a likelihood of confusion, made in applicant’s Response filed on April 22, 2008. In addition, the applicant wishes to provide the following arguments: The applicant’s goods, as amended with this Request for Reconsideration are not similar or related to the goods of the above-referenced U.S. registrations. The goods associated with four of those registrations are “vitamin preparations” (Reg. No. 1,604,336 “ACES”; Reg. No. 1,795,580 “ACE”; Reg. No. 2,230,465 “ACES GOLD”; Reg. No. 2,552,273 “ACES+ZN”) and the goods associated with one of the registrations are “nutritional supplements” (Reg. No. 2,677,092 “CARDIO ACES”). The goods of those five registrations are typically available – without prescription – in drug stores and health and over-the-counter drug sections of any major grocery store. In contrast thereto, applicant’s prescription pharmaceuticals and prescription veterinary preparations are only available in pharmacies and on prescription. Therefore, applicant’s prescription pharmaceuticals and veterinary preparations travel through different channels of trade than the registrant’s vitamin preparations and nutritional supplements. In addition, due to the nature of applicant’s goods being only available on prescription and registrant’s goods being readily available over the counter, the conditions surrounding the respective marketing of the applicant’s and the registrant’s goods are not such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source. In light of the amended, limiting identification of goods the Examining Attorney is respectfully requested to withdraw the finality of the Final Office Action and the refusal for likelihood of confusion, and to approve applicant’s mark for publication. The applicant has attempted to be fully responsive to the Final Office Action. However, should the Examining Attorney have any further comments or suggestions, the undersigned would very much welcome a telephone call in order to resolve any outstanding issues and expedite placement of the application into condition for publication.
|
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Pharmaceutical and veterinary preparations for the treatment of urinary tract disorders and diseases; preparations for health care, namely, nutraceuticals for the treatment of urinary tract disorders and diseases | |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Pharmaceutical and veterinary preparations for the treatment of urinary tract disorders and diseases and all for sale only by prescription | |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /Beate Boudro/ |
| SIGNATORY'S NAME | Beate Boudro |
| SIGNATORY'S POSITION | Attorney of record, New Mexico State Bar member |
| DATE SIGNED | 09/09/2008 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Sep 09 15:01:29 EDT 2008 |
| TEAS STAMP | USPTO/RFR-XX.XX.XXX.XX-20 080909150129148741-790431 04-430a14a2395b885d48b8df 82fc01623dd-N/A-N/A-20080 909145235454087 |
| PTO Form (Rev 4/2000) |
| OMB No. 0651-.... (Exp. 08/31/2004) |
REQUEST FOR RECONSIDERATION
The applicant hereby respectfully requests the Examining Attorney to reconsider the final refusal to register the applied-for mark. In the Final Office Action of May 20, 2008 the Examining Attorney upheld her refusal to register applicant’s mark on likelihood of confusion grounds, based on U.S. Registration Nos. 1,604,336, 1, 795,580, 2,230,465, 2,552,273, and 2, 677,092. The Examining Attorney withdrew all other earlier refusal grounds and objections to the identification of goods.
In order to overcome the Examining Attorney’s refusal to register, the applicant wishes to amend the identification of goods as described in the following. The applicant believes that the limiting amendment to the identification of goods proposed in this Request for Reconsideration eliminates any likelihood of confusion with the above-referenced registrations.
Identification of Goods
The applicant wishes to limit the identification of goods to prescription pharmaceuticals and prescription veterinary preparations. The amended identification of goods shall, therefore, read as follows:
“Pharmaceuticals and veterinary preparations, all for the treatment of urinary tract disorders and diseases and all for sale only by prescription.”
The applicant hereby amends the identification of good as set out in the goods identification field of this Response to Office Action Form. The identification as amended does not include any goods that are not within the scope of the goods set forth in the original identification.
Likelihood of Confusion Refusal
The following will show that the amended limiting identification of goods, as proposed with this Request for Reconsideration, eliminates any likelihood of confusion with the above-referenced U.S. trademark registrations.
First, the applicant wishes to incorporate by reference all arguments against a likelihood of confusion, made in applicant’s Response filed on April 22, 2008. In addition, the applicant wishes to provide the following arguments:
The applicant’s goods, as amended with this Request for Reconsideration are not similar or related to the goods of the above-referenced U.S. registrations. The goods associated with four of those registrations are “vitamin preparations” (Reg. No. 1,604,336 “ACES”; Reg. No. 1,795,580 “ACE”; Reg. No. 2,230,465 “ACES GOLD”; Reg. No. 2,552,273 “ACES+ZN”) and the goods associated with one of the registrations are “nutritional supplements” (Reg. No. 2,677,092 “CARDIO ACES”).
The goods of those five registrations are typically available – without prescription – in drug stores and health and over-the-counter drug sections of any major grocery store. In contrast thereto, applicant’s prescription pharmaceuticals and prescription veterinary preparations are only available in pharmacies and on prescription.
Therefore, applicant’s prescription pharmaceuticals and veterinary preparations travel through different channels of trade than the registrant’s vitamin preparations and nutritional supplements. In addition, due to the nature of applicant’s goods being only available on prescription and registrant’s goods being readily available over the counter, the conditions surrounding the respective marketing of the applicant’s and the registrant’s goods are not such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source.
In light of the amended, limiting identification of goods the Examining Attorney is respectfully requested to withdraw the finality of the Final Office Action and the refusal for likelihood of confusion, and to approve applicant’s mark for publication.
The applicant has attempted to be fully responsive to the Final Office Action. However, should the Examining Attorney have any further comments or suggestions, the undersigned would very much welcome a telephone call in order to resolve any outstanding issues and expedite placement of the application into condition for publication.