UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 11/16/2011

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Because of the legal technicalities involved in this application, applicant may wish to hire an attorney specializing in trademark or intellectual property law.  For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm or a local telephone directory.  The USPTO cannot aid in the selection of an attorney.  37 C.F.R. §2.11. 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3457826.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant: similarity of the marks and similarity of the goods.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

For the reasons set forth below, the examining attorney submits that there is a likelihood of confusion between applicant’s mark MEDIFIL for “Dressings for acute and chronic wounds, burns, surgical wounds; Wound dressings” in International Class 5, and registrant’s mark:

 

• MEDEFIL for “Syringes sold filled with saline and syringes sold filled with heparin” in International Class 5.

 

COMPARISON OF THE MARKS

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

In the present case, applicant’s applied-for mark is almost identical the registered mark, with the only difference being the fourth letter in each mark (i.e., “I” in the applied-for mark, “E” in the registered mark).

 

In addition, the marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).

 

Ultimately, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

COMPARISON OF THE GOODS

 

A likelihood of confusion analysis is concerned with likelihood of confusion as to the source of the goods being provided, not necessarily the particular differences between the goods.  In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993); TMEP §1207.01; see Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975).  The source of applicant’s goods is likely to be confused with the source of registrant’s goods if it can be shown that the goods are closely related and that it is common for a single entity to provide both applicant’s and registrant’s goods.

 

Moreover, the greater degree of similarity between the applied-for mark and the registered mark, as is the situation here, the lesser the degree of similarity between the goods of the respective parties that is required to support a finding of likelihood of confusion.  In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).

 

In the present case, applicant’s and registrant’s goods are closely related in that they are medical supplies.

 

Moreover, the goods of applicant and registrant are likely to emanate from a single source.  See, e.g.:

 

• COVIDIEN:

·         http://www.kendallhq.com/kendallhealthcare/pageBuilder.aspx?topicID=155109&breadcrumbs=0:121623,154339:0 (wound dressings);

·         http://www.kendallhq.com/kendallhealthcare/pageBuilder.aspx?topicID=171035&breadcrumbs=0:121623,81043:0,170984:0 (syringes);

• U.S. Registration No. 2322805 (offering both wound dressings and syringes);
• LexisNexis® article at the end of this Office action.

 

As such, consumer confusion as to the source of the goods being provided is likely since the goods are closely related and a single entity can offer both applicant’s and registrant’s goods under the same mark.

 

CONCLUSION

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).  As such, because applicant’s applied-for mark and registrant’s mark are nearly identical in sound, appearance, and commercial impression, and because applicant’s and registrant’s goods are closely related, the applied-for mark must be refused registration based on a likelihood of confusion.

 

RESPONSE REQUIRED

 

For this application to proceed toward registration, applicant must explicitly address the refusal raised in this Office action by providing arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If, after first carefully reading this Office action in its entirety, applicant has specific questions regarding the refusal herein, please telephone or e-mail the assigned trademark examining attorney.  Please note that the examining attorney cannot provide any legal advice or suggestions as to how to overcome the likelihood of confusion refusal. 

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 112

(571) 272-1911

andrew.leaser@uspto.gov

 

 

TO RESPOND TO THIS LETTER:  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. 

 

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.

 

LEXISNEXIS® EVIDENCE

 

IN BRIEF Albuquerque Tribune (New Mexico) July 03, 1997, Thursday

 

Copyright 1997 Albuquerque Tribune 

Albuquerque Tribune (New Mexico)

 

July 03, 1997, Thursday

 

SECTION: Business; Pg. E2

 

LENGTH: 549 words

 

HEADLINE: IN BRIEF

 

BYLINE: Staff reports

 

BODY:

 

Lagging: Santa Fe's economy continued its decline through the spring, posting a loss of 200 jobs from April 1996 to last April. The 0.29 percent drop was in contrast to a gain of 2.01 percent reported by Albuquerque and a 2.99 percent increase posted by Las Cruces during the same period, according to the June issue of the Blue Chip Job Growth Update, published by Arizona State University.

 

Teaming up: General Technology Corp. of Albuquerque has been accepted into the Defense Department Mentor-Protege Program, in which major Defense Department contractors help small businesses enhance their capabilities for military and non-military projects. McDonnell Douglas will help GTC develop the expertise to test and troubleshoot complex electronic assemblies so as to better supply McDonnell Douglas.

 

Acquiring: Lukens Medical Corp. of Albuquerque has signed a deal with Norco Medical of Deland, Fla., to enter the $15 million market for disposable aortic punches. Norco makes a disposable rotating-blade instrument used in heart-bypass surgery. Lukens makes medical products, including syringes, dressing and sutures.

 

Construction down: Construction activity of all types dropped in New Mexico in May from the same period last year, with non-residential construction showing a 9 percent decline, the largest in any category. Year-to-date non-residential construction through May showed a 28 percent decline in value, according to a survey by F.W. Dodge, a division of McGraw Hill.

 

PR awards: Rick Johnson & Co. won four awards at the New Mexico Public Relations Society of America's 1997 El Conquistador Awards, including first place for its PR work for Ringling Brothers & Barnum and Bailey's Circus' 1996 visit to Albuquerque and first place for the United World College 1996 annual report.

 

Medical claims: A new medical-claims-management company, MediClaims Management, has opened in Albuquerque, specializing in claims processing, electronic filing and software. MediClaims is an affiliate of Medi-Bill Systems National Clearinghouse Network of Beaverton, Ore.

 

New rep: The National Association for the Self-Employed has added a representative in the Albuquerque area. The non-profit association provides benefits, such as health insurance. The new representative is Elizabeth Nelson.

 

Franchise honor: Remedy Intelligent Staffing in Albuquerque has been named the most improved office in the Remedy franchise system for the year ending March 31. The office says it saw a 187 percent sales gain during that time.

 

Acquired: U.S. Office Products, a New York City retailer of office and school-supply stores, has bought Allied School & Office Supplies, 4900 Menaul Blvd. N.E.

 

Envoy: Dennis Hammar, general manager and vice president of Eddy/Hammar Ace Hardware, 1008 Wyoming Blvd. S.E., has been selected to serve as one of 10 ambassadors for Accion New Mexico, a non-profit agency that makes "micro" loans to small-business entrepreneurs.

 

Outsourcing: Tom Garrity, longtime spokesperson for the Albuquerque Convention and Visitor's Bureau, is leaving the bureau's employ to open his own public relations firm, the Garrity Group. Garrity said his resignation is effective July 1, although he will continue to work with the bureau on a contract basis.

 

 

 

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

Your trademark application (Serial No. 85382141) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office Action”) on 11/16/2011 to which you must respond.  Please follow these steps:

 

1. Read the Office letter by clicking on this link OR go to http://tmportal.gov.uspto.report/external/portal/tow and enter your 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. 

 

2. Respond within 6 months, calculated from 11/16/2011 (or sooner if specified in the Office letter), using the Trademark Electronic Application System Response to Office Action form. If you have difficulty using the USPTO website, contact TDR@uspto.gov. 

 

3. Contact the examining attorney who reviewed your application with any questions about the content of the office letter:

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 112

(571) 272-1911

andrew.leaser@uspto.gov

WARNING

Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, please use the Trademark Electronic Application System Response to Office Action form.