| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85065763 |
| LAW OFFICE ASSIGNED | LAW OFFICE 112 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Abbott Ref. No. AVD T58362
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of: ) ) Abbott Laboratories ) ) Trademark Examiner Serial No.: 85/065,763 ) Charisma Hampton ) Trademark: ARMADA ) Law Office 112 ) Filing Date: June 17, 2010 )
RESPONSE TO OFFICE ACTION DATED APRIL 18, 2011 INTRODUCTION The Office action of April 18, 2011 has been received and its contents carefully noted. In the pending action, the Examiner refuses registration of Applicant’s ARMADA trademark under Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), because she believes that Applicant’s ARMADA trademark (hereinafter “Applicant’s Mark”) resembles the trademark ARMADA in U.S. Reg. No. 3,891,176 in the name of NuVasive, Inc. (hereinafter the “Cited Mark”), as to be likely to cause confusion, to cause mistake, or to deceive. Based on the following, Applicant submits that there is no likelihood of confusion and that its application should be allowed to proceed to publication. I. APPLICANT’S MARK IS NOT LIKELY TO CAUSE CONFUSION WITH THE CITED MARK
A. There is no likelihood of confusion because the goods of Applicant’s Mark and the goods of the Cited Mark are different.
Applicant’s Mark is used with goods that are unrelated to the goods of the Cited Mark. Applicant’s Mark is filed for use in connection with “catheters; balloon dilatation catheters; stents; medical guidewires” for use in vascular procedures in Class 10. Applicant’s Mark is only for use in specific procedures, namely as a percutaneous transluminal angioplasty (“PTA”) balloon dilatation catheter. An example of use of the Applicant’s Mark is attached and can be found at http://www.abbottvascular.com/int/armada-14.html#overview. The Cited Mark is registered for use in connection with “spinal implants composed of artificial material; surgical apparatus and instruments for use in orthopedic surgery.” Excerpts from the February 25, 2011 Form 10-K of the owner of the Cited Mark, state that the Cited Mark is used for a specialized spinal implant pedicle screw system (see http://www.faqs.org/sec-filings/110225/NUVASIVE-INC_10-K/). As noted, both in the identification of goods of the Cited Mark and as per the actual use of the Cited Mark, the Cited Mark is used on or in connection with a lumbar spinal implant. Use of a spinal implant does not relate to any vascular or coronary balloon dilatation catheter device. Because Applicant’s goods are only used in specialized vascular surgery, they are highly unlikely to be confused with a specialized spinal implant pedicle screw system. The Examining Attorney relies solely on a loose affiliation between the products of the Applicant’s Mark and those of the Cited Mark because they are both medical and likely to travel through the same channels of trade to the same classes of consumers. Such a determination would dictate that all medical products and devices conceivably used in any manner, whether in surgery, laboratory, examination or research, are necessarily related for likelihood of confusion purposes. An actual comparison of the goods, as noted above, provides clear and substantial evidence that Applicant’s Mark and the Cited Mark are used on goods that are not related in a manner that would lead to source confusion. The goods are not designed to work together during the same surgical procedures as they perform very different functions, and are marketed to a very specialized and distinct group of surgeons and laboratory technicians or research scientists who would not both be exposed to Applicant’s vascular medical device and Registrant’s spinal implant. B. The public is not likely to be confused because the parties' respective goods are sold through distinct channels of trade.
Confusion is not likely, even when the trademarks are identical, if the goods or services in question are not 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. See T.M.E.P. §1207.01(a)(i). Accordingly, another factor that must be considered is “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” In re E.1. DuPont de Nemours & Co., 476 F.2d at 1361; In re The Shoe Works Inc., 6 U.S.P.Q. 2d 1890, 1891 (T.T.A.B. 1988) (reversing the examiner’s refusal to register PALM BAY and Design based on a likelihood of confusion with registration for PALM BAY for highly related goods, where “applicant’s restricted trade channels are not the normal channels in which registrant’s goods would be found.”) Applicant’s goods are marketed and sold to vascular surgeons, also known as interventional cardiologists. These interventional cardiologists do not conduct orthopedic spinal surgeries. Vascular surgery is considered to be a highly specialized area of surgery that deals with diseases of the vascular system, namely arteries and veins. Applicant’s goods are comprised of peripheral balloon dilatation catheters. A balloon catheter consists of a tube that is inserted into a body cavity, duct or vessel that has a “balloon” at its tip which is used during catheterization to enlarge a narrow opening or passage within the body. The deflated balloon catheter is positioned, then inflated, and deflated again in order to be removed. The balloon catheter is used primarily during a cardiac or vascular procedure. In contrast, the Cited Mark’s goods are a specialized spinal implant pedicle screw system used solely in orthopedic surgery. Thus, the trade channels are completely distinct, which weighs heavily against a likelihood of confusion. Furthermore, and perhaps more importantly, it has been clearly established that the medical industry “is not a homogeneous whole, but is composed of separate departments with diverse purchasing requirements, which, in effect, constitute different markets for the parties’ respective products.” Astra Pharm. Prod. Inc. v. Beckman Instruments, Inc., 220 U.S.P.Q. 786, 791 (1st Cir. 1983) (finding no confusion between ASTRA and ASTRA for medical products marketed to hospitals). “The fact that both parties sell their goods to hospitals, and thus share a common channel of trade, does not necessarily mandate a finding that the products are related and that confusion is likely.” See, also, NEC Electronics, Inc. v. New England Circuit Sales, Inc., 722 F. Supp. 861, 13 U.S.P.Q. 2d 1058 (D. Mass. 1989). C. The public is not likely to be confused because the parties' respective goods are sold to different target consumers.
In testing for likelihood of confusion, the Examiner should also consider the target consumers for the respective goods/services. In re Shipp, 4 U.S.P.Q. 2d 1174, 1176 (T.T.A.B. 1987) (reversing refusal to register because, among other reasons, the parties’ respective goods/services “are not so related that they would come to the attention of the same kinds of purchasers”); David Crystal, Inc. v. Soo Valley Co., 471 F.2d 1245, 1246 (C.C.P.A. 1973) (affirming dismissal of opposition, because appellee’s thread is sold to garment manufacturers whereas appellant’s finished garments are sold to the general purchasing public). Applicant’s client is the interventional cardiologist. The Cited Mark’s client is the orthopedic surgeon who utilizes the Registrant’s pedicle screw system in a spinal implant. Applicant submits that based on the highly specialized nature of each of the respective professions, the parties’ respective goods are such that they would not even come to the attention of the same class of purchaser. Thus, there is very little, if any, chance of overlap of target consumers, which militates heavily against a likelihood of public confusion. See In re Shipp, 4 U.S.P.Q. 2d at 1176 (holding PURITAN and Design for laundry and dry cleaning services not likely to be confused with PURITAN for commercial dry cleaning machine filters or PURITAN for a variety of cleaning preparations, because while the goods/services are related in the sense that they all exist in the laundry and dry cleaning industry, they are not so related that they would come to the attention of the same kinds of purchasers); see also David Crystal, Inc., 471 F.2d at 1246. D. The relevant public is not likely to be confused because they are highly sophisticated consumers.
Applicant’s clients (and presumably those of the Cited Mark) are highly sophisticated consumers who are not likely to be confused. Purchasers of Applicant’s goods are highly educated, upper-level decision makers. They are acutely aware of their needs as interventional cardiologists and need to conduct a significant amount of research before coming to a final decision about the purchase of peripheral balloon dilatation catheters. Likewise, the Cited Mark’s clients are orthopedic surgeons who are highly educated and knowledgeable when seeking out pedicle screw systems to use in a spinal implantation procedure. On point, see Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 U.S.P.Q. 2d 1390, 1396 (T.T.A.B. 1992), holding HPM and Design for medical instruments not likely to be confused with HP and Design for a wide range of laboratory and medical instruments because: Buyers of the parties’ goods, as well as potential customers for the products, plainly are highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection. Given the deliberation involved in determining the suitability of particular medical instruments for specific patient care applications, and since customers and prospective purchasers typically deal directly with the parties in making their purchasing decisions, we believe that the parties’ marks are not so similar that confusion as to the origin or affiliation of their medical instruments would be likely to occur.
In short, the parties’ respective target consumers, who are highly-educated decision makers, will undoubtedly exercise a good deal of deliberation and care in purchasing the parties’ respective goods and will not likely be confused. For these reasons, Applicant submits that there is no likelihood of confusion and respectfully requests that the Examiner withdraw the Section 2(d) refusal. CONCLUSION Based on the foregoing, Applicant respectfully requests that the Examiner withdraw the Section 2(d) refusal and pass the application to publication.
|
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1-1303662224-175952504_._Armada_use.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT11\IMAGEOUT11\850\657\85065763\xml6\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | a website page showing use of the Applicant's mark |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Cheryl A. Withycombe/ |
| SIGNATORY'S NAME | Cheryl A. Withycombe |
| SIGNATORY'S POSITION | Attorney of record, IL bar member |
| DATE SIGNED | 10/17/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Oct 17 18:09:37 EDT 2011 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XXX-2 0111017180937217603-85065 763-4808a4f471e16564921df d6c5b79e15aee-N/A-N/A-201 11017175952504635 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Abbott Ref. No. AVD T58362
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
In re Application of: )
)
Abbott Laboratories )
) Trademark Examiner
Serial No.: 85/065,763 ) Charisma Hampton
)
Trademark: ARMADA ) Law Office 112
)
Filing Date: June 17, 2010 )
RESPONSE TO OFFICE ACTION DATED APRIL 18, 2011
INTRODUCTION
The Office action of April 18, 2011 has been received and its contents carefully noted. In the pending action, the Examiner refuses registration of Applicant’s ARMADA trademark under Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), because she believes that Applicant’s ARMADA trademark (hereinafter “Applicant’s Mark”) resembles the trademark ARMADA in U.S. Reg. No. 3,891,176 in the name of NuVasive, Inc. (hereinafter the “Cited Mark”), as to be likely to cause confusion, to cause mistake, or to deceive. Based on the following, Applicant submits that there is no likelihood of confusion and that its application should be allowed to proceed to publication.
I. APPLICANT’S MARK IS NOT LIKELY TO CAUSE CONFUSION WITH THE CITED MARK
A. There is no likelihood of confusion because the goods of Applicant’s Mark and the goods of the Cited Mark are different.
Applicant’s Mark is used with goods that are unrelated to the goods of the Cited Mark. Applicant’s Mark is filed for use in connection with “catheters; balloon dilatation catheters; stents; medical guidewires” for use in vascular procedures in Class 10. Applicant’s Mark is only for use in specific procedures, namely as a percutaneous transluminal angioplasty (“PTA”) balloon dilatation catheter. An example of use of the Applicant’s Mark is attached and can be found at http://www.abbottvascular.com/int/armada-14.html#overview.
The Cited Mark is registered for use in connection with “spinal implants composed of artificial material; surgical apparatus and instruments for use in orthopedic surgery.” Excerpts from the February 25, 2011 Form 10-K of the owner of the Cited Mark, state that the Cited Mark is used for a specialized spinal implant pedicle screw system (see http://www.faqs.org/sec-filings/110225/NUVASIVE-INC_10-K/). As noted, both in the identification of goods of the Cited Mark and as per the actual use of the Cited Mark, the Cited Mark is used on or in connection with a lumbar spinal implant. Use of a spinal implant does not relate to any vascular or coronary balloon dilatation catheter device. Because Applicant’s goods are only used in specialized vascular surgery, they are highly unlikely to be confused with a specialized spinal implant pedicle screw system.
The Examining Attorney relies solely on a loose affiliation between the products of the Applicant’s Mark and those of the Cited Mark because they are both medical and likely to travel through the same channels of trade to the same classes of consumers. Such a determination would dictate that all medical products and devices conceivably used in any manner, whether in surgery, laboratory, examination or research, are necessarily related for likelihood of confusion purposes.
An actual comparison of the goods, as noted above, provides clear and substantial evidence that Applicant’s Mark and the Cited Mark are used on goods that are not related in a manner that would lead to source confusion. The goods are not designed to work together during the same surgical procedures as they perform very different functions, and are marketed to a very specialized and distinct group of surgeons and laboratory technicians or research scientists who would not both be exposed to Applicant’s vascular medical device and Registrant’s spinal implant.
B. The public is not likely to be confused because the parties' respective goods are sold through distinct channels of trade.
Confusion is not likely, even when the trademarks are identical, if the goods or services in question are not 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. See T.M.E.P. §1207.01(a)(i). Accordingly, another factor that must be considered is “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” In re E.1. DuPont de Nemours & Co., 476 F.2d at 1361; In re The Shoe Works Inc., 6 U.S.P.Q. 2d 1890, 1891 (T.T.A.B. 1988) (reversing the examiner’s refusal to register PALM BAY and Design based on a likelihood of confusion with registration for PALM BAY for highly related goods, where “applicant’s restricted trade channels are not the normal channels in which registrant’s goods would be found.”)
Applicant’s goods are marketed and sold to vascular surgeons, also known as interventional cardiologists. These interventional cardiologists do not conduct orthopedic spinal surgeries. Vascular surgery is considered to be a highly specialized area of surgery that deals with diseases of the vascular system, namely arteries and veins. Applicant’s goods are comprised of peripheral balloon dilatation catheters. A balloon catheter consists of a tube that is inserted into a body cavity, duct or vessel that has a “balloon” at its tip which is used during catheterization to enlarge a narrow opening or passage within the body. The deflated balloon catheter is positioned, then inflated, and deflated again in order to be removed. The balloon catheter is used primarily during a cardiac or vascular procedure. In contrast, the Cited Mark’s goods are a specialized spinal implant pedicle screw system used solely in orthopedic surgery. Thus, the trade channels are completely distinct, which weighs heavily against a likelihood of confusion.
Furthermore, and perhaps more importantly, it has been clearly established that the medical industry “is not a homogeneous whole, but is composed of separate departments with diverse purchasing requirements, which, in effect, constitute different markets for the parties’ respective products.” Astra Pharm. Prod. Inc. v. Beckman Instruments, Inc., 220 U.S.P.Q. 786, 791 (1st Cir. 1983) (finding no confusion between ASTRA and ASTRA for medical products marketed to hospitals). “The fact that both parties sell their goods to hospitals, and thus share a common channel of trade, does not necessarily mandate a finding that the products are related and that confusion is likely.” See, also, NEC Electronics, Inc. v. New England Circuit Sales, Inc., 722 F. Supp. 861, 13 U.S.P.Q. 2d 1058 (D. Mass. 1989).
C. The public is not likely to be confused because the parties' respective goods are sold to different target consumers.
In testing for likelihood of confusion, the Examiner should also consider the target consumers for the respective goods/services. In re Shipp, 4 U.S.P.Q. 2d 1174, 1176 (T.T.A.B. 1987) (reversing refusal to register because, among other reasons, the parties’ respective goods/services “are not so related that they would come to the attention of the same kinds of purchasers”); David Crystal, Inc. v. Soo Valley Co., 471 F.2d 1245, 1246 (C.C.P.A. 1973) (affirming dismissal of opposition, because appellee’s thread is sold to garment manufacturers whereas appellant’s finished garments are sold to the general purchasing public).
Applicant’s client is the interventional cardiologist. The Cited Mark’s client is the orthopedic surgeon who utilizes the Registrant’s pedicle screw system in a spinal implant. Applicant submits that based on the highly specialized nature of each of the respective professions, the parties’ respective goods are such that they would not even come to the attention of the same class of purchaser. Thus, there is very little, if any, chance of overlap of target consumers, which militates heavily against a likelihood of public confusion. See In re Shipp, 4 U.S.P.Q. 2d at 1176 (holding PURITAN and Design for laundry and dry cleaning services not likely to be confused with PURITAN for commercial dry cleaning machine filters or PURITAN for a variety of cleaning preparations, because while the goods/services are related in the sense that they all exist in the laundry and dry cleaning industry, they are not so related that they would come to the attention of the same kinds of purchasers); see also David Crystal, Inc., 471 F.2d at 1246.
D. The relevant public is not likely to be confused because they are highly sophisticated consumers.
Applicant’s clients (and presumably those of the Cited Mark) are highly sophisticated consumers who are not likely to be confused. Purchasers of Applicant’s goods are highly educated, upper-level decision makers. They are acutely aware of their needs as interventional cardiologists and need to conduct a significant amount of research before coming to a final decision about the purchase of peripheral balloon dilatation catheters. Likewise, the Cited Mark’s clients are orthopedic surgeons who are highly educated and knowledgeable when seeking out pedicle screw systems to use in a spinal implantation procedure.
On point, see Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 U.S.P.Q. 2d 1390, 1396 (T.T.A.B. 1992), holding HPM and Design for medical instruments not likely to be confused with HP and Design for a wide range of laboratory and medical instruments because:
Buyers of the parties’ goods, as well as potential customers for the products, plainly are highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection. Given the deliberation involved in determining the suitability of particular medical instruments for specific patient care applications, and since customers and prospective purchasers typically deal directly with the parties in making their purchasing decisions, we believe that the parties’ marks are not so similar that confusion as to the origin or affiliation of their medical instruments would be likely to occur.
In short, the parties’ respective target consumers, who are highly-educated decision makers, will undoubtedly exercise a good deal of deliberation and care in purchasing the parties’ respective goods and will not likely be confused.
For these reasons, Applicant submits that there is no likelihood of confusion and respectfully requests that the Examiner withdraw the Section 2(d) refusal.
CONCLUSION
Based on the foregoing, Applicant respectfully requests that the Examiner withdraw the Section 2(d) refusal and pass the application to publication.
