| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85403591 |
| LAW OFFICE ASSIGNED | LAW OFFICE 111 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85403591 |
| LITERAL ELEMENT | PRECEPT |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
In the Office Action dated December 19, 2011, the Applicant’s mark PRECEPT (“Applicants Mark”), for use in class 010 in connection with “surgical implants for use in spinal surgery comprising artificial material, namely, pedicle screws and rods, and associated surgical instruments,” was refused registration under Section 2(d) of the Trademark Act. The Examining Attorney has taken the position that there is a likelihood of confusion between the Applicant’s Mark and U.S. Registration No. 1309835 (“Existing Mark”). The Existing Mark registers the mark PRECEPT in class 010 for use with “Surgeons' Caps, Nurses' Caps, Urology Aprons, Infants' Examination Shirts, Surgery Hoods, Surgical Masks, Wraps for Surgical Instruments, Shoe Coverings for Use in Hospitals and Examination Gowns and Capes.” First, applicants submit that the Existing Mark is only entitled to a narrow scope of protection. PRECEPT (see dictionary entry -Exhibit 1) is a common word in the English language. A search of the trademark database shows that there are currently 22 active registrations for PRECEPT (see Exhibit 2). Moreover, four additional PRECEPT marks were at one time registered in class 010 along with the Existing Mark (see Exhibit 3). Each of additional marks were registered after the Existing Mark and at one point all 5 marks existed simultaneously in class 010. It is also noteworthy that one of the additional marks, namely U.S. Registration 2137418 (“Biomet Mark”), was for goods particularly similar to those of the Applicants Mark. Specifically, the “orthopedic implants and prostheses” of the Biomet Mark are very closely related to the Applicants Mark’s “surgical implants for use in spinal surgery”. As highlighted by these facts, broad protection of the Existing Mark is inappropriate and protection should instead be limited to a narrow scope. Second, contrary to the allegation in the Office Action, there is little likelihood of confusion between the Applicants Mark for “surgical implants for use in spinal surgery comprising artificial material, namely, pedicle screws and rods, and associated surgical instruments” and the Existing Mark for The Existing Mark registers the mark PRECEPT in class 010 for use with “Surgeons' Caps, Nurses' Caps, Urology Aprons, Infants' Examination Shirts, Surgery Hoods, Surgical Masks, Wraps for Surgical Instruments, Shoe Coverings for Use in Hospitals and Examination Gowns and Capes. In the surgical profession buyer sophistication is exceedingly high. Spine surgeons, for example, who have the patient’s wellbeing (and often times, life) in their hands, are well informed on the implants they use before they use them. In other words, the products are not purchased on a whim and without a high level of information exchange. Often times, for example, prior to using a specific product, the surgeon will attend trainings under the direction of the seller during which they can practice using the product on cadavers or other training aides prior to purchasing the product for use on a real live patient. Moreover, the implants sold under the Applicants Mark are typically sold after one-on-one sales calls between the seller’s representatives and the spine surgeon. Accordingly, just as there was no likelihood of confusion between the Existing Mark and the Biomet Mark noted above, there will not be confusion between the Existing Mark and the Applicants Mark. For all of the foregoing reasons, withdrawal of the refusal to register and prompt approval of the mark for publication is respectfully solicited. Please contact the undersigned attorney with any questions or comments. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_1-17322698250-195658901_._Exhibit_1.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\854\035\85403591\xml1\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_1-17322698250-195658901_._Exhibit_2.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\854\035\85403591\xml1\ROA0003.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\854\035\85403591\xml1\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_1-17322698250-195658901_._Exhibit_3.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\854\035\85403591\xml1\ROA0005.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibit 1 is a screenshot showing the dictioanry.com entry for the word Precept Exhibit 2 is a screenshot showing the current active registrations including "Precept" Exhibit 3 is a screenshot showing the once coexisting registrations for "Precept" in class 10 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Rory Schermerhorn/ |
| SIGNATORY'S NAME | Rory Schermerhorn |
| SIGNATORY'S POSITION | Attorney of Record, CA bar member |
| SIGNATORY'S PHONE NUMBER | 858-909-1845 |
| DATE SIGNED | 06/19/2012 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Jun 19 20:14:59 EDT 2012 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20120619201459246439-8540 3591-49099db9642729a9539f 39d59e0c67b17-N/A-N/A-201 20619195658901199 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
In the Office Action dated December 19, 2011, the Applicant’s mark PRECEPT (“Applicants Mark”), for use in class 010 in connection with “surgical implants for use in spinal surgery comprising artificial material, namely, pedicle screws and rods, and associated surgical instruments,” was refused registration under Section 2(d) of the Trademark Act. The Examining Attorney has taken the position that there is a likelihood of confusion between the Applicant’s Mark and U.S. Registration No. 1309835 (“Existing Mark”). The Existing Mark registers the mark PRECEPT in class 010 for use with “Surgeons' Caps, Nurses' Caps, Urology Aprons, Infants' Examination Shirts, Surgery Hoods, Surgical Masks, Wraps for Surgical Instruments, Shoe Coverings for Use in Hospitals and Examination Gowns and Capes.”
First, applicants submit that the Existing Mark is only entitled to a narrow scope of protection. PRECEPT (see dictionary entry -Exhibit 1) is a common word in the English language. A search of the trademark database shows that there are currently 22 active registrations for PRECEPT (see Exhibit 2). Moreover, four additional PRECEPT marks were at one time registered in class 010 along with the Existing Mark (see Exhibit 3). Each of additional marks were registered after the Existing Mark and at one point all 5 marks existed simultaneously in class 010. It is also noteworthy that one of the additional marks, namely U.S. Registration 2137418 (“Biomet Mark”), was for goods particularly similar to those of the Applicants Mark. Specifically, the “orthopedic implants and prostheses” of the Biomet Mark are very closely related to the Applicants Mark’s “surgical implants for use in spinal surgery”. As highlighted by these facts, broad protection of the Existing Mark is inappropriate and protection should instead be limited to a narrow scope.
Second, contrary to the allegation in the Office Action, there is little likelihood of confusion between the Applicants Mark for “surgical implants for use in spinal surgery comprising artificial material, namely, pedicle screws and rods, and associated surgical instruments” and the Existing Mark for The Existing Mark registers the mark PRECEPT in class 010 for use with “Surgeons' Caps, Nurses' Caps, Urology Aprons, Infants' Examination Shirts, Surgery Hoods, Surgical Masks, Wraps for Surgical Instruments, Shoe Coverings for Use in Hospitals and Examination Gowns and Capes. In the surgical profession buyer sophistication is exceedingly high. Spine surgeons, for example, who have the patient’s wellbeing (and often times, life) in their hands, are well informed on the implants they use before they use them. In other words, the products are not purchased on a whim and without a high level of information exchange. Often times, for example, prior to using a specific product, the surgeon will attend trainings under the direction of the seller during which they can practice using the product on cadavers or other training aides prior to purchasing the product for use on a real live patient. Moreover, the implants sold under the Applicants Mark are typically sold after one-on-one sales calls between the seller’s representatives and the spine surgeon.
Accordingly, just as there was no likelihood of confusion between the Existing Mark and the Biomet Mark noted above, there will not be confusion between the Existing Mark and the Applicants Mark.
For all of the foregoing reasons, withdrawal of the refusal to register and prompt approval of the mark for publication is respectfully solicited. Please contact the undersigned attorney with any questions or comments.
