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: 6/2/2012

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on 05/15/2012.

 

This application was refused registration on the ground that it is likely to be confused with the mark in U.S. Registration No. 3457826.  Applicant’s arguments to the contrary have been considered and found unpersuasive.  Consequently, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to this registration.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).  All arguments and evidence submitted in connection with previous Office actions associated with this application are incorporated by reference herein.

 

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. 

 

In this case, the following factors are the most relevant: similarity of the marks and similarity of the goods.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.  Based on these factors, the examining attorney maintains that there is a likelihood of confusion between applicant’s applied-for 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 the present case, applicant’s applied-for mark is almost identical in appearance to the registered mark, with the only difference being applicant’s use of an “I” in place of the second letter “E” in the registered mark.  This is a minor change to the fourth letter in each mark, and as applicant correctly points out, when comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under applicant’s and registrant’s marks is likely to result.  Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).  The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks.  L’Oreal S.A. v. Marcon, 102 USPQ2d at 1438; Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

Applicant also argues that the applied-for mark uses upper- and lowercase letters, whereas the registered mark only uses uppercase letters.  However, both marks are standard character marks, and marks in standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”); see also In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).

 

The two marks are also 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).  Applicant argues that the “I” and the “E” after “MED” are phonetically different.  There is no correct pronunciation of a mark, however, because it is impossible to predict how the public will pronounce a particular mark.  See In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1701 (TTAB 2006); TMEP §1207.01(b)(iv).  The marks in question could clearly be pronounced the same, and, in any event, slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

Lastly, applicant argues that the prefixes “MEDI” and “MEDE” have different meanings (i.e., “middle” and “a member of an Iranian people,” respectively).  There is no evidence, however, that consumers would associate these meanings with the marks.  Indeed, consumers could view the “MED” prefix as referring to “medical,” since both applicant and registrant offer medical goods.  See, e.g.:

 

• The American Heritage® Medical Dictionary (2007), http://medical-dictionary.thefreedictionary.com/med (defining “med” as “medical”)
• Acronym Finder, http://www.acronymfinder.com/Medical-(MED).html (stating “MED” stands for “medical”)

 

Thus, the marks are confusingly similar because they are nearly identical in appearance and sound.

 

COMPARISON OF THE GOODS

 

The fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source of those 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).

 

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, as the evidence attached in the previous Office action demonstrated.

 

As such, consumer confusion as to the source of the goods being provided is likely since applicant’s and registrant’s goods are closely related and it is common for a single entity to offer both applicant’s and registrant’s goods.  Applicant made no arguments to the contrary in its response.

 

CONCLUSION

 

Because applicant’s applied-for mark and registrant’s mark are nearly identical in appearance and sound, and because applicant’s and registrant’s goods are closely related and likely to emanate from a single source, the applied-for mark must be refused registration based on a likelihood of confusion.  Any doubt regarding this 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). 

 

This refusal is now made FINAL.

 

RESPONSE OPTIONS

 

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).

 

 

/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.  Instead, 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.   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.

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 6/2/2012 FOR

SERIAL NO. 85382141

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: 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 action.

 

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

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 6/2/2012 (or sooner if specified in the office action).

 

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, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

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