UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

NOTICE OF SUSPENSION

 

ISSUE/MAILING DATE: 10/21/2010

INTERNATIONAL REGISTRATION NO. 1027457

 

SUSPENSION PROCEDURE: This suspension notice serves to suspend action on the application for the reasons specified below.  No response is needed.  However, if you wish to respond to this notice, you should use the “Response to Letter of Suspension” form found at http://teasroa.gov.uspto.report/rsi/rsi.  The Office will conduct periodic status checks to determine if suspension remains appropriate.

 

Action on this application is suspended pending the disposition of:

 

            - Application Serial No. 77502677

 

Since applicant's effective filing date is subsequent to the effective filing date of the above-identified application, the latter, if and when it registers, may be cited against this application in a refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).  See 37 C.F.R. §2.83; TMEP §§1208 et seq.  A copy of information relevant to this pending application was sent previously.

 

Applicant may submit a request to remove the application from suspension to present arguments related to the potential conflict between the relevant applications or other arguments related to the ground for suspension.  TMEP §716.03.  Applicant's election not to present arguments during suspension will not affect the applicant's right to present arguments later should a refusal in fact issue.  If a refusal does issue, applicant will be afforded 6 months from the mailing or e-mailing date of the Office action to submit a response.  15 U.S.C. §1062(b); 37 C.F.R. §2.62.

 

 

The following refusals and requirements are continued and maintained:

 

1.        The refusal based on a likelihood of confusion with the mark in U.S. Registration Nos. 1069662, 1770932, 2926863, 0999468, 1204201, 0980784, 3357348, 3603007, 2803730, 1977362, 2026958, 2035335, 2687475, 2912945, 2492775, 2951300,  and 3142898 is continued and maintained.  While applicant argues that the use of the pyro-formative in marks is diluted in the medical diagnostic field, the proposed mark contains only the prefix.  Thus there is no additional wording or element to distinguish the proposed mark from the cited registrations.  Furthermore, the fact that applicant owns several pyro-formative marks itself supports the conclusion that consumers, when viewing the respective marks, would reasonably conclude that the goods of the respective parties emanate from a common source.  Furthermore, while applicant has made some limitation to the broad identification in the application, applicant’s identification is still broad enough to encompass the various medical diagnostic goods identified by the registrants.  Therefore, the refusal based on a likelihood of confusion with the referenced marks is continued and maintained.

 

2.        Portions of the identification of goods in International Classes 9 and 10 remain indefinite.  Therefore, the requirement for an acceptable identification of goods in International Classes 9 and 10 is continued and maintained.

 

Comments

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.

 

 

/Nicholas A Coleman/

Examining Attorney

Law Office 115

Office: 571-272-4917

 

 

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.

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO LETTER (AN OFFICE ACTION) HAS ISSUED ON 10/21/2010 FOR

SERIAL NO. 79078382

 

Please follow the instructions below:

 

TO READ OFFICE LETTER: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office letter

 

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

HELP: For technical assistance in accessing the Office correspondence, please e-mail TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office letter.