| To: | VICAR OPERATING, INC. (jcone@hitchcockevert.com) |
| Subject: | U.S. TRADEMARK APPLICATION NO. 85193912 - ACUGUARD - VCAA- |
| Sent: | 1/17/2012 10:31:45 AM |
| Sent As: | ECOM105@USPTO.GOV |
| Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85193912
MARK: ACUGUARD
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: VICAR OPERATING, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 1/17/2012
THIS IS A FINAL ACTION.
This letter is in response to applicant’s communication filed November 29, 2011. The examining attorney has reviewed applicant’s arguments for registration of the mark and has found them unpersuasive. Therefore, the likelihood of confusion refusal is maintained.
CONSENT AGREEMENT
Factors to be considered in weighing a consent agreement include the following:
(1) Whether the consent shows an agreement between both parties;
(2) Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;
(3) Whether the parties agree to restrict their fields of use;
(4) Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and
(5) Whether the marks have been used for a period of time without evidence of actual confusion.
See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).
Applicant argues that “the consent by Boehringer differs from the alleged consents held insufficient in the cases relied on by the Trademark Examiner because Boehringer expressly consents to registration and use of the applied for mark and explains that the reason for its consent is that in Boehringer’s opinion there is no likelihood of confusion because of the differences between the respective marks and the goods.”
Applicant further argues that the fact that the parties have agreed to use the respective marks for the specified goods is enough to meet the requirement that the parties indicate the arrangements they have made to avoid confusion. Applicant argues that the parties’ opinion that there is no likelihood of confusion in this case is entitled to great weight and that the Examining Attorney should not put her evaluation above the judgment of the parties.
Indeed, the practice of the Office is to give substantial weight to a proper consent agreement. When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely. TMEP §1207.01(d)(viii).
Nevertheless, “naked” consent agreements (i.e., agreements that contain little more than a prior registrant’s consent to registration of an applied-for mark and possibly a mere statement that source confusion is believed to be unlikely) are typically considered to be less persuasive than agreements that detail the particular reasons why the relevant parties believe no likelihood of confusion exists and specify the arrangements undertaken by the parties to avoid confusing the public. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A 1973) (noting that “[i]n considering agreements, a naked ‘consent’ may carry little weight,” but “[t]he weight to be given more detailed agreements . . . should be substantial”); see also In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1956 (TTAB 1994) (“[T]he more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded.”); In re Permagrain Prods., Inc., 223 USPQ 147 (TTAB 1984) (finding a consent agreement submitted by applicant did not alter the conclusion that confusion was likely, because the agreement was “naked” in that it merely indicated that each party would recognize, and refrain from interfering with, the other’s use of their respective marks and that the applicant would not advertise or promote its mark without its company name, but the agreement did not restrict the markets or potential customers for their goods in such a way as to avoid confusion.) TMEP §1207.01(d)(viii).
Moreover, a consent agreement is “but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).” In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985). TMEP §1207.01(d)(viii). The examining attorney attached ample evidence showing that the parties’ goods are the kind that could emanate from the same source or travel in the same channels of trade.
If applicant submits a more “clothed” consent agreement indicating the registrant’s consent to the use and registration of the mark, and addressing one or both of the factors listed above, this refusal will be reconsidered.
FINAL - LIKELIHOOD OF CONFUSION REFUSAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3926282. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Registration was previously enclosed
Contrary to applicant’s contention, since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
The final refusal pertaining to this issue is maintained.
PROPER RESPONSE TO FINAL OFFICE ACTION
If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Evelyn Bradley/
Evelyn Bradley
Trademark Examiner
Law Office 105
(571) 272-9292
evelyn.bradley@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.