| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85268787 |
| LAW OFFICE ASSIGNED | LAW OFFICE 102 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
Request for Reconsideration of Refusal of Registration
Reg. No. 2012159
Applicant respectfully requests reconsideration of the refusal of registration of the mark STEREOTAXIS EPOCH for “endoscopes,” “apparatus for positioning medical devices in the body” because of a likelihood of confusion with the mark in U.S. Registration No. 2012159 on EPOCH for “orthopedic hip prostheses and instruments therefor.” While the marks are similar, in every other way the two uses are so different that there simply is no likelihood of confusion.
The Marks Are Different
Applicant has applied to register the mark STEREOTAXIS EPOCH, while Reg. No. 2012159 is on the mark EPOCH. These marks are different, and readily distinguishable, particularly by medical professionals to whom the products are directed. The Office Action indicates that “the dominant element is the word EPOCH because the remaining word, STEREOTAXIS, is merely descriptive for a feature of the services and is therefore comparatively less source-indicating.” However applicant respectfully submits that this is not correct for three reasons. First, while “stereotaxis” may be descriptive of some medical devices and services, it is not descriptive of the listed goods and services. Second, to the extent that the term “stereotaxis” could be thought to be anything more than suggestive of applicant’s goods and services, the term “stereotaxis” has acquired secondary meaning in connection with applicant who has used the term for ten years, is a publicly traded, well-known company, and has a unique market niche. Third, even disclaimed matter should be considered in comparing marks. See TMEP 1213.10. When properly considered as a whole, STEREOTAXIS EPOCH and EPOCH simply are not similar.
The Goods Are Different
The goods are different. Applicant’s products:
MAGNETIC NAVIGATION SYSTEMS COMPRISED OF MAGNETIC DEVICES AND CONTROLS FOR CONTROLLING THE POSITION AND/OR ORIENTATION OF MAGNETIC SUBSTANCES AND DEVICES IN THE BODY; A LINE OF MAGNETIC MEDICAL DEVICES THAT CAN BE MAGNETICALLY NAVIGATED IN THE BODY FOR DIAGNOSTIC AND THERAPEUTIC PURPOSES; SHEATHS; CATHETERS; ENDOSCOPES; MAGNETS AND ELECTROMAGNETS FOR MEDICAL APPLICATIONS; ATHERECTOMY DEVICES; MEDICAL GUIDEWIRES; MEDICAL ELECTRODES; ELECTRODE CATHETERS; ELECTROPHYSIOLOGY CATHETERS; MEDICAL IMAGING APPARATUS; APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY; SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES; MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES
are different from the registrant’s products:
ORTHOPEDIC HIP PROSTHESIS AND INSTRUMENTS THEREFORE
Applicant’s products are used for remotely navigating medical devices in the body. The cited registrant’s goods are hip replacements. Thus the products are used for entirely difference purposes. Not only are the goods not competitive, they are not complementary, and would never be used together.
The Office Action states that the broad nature of the description of goods somehow indicates that the goods are related, however, this is insufficient to establish that either “endoscopes” or “apparatus for positioning medical devices in the body” are in any way related to replacement hips.
The Channels of Trade and Purchasers are Different
Applicant’s products are purchased by, and used by, electrophyisiologists and other medical interventionalists, while the Registrant’s goods are purchased by, and used by, orthopedists. These purchases and users are highly knowledgeable and sophisticated. This is important because “[s]ophisticated consumers may be expected to exercise greater care.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992). These medical professionals for the good of their patients and their own professional standing, can be counted upon to exercise great care in their purchasing of these highly specialized and expensive products, This situation is similar that that in Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010), where the TTAB noted that “[j]ust based on the products involved in this proceeding, one would expect that all of the purchasers would exercise a high degree of care when making their purchasing decision.” Even more significant that the high degree of care exercised by the purchases of applicant;s and registrant’s goods is the fact that these two groups do not overlap. The purchasers and users of applicant’s products for moving medical devices through the body are not likely to purchase registrant’s products and vice versa. As the Court of Appeals for the Federal Circuit noted in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) the purchases and users “are nevertheless mostly different and in any event are sophisticated enough that the likelihood of confusion remains remote.”
Despite any breadth in their descriptions the goods do not in fact overlap, they are neither substitutes nor would they ever be used together. The purchasers and users of these goods are highly educated and sophisticated, and would be expected to exercise extreme care in selected the products used on their patients. Moreover the purchases do not overlap. A purchaser of one product is not likely to ever even encounter the other. This simply is no likelihood of confusion. See, Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010)(“Despite the similarities of the marks and the strength of opposer's mark, we find that the differences between the goods, channels of trade, and classes of consumers, as well as the sophisticated decision-making process in purchasing and using the products at issue, warrant a finding that there is no likelihood of confusion .”)
Reg. No. 3369592
Applicant respectfully requests reconsideration of the refusal of registration of the mark STEREOTAXIS EPOCH for “magnetic navigation systems comprised of magnetic devices and controls for controlling the position and/or orientation of magnetic substances and devices in the body; a line of magnetic medical devices that can be magnetically navigated in the body for diagnostic and therapeutic purposes; sheaths; catheters; endoscopes; magnets and electromagnets for medical applications; medical guidewires; medical electrodes; electrode catheters; electrophysiology catheters; apparatus for positioning medical devices in the body; systems for remotely operating medical devices namely devices that remotely advance and retract and/or remotely actuate medical devices; medical image networking apparatus and medical image networking systems comprising computer hardware, software and electronic display monitors for medical images for use in connection with computer-assisted remotely and locally controlled medical and surgical procedures” because of a likelihood of confusion with the mark in U.S. Registration No. 3369592.
The Marks Are Different
Applicant has applied to register the mark STEREOTAXIS EPOCH, while Reg. No. 3369592 is on the mark EPOQ. These marks are very different. Applicant’s mark begins with STEREOTAXIS and adds a recognizable English word EPOCH, in contrast the cited registration is for the made up term EPOQ. While it is conceivable that someone might pronounce EPOCH and EPOQ similarly, the do not have a similar appearance, and they do not have similar meanings. The Office Action indicates that “the dominant element is the word EPOCH because the remaining word, “stereotaxis”, is merely descriptive for a feature of the services and is therefore comparatively less source-indicating.” However applicant respectfully submits that this is not correct for three reasons. First, while Stereotaxis may be descriptive of some medical devices and services, it is not descriptive of the listed goods and services. Second, to the extent that the term “stereotaxis” could be thought to be anything more than suggestive of applicant’s goods and services, the term “stereotaxis” has acquired secondary meaning in connection with applicant who has used the term for ten years, is a publicly traded, well-known company, and has a unique market niche. Third, even disclaimed matter should be considered in comparing marks. See TMEP 1213.10. When properly considered as a whole, STEREOTAXIS EPOCH and EPOQ simply are not similar in the in
The Goods Are Different
The goods are different. Applicant’s products:
MAGNETIC NAVIGATION SYSTEMS COMPRISED OF MAGNETIC DEVICES AND CONTROLS FOR CONTROLLING THE POSITION AND/OR ORIENTATION OF MAGNETIC SUBSTANCES AND DEVICES IN THE BODY; A LINE OF MAGNETIC MEDICAL DEVICES THAT CAN BE MAGNETICALLY NAVIGATED IN THE BODY FOR DIAGNOSTIC AND THERAPEUTIC PURPOSES; SHEATHS; CATHETERS; ENDOSCOPES; MAGNETS AND ELECTROMAGNETS FOR MEDICAL APPLICATIONS; ATHERECTOMY DEVICES; MEDICAL GUIDEWIRES; MEDICAL ELECTRODES; ELECTRODE CATHETERS; ELECTROPHYSIOLOGY CATHETERS; MEDICAL IMAGING APPARATUS; APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY; SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES; MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES
are different from the registrant’s products:
SOFTWARE FOR ADAPTATION OF HEARING AIDS TO USERS HEARING AIDS; APPARATUS AND INSTRUMENTS FOR THE MEASUREMENT AND TREATMENT OF IMPAIRED HEARING; PARTS AND FITTINGS FOR THE AFORESAID GOODS MEDICAL AND AUDIOLOGICAL ASSISTANCE SERVICES OFFERED TO PERSONS WITH DEFECTIVE HEARING; MEDICAL AND AUDIOLOGICAL ADVICE AND INFORMATION ON HEARING AIDS; ADAPTATION AND ADJUSTMENT OF HEARING AIDS; MEDICAL AND AUDIOLOGICAL CONSULTANCY SERVICES IN THE FIELD OF DEFECTIVE HEARING AND HEARING AIDS
Applicant’s products are used for remotely navigating medical devices in the body. The cited registrant’s goods are hearing aids and related goods and services. Thus the products are used for entirely difference purposes. Not only are the goods not competitive, they are not complementary, and would never be used together.
The Office Action states that the broad nature of the description of goods somehow indicates that the goods are related, however, this is insufficient to establish that either “endoscopes” or “apparatus for positioning medical devices in the body” are in any way related to replacement hips.
The Channels of Trade and Purchasers are Different
Applicant’s products are purchased by, and used by, electrophyisiologists and other medical interventionalists, while the Registrant’s goods are purchased by, and dispensed by audiologists. These purchases and users are highly knowledgeable and sophisticated. This is important because “[s]ophisticated consumers may be expected to exercise greater care.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992). These medical professionals for the good of their patients and their own professional standing, can be counted upon to exercise great care in their purchasing of these highly specialized and expensive products, This situation is similar that that in Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010), where the TTAB noted that “[j]ust based on the products involved in this proceeding, one would expect that all of the purchasers would exercise a high degree of care when making their purchasing decision.” Even more significant that the high degree of care exercised by the purchases of applicant’s and registrant’s goods is the fact that these two groups do not overlap. The purchasers and users of applicant’s products for moving medical devices through the body are not likely to purchase registrant’s products and vice versa. As the Court of Appeals for the Federal Circuit noted in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) the purchases and users “are nevertheless mostly different and in any event are sophisticated enough that the likelihood of confusion remains remote.”
Despite any breadth in their descriptions the goods do not in fact overlap, they are neither substitutes nor would they ever by used together. The purchasers and users of these goods are highly educated and sophisticated, and would be expected to exercise extreme care in selected the products used on their patients. Moreover the purchasers do not overlap. A purchaser of one product is not likely to ever even encounter the other. This simply is no likelihood of confusion. See, Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010)(“Despite the similarities of the marks and the strength of opposer's mark, we find that the differences between the goods, channels of trade, and classes of consumers, as well as the sophisticated decision-making process in purchasing and using the products at issue, warrant a finding that there is no likelihood of confusion .”)
Request for Reconsideration of Amendment of Description of Goods Applicant respectfully requests reconsideration of the rejection of the description of goods in the application as being indefinite. The Office Action states: “The wording “MAGNETIC NAVIGATION SYSTEMS COMPRISED OF MAGNETIC DEVICES AND CONTROLS FOR CONTROLLING THE POSITION AND/OR ORIENTATION OF MAGNETIC SUBSTANCES AND DEVICES IN THE BODY” is unacceptable because it is unclear.” This description is identical to the description in applicant’s Reg. Nos. 3732775 and 3659324, and in applicant’s allowed application 77517378. Applicant respectfully submits that if the description was acceptable at least three times in the recent past, it should be accepted by the Office again. The Office Action states: “The wording “SHEATHS” is unacceptable because it is indefinite and too broad.” Applicant respectfully points out that it is claiming sheaths in Class 10, not sheaths generally. Specifically there is no need to distinguish sheaths in class 8 or class 13 because applicant is not claiming sheaths in these classes. Applicant respectfully submits that “sheaths” in class 10 can only be medical sheaths, and not the sheaths from other classes as proposed in the Office Action. The Office Action states: The wording “ENDOSCOPES” is unacceptable because it is too broad.” Applicant respectfully points out that it is claiming endoscopes in Class 10, not endoscopes generally. Specifically there is no need to distinguish endoscopes in class 9 because applicant is not claiming endoscopes in class 9. Applicant respectfully submits that “endoscopes” in class 10 can only be medical endoscopes, and not endoscopes in class 9. The term “endoscopes” was accepted by the Office in applicant’s co-pending applications 77517378 and 77307688, and numerous third party registrations, including: 3969871, 3972567, and 3906907. Applicant respectfully submits that “endoscopes” in class 10 can only be medical endoscopes. The Office Action states: “The wording ‘APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY’ is unacceptable because it is indefinite.” Applicant respectfully points out that it is claiming these goods in International Class 10, and thus is it is already understood that this is a medical device. Second, an “apparatus for positioning medical devices in the body” clearly indicates that this apparatus is a medical apparatus. Applicant respectfully submits that “APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY” in class 10 can only be medical apparatus. The Office Action states: “The wording “SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES” is unacceptable because it is indefinite. Applicant respectfully points out that it is claiming these goods in International Class 10, and thus is it is already understood that this is a medical device. Second, an “SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES” clearly indicates that this apparatus is a medical apparatus. Applicant respectfully submits that “SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES” in class 10 can only be medical apparatus. Moreover, this exact same description was accepted by the Office in applicant’s co-pending application 85181552. The Office Action states: “MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES” is unacceptable because it is indefinite.” Applicant respectfully points out that it is claiming these goods in International Class 10, and thus is it is already understood that this is a medical device. Second, an “MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES” clearly indicates that this apparatus is a medical apparatus. Applicant respectfully submits that “MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES” in class 10 can only be medical apparatus. Moreover, this exact same description was accepted by the Office in applicant’s co-pending application 77307688. Response to Information Requirement
The Office Action asks “[w]ill any of the goods listed in the application be intended for use in, or be capable of being used in, medical or surgical procedures employing stereotaxis?” In response, applicant states that the EPOCH system is intended by applicant for use in cardiac catheterization labs and similar installations for monitoring remotely controlled procedures. It is not intended for use in Stereotaxis procedures as applicant understands the term, and as used the definition in Attachments 7 (““Use of a computer and scanning devices to create three-dimensional pictures. This method can be used to direct a biopsy, external radiation, or the insertion of radiation implants.”) and 10 (“Use of a computer and scanning devices to create three-dimensional pictures. This method can be used to direct a biopsy, external radiation, or the insertion of radiation implants.“).
Response to Disclaimer Requirement Applicant respectfully requests reconsideration of the requirement of a disclaimer of STEREOTAXIS. This term is not descriptive with respect to the goods and services in this application, and is certainly not merely descriptive of the goods listed in this application. Applicant, Stereotaxis, has been in business for more than a decade, and has been using the trademark Stereotaxis for more than ten years. Stereotaxis has been a publicly traded company since 2004. See www.stereoataxis.com. Its magnetic surgery systems and related equipment have been extensively advertised and promoted, and are widely known (see http://www.stereotaxis.com/news/webMedia.php) and well regarded. To the extent that the term “stereotaxis” could be regarded as in any way descriptive, the term as a result of a decade of use, has acquired secondary meaning, and is not merely descriptive of applicant’s products. Thus, applicant respectfully submits that it is inappropriate to require applicant to disclaim its name and house mark apart from the mark as a whole. |
|
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Bryan K. Wheelock/ |
| SIGNATORY'S NAME | Bryan K. Wheelock |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 10/17/2011 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Oct 17 11:40:30 EDT 2011 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 111017114030533895-852687 87-480d3276fb7c166bc1f1bf ded7c79b6eb0-N/A-N/A-2011 1017113319806311 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/30/2011) |
Request for Reconsideration of Refusal of Registration
Reg. No. 2012159
Applicant respectfully requests reconsideration of the refusal of registration of the mark STEREOTAXIS EPOCH for “endoscopes,” “apparatus for positioning medical devices in the body” because of a likelihood of confusion with the mark in U.S. Registration No. 2012159 on EPOCH for “orthopedic hip prostheses and instruments therefor.”
While the marks are similar, in every other way the two uses are so different that there simply is no likelihood of confusion.
The Marks Are Different
Applicant has applied to register the mark STEREOTAXIS EPOCH, while Reg. No. 2012159 is on the mark EPOCH. These marks are different, and readily distinguishable, particularly by medical professionals to whom the products are directed.
The Office Action indicates that “the dominant element is the word EPOCH because the remaining word, STEREOTAXIS, is merely descriptive for a feature of the services and is therefore comparatively less source-indicating.” However applicant respectfully submits that this is not correct for three reasons. First, while “stereotaxis” may be descriptive of some medical devices and services, it is not descriptive of the listed goods and services. Second, to the extent that the term “stereotaxis” could be thought to be anything more than suggestive of applicant’s goods and services, the term “stereotaxis” has acquired secondary meaning in connection with applicant who has used the term for ten years, is a publicly traded, well-known company, and has a unique market niche. Third, even disclaimed matter should be considered in comparing marks. See TMEP 1213.10. When properly considered as a whole, STEREOTAXIS EPOCH and EPOCH simply are not similar.
The Goods Are Different
The goods are different. Applicant’s products:
MAGNETIC NAVIGATION SYSTEMS COMPRISED OF MAGNETIC DEVICES AND CONTROLS FOR CONTROLLING THE POSITION AND/OR ORIENTATION OF MAGNETIC SUBSTANCES AND DEVICES IN THE BODY; A LINE OF MAGNETIC MEDICAL DEVICES THAT CAN BE MAGNETICALLY NAVIGATED IN THE BODY FOR DIAGNOSTIC AND THERAPEUTIC PURPOSES; SHEATHS; CATHETERS; ENDOSCOPES; MAGNETS AND ELECTROMAGNETS FOR MEDICAL APPLICATIONS; ATHERECTOMY DEVICES; MEDICAL GUIDEWIRES; MEDICAL ELECTRODES; ELECTRODE CATHETERS; ELECTROPHYSIOLOGY CATHETERS; MEDICAL IMAGING APPARATUS; APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY; SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES; MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES
are different from the registrant’s products:
ORTHOPEDIC HIP PROSTHESIS AND INSTRUMENTS THEREFORE
Applicant’s products are used for remotely navigating medical devices in the body. The cited registrant’s goods are hip replacements. Thus the products are used for entirely difference purposes. Not only are the goods not competitive, they are not complementary, and would never be used together.
The Office Action states that the broad nature of the description of goods somehow indicates that the goods are related, however, this is insufficient to establish that either “endoscopes” or “apparatus for positioning medical devices in the body” are in any way related to replacement hips.
The Channels of Trade and Purchasers are Different
Applicant’s products are purchased by, and used by, electrophyisiologists and other medical interventionalists, while the Registrant’s goods are purchased by, and used by, orthopedists. These purchases and users are highly knowledgeable and sophisticated. This is important because “[s]ophisticated consumers may be expected to exercise greater care.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992). These medical professionals for the good of their patients and their own professional standing, can be counted upon to exercise great care in their purchasing of these highly specialized and expensive products, This situation is similar that that in Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010), where the TTAB noted that “[j]ust based on the products involved in this proceeding, one would expect that all of the purchasers would exercise a high degree of care when making their purchasing decision.”
Even more significant that the high degree of care exercised by the purchases of applicant;s and registrant’s goods is the fact that these two groups do not overlap. The purchasers and users of applicant’s products for moving medical devices through the body are not likely to purchase registrant’s products and vice versa. As the Court of Appeals for the Federal Circuit noted in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) the purchases and users “are nevertheless mostly different and in any event are sophisticated enough that the likelihood of confusion remains remote.”
Despite any breadth in their descriptions the goods do not in fact overlap, they are neither substitutes nor would they ever be used together. The purchasers and users of these goods are highly educated and sophisticated, and would be expected to exercise extreme care in selected the products used on their patients. Moreover the purchases do not overlap. A purchaser of one product is not likely to ever even encounter the other. This simply is no likelihood of confusion. See, Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010)(“Despite the similarities of the marks and the strength of opposer's mark, we find that the differences between the goods, channels of trade, and classes of consumers, as well as the sophisticated decision-making process in purchasing and using the products at issue, warrant a finding that there is no likelihood of confusion .”)
Reg. No. 3369592
Applicant respectfully requests reconsideration of the refusal of registration of the mark STEREOTAXIS EPOCH for “magnetic navigation systems comprised of magnetic devices and controls for controlling the position and/or orientation of magnetic substances and devices in the body; a line of magnetic medical devices that can be magnetically navigated in the body for diagnostic and therapeutic purposes; sheaths; catheters; endoscopes; magnets and electromagnets for medical applications; medical guidewires; medical electrodes; electrode catheters; electrophysiology catheters; apparatus for positioning medical devices in the body; systems for remotely operating medical devices namely devices that remotely advance and retract and/or remotely actuate medical devices; medical image networking apparatus and medical image networking systems comprising computer hardware, software and electronic display monitors for medical images for use in connection with computer-assisted remotely and locally controlled medical and surgical procedures” because of a likelihood of confusion with the mark in U.S. Registration No. 3369592.
The Marks Are Different
Applicant has applied to register the mark STEREOTAXIS EPOCH, while Reg. No. 3369592 is on the mark EPOQ. These marks are very different. Applicant’s mark begins with STEREOTAXIS and adds a recognizable English word EPOCH, in contrast the cited registration is for the made up term EPOQ. While it is conceivable that someone might pronounce EPOCH and EPOQ similarly, the do not have a similar appearance, and they do not have similar meanings.
The Office Action indicates that “the dominant element is the word EPOCH because the remaining word, “stereotaxis”, is merely descriptive for a feature of the services and is therefore comparatively less source-indicating.” However applicant respectfully submits that this is not correct for three reasons. First, while Stereotaxis may be descriptive of some medical devices and services, it is not descriptive of the listed goods and services. Second, to the extent that the term “stereotaxis” could be thought to be anything more than suggestive of applicant’s goods and services, the term “stereotaxis” has acquired secondary meaning in connection with applicant who has used the term for ten years, is a publicly traded, well-known company, and has a unique market niche. Third, even disclaimed matter should be considered in comparing marks. See TMEP 1213.10. When properly considered as a whole, STEREOTAXIS EPOCH and EPOQ simply are not similar in the in
The Goods Are Different
The goods are different. Applicant’s products:
MAGNETIC NAVIGATION SYSTEMS COMPRISED OF MAGNETIC DEVICES AND CONTROLS FOR CONTROLLING THE POSITION AND/OR ORIENTATION OF MAGNETIC SUBSTANCES AND DEVICES IN THE BODY; A LINE OF MAGNETIC MEDICAL DEVICES THAT CAN BE MAGNETICALLY NAVIGATED IN THE BODY FOR DIAGNOSTIC AND THERAPEUTIC PURPOSES; SHEATHS; CATHETERS; ENDOSCOPES; MAGNETS AND ELECTROMAGNETS FOR MEDICAL APPLICATIONS; ATHERECTOMY DEVICES; MEDICAL GUIDEWIRES; MEDICAL ELECTRODES; ELECTRODE CATHETERS; ELECTROPHYSIOLOGY CATHETERS; MEDICAL IMAGING APPARATUS; APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY; SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES; MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES
are different from the registrant’s products:
SOFTWARE FOR ADAPTATION OF HEARING AIDS TO USERS
HEARING AIDS; APPARATUS AND INSTRUMENTS FOR THE MEASUREMENT AND TREATMENT OF IMPAIRED HEARING; PARTS AND FITTINGS FOR THE AFORESAID GOODS
MEDICAL AND AUDIOLOGICAL ASSISTANCE SERVICES OFFERED TO PERSONS WITH DEFECTIVE HEARING; MEDICAL AND AUDIOLOGICAL ADVICE AND INFORMATION ON HEARING AIDS; ADAPTATION AND ADJUSTMENT OF HEARING AIDS; MEDICAL AND AUDIOLOGICAL CONSULTANCY SERVICES IN THE FIELD OF DEFECTIVE HEARING AND HEARING AIDS
Applicant’s products are used for remotely navigating medical devices in the body. The cited registrant’s goods are hearing aids and related goods and services. Thus the products are used for entirely difference purposes. Not only are the goods not competitive, they are not complementary, and would never be used together.
The Office Action states that the broad nature of the description of goods somehow indicates that the goods are related, however, this is insufficient to establish that either “endoscopes” or “apparatus for positioning medical devices in the body” are in any way related to replacement hips.
The Channels of Trade and Purchasers are Different
Applicant’s products are purchased by, and used by, electrophyisiologists and other medical interventionalists, while the Registrant’s goods are purchased by, and dispensed by audiologists. These purchases and users are highly knowledgeable and sophisticated. This is important because “[s]ophisticated consumers may be expected to exercise greater care.” Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992). These medical professionals for the good of their patients and their own professional standing, can be counted upon to exercise great care in their purchasing of these highly specialized and expensive products, This situation is similar that that in Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010), where the TTAB noted that “[j]ust based on the products involved in this proceeding, one would expect that all of the purchasers would exercise a high degree of care when making their purchasing decision.”
Even more significant that the high degree of care exercised by the purchases of applicant’s and registrant’s goods is the fact that these two groups do not overlap. The purchasers and users of applicant’s products for moving medical devices through the body are not likely to purchase registrant’s products and vice versa. As the Court of Appeals for the Federal Circuit noted in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) the purchases and users “are nevertheless mostly different and in any event are sophisticated enough that the likelihood of confusion remains remote.”
Despite any breadth in their descriptions the goods do not in fact overlap, they are neither substitutes nor would they ever by used together. The purchasers and users of these goods are highly educated and sophisticated, and would be expected to exercise extreme care in selected the products used on their patients. Moreover the purchasers do not overlap. A purchaser of one product is not likely to ever even encounter the other. This simply is no likelihood of confusion. See, Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010)(“Despite the similarities of the marks and the strength of opposer's mark, we find that the differences between the goods, channels of trade, and classes of consumers, as well as the sophisticated decision-making process in purchasing and using the products at issue, warrant a finding that there is no likelihood of confusion .”)
Request for Reconsideration of Amendment of Description of Goods
Applicant respectfully requests reconsideration of the rejection of the description of goods in the application as being indefinite.
The Office Action states: “The wording “MAGNETIC NAVIGATION SYSTEMS COMPRISED OF MAGNETIC DEVICES AND CONTROLS FOR CONTROLLING THE POSITION AND/OR ORIENTATION OF MAGNETIC SUBSTANCES AND DEVICES IN THE BODY” is unacceptable because it is unclear.” This description is identical to the description in applicant’s Reg. Nos. 3732775 and 3659324, and in applicant’s allowed application 77517378. Applicant respectfully submits that if the description was acceptable at least three times in the recent past, it should be accepted by the Office again.
The Office Action states: “The wording “SHEATHS” is unacceptable because it is indefinite and too broad.” Applicant respectfully points out that it is claiming sheaths in Class 10, not sheaths generally. Specifically there is no need to distinguish sheaths in class 8 or class 13 because applicant is not claiming sheaths in these classes. Applicant respectfully submits that “sheaths” in class 10 can only be medical sheaths, and not the sheaths from other classes as proposed in the Office Action.
The Office Action states: The wording “ENDOSCOPES” is unacceptable because it is too broad.” Applicant respectfully points out that it is claiming endoscopes in Class 10, not endoscopes generally. Specifically there is no need to distinguish endoscopes in class 9 because applicant is not claiming endoscopes in class 9. Applicant respectfully submits that “endoscopes” in class 10 can only be medical endoscopes, and not endoscopes in class 9. The term “endoscopes” was accepted by the Office in applicant’s co-pending applications 77517378 and 77307688, and numerous third party registrations, including: 3969871, 3972567, and 3906907. Applicant respectfully submits that “endoscopes” in class 10 can only be medical endoscopes.
The Office Action states: “The wording ‘APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY’ is unacceptable because it is indefinite.” Applicant respectfully points out that it is claiming these goods in International Class 10, and thus is it is already understood that this is a medical device. Second, an “apparatus for positioning medical devices in the body” clearly indicates that this apparatus is a medical apparatus. Applicant respectfully submits that “APPARATUS FOR POSITIONING MEDICAL DEVICES IN THE BODY” in class 10 can only be medical apparatus.
The Office Action states: “The wording “SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES” is unacceptable because it is indefinite. Applicant respectfully points out that it is claiming these goods in International Class 10, and thus is it is already understood that this is a medical device. Second, an “SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES” clearly indicates that this apparatus is a medical apparatus. Applicant respectfully submits that “SYSTEMS FOR REMOTELY OPERATING MEDICAL DEVICES NAMELY DEVICES THAT REMOTELY ADVANCE AND RETRACT AND/OR REMOTELY ACTUATE MEDICAL DEVICES” in class 10 can only be medical apparatus. Moreover, this exact same description was accepted by the Office in applicant’s co-pending application 85181552.
The Office Action states: “MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES” is unacceptable because it is indefinite.” Applicant respectfully points out that it is claiming these goods in International Class 10, and thus is it is already understood that this is a medical device. Second, an “MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES” clearly indicates that this apparatus is a medical apparatus. Applicant respectfully submits that “MEDICAL IMAGE NETWORKING APPARATUS AND MEDICAL IMAGE NETWORKING SYSTEMS COMPRISING COMPUTER HARDWARE, SOFTWARE AND ELECTRONIC DISPLAY MONITORS FOR MEDICAL IMAGES FOR USE IN CONNECTION WITH COMPUTER-ASSISTED REMOTELY AND LOCALLY CONTROLLED MEDICAL AND SURGICAL PROCEDURES” in class 10 can only be medical apparatus. Moreover, this exact same description was accepted by the Office in applicant’s co-pending application 77307688.
Response to Information Requirement
The Office Action asks “[w]ill any of the goods listed in the application be intended for use in, or be capable of being used in, medical or surgical procedures employing stereotaxis?” In response, applicant states that the EPOCH system is intended by applicant for use in cardiac catheterization labs and similar installations for monitoring remotely controlled procedures. It is not intended for use in Stereotaxis procedures as applicant understands the term, and as used the definition in Attachments 7 (““Use of a computer and scanning devices to create three-dimensional pictures. This method can be used to direct a biopsy, external radiation, or the insertion of radiation implants.”) and 10 (“Use of a computer and scanning devices to create three-dimensional pictures. This method can be used to direct a biopsy, external radiation, or the insertion of radiation implants.“).
Response to Disclaimer Requirement
Applicant respectfully requests reconsideration of the requirement of a disclaimer of STEREOTAXIS. This term is not descriptive with respect to the goods and services in this application, and is certainly not merely descriptive of the goods listed in this application.
Applicant, Stereotaxis, has been in business for more than a decade, and has been using the trademark Stereotaxis for more than ten years. Stereotaxis has been a publicly traded company since 2004. See www.stereoataxis.com. Its magnetic surgery systems and related equipment have been extensively advertised and promoted, and are widely known (see http://www.stereotaxis.com/news/webMedia.php) and well regarded. To the extent that the term “stereotaxis” could be regarded as in any way descriptive, the term as a result of a decade of use, has acquired secondary meaning, and is not merely descriptive of applicant’s products. Thus, applicant respectfully submits that it is inappropriate to require applicant to disclaim its name and house mark apart from the mark as a whole.