To: | LITE-ON IT CORPORATION (naquintero@quinterolaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85467218 - SKYLA - 1013243T |
Sent: | 11/11/2013 9:29:38 AM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85467218
MARK: SKYLA
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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: LITE-ON IT CORPORATION
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 11/11/2013
On Aptil 10th, 2012, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 77813913 and 85082269. The referenced prior-pending applications have since registered. Therefore, registration is refused as follows.
LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL
A) COMPARISON OF THE MARKS
Applicant’s mark is “SKYLA” with a design element. Cited registrant’s marks are both “SKYLA” in standard characters. The marks are similar because they both consist of the word “SKYLA,” which is cited registrant’s mark as a whole.
Although applicant’s mark contains a design element, the word portions of the marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Because the marks are comprised of identical wording, the marks are sufficiently similar to support a finding of likelihood of confusion.
B) COMPARISON OF THE GOODS
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Applicant’s refused goods are “amino acids for medical or veterinary purposes; bacterial and bacteriological preparations for medical or veterinary purposes; biochemical preparations for medical or veterinary purposes, namely, preparations for blood analysis and body fluid analysis; biological and chemical preparations and reagents for medical or veterinary use, namely, reagents for biochemistry analysis, immunoassay and nucleic acid testing; biological indicators for monitoring sterilization processes for medical or veterinary purposes; biological tissue cultures for veterinary purposes; chemical reagents for medical or veterinary purposes; clinical medical reagents for processing human whole blood and its components for use in blood transfusions stored in bags, bottles, syringes and other such containers used to store such substances in the medical field; diagnostic preparations for medical or veterinary purposes; diagnostic reagents and contrast media for medical use; drug testing kits comprised of medical diagnostic reagents and assays for testing body fluids; electrophoresis gels for medical or veterinary purposes; greases and petroleum jelly for medical or veterinary purposes; medical diagnostic reagents and assays for testing of body fluids; medical diagnostic reagents and assays for testing body fluids for microorganisms; medical diagnostic reagents for the analysis of body fluids; molecular complex for the delivery of non-radical oxygen for medicinal, surgical, therapeutic or veterinary purposes; nucleic acid sequences and chemical reagents for medical and veterinary purposes; plant extracts for medical, veterinary and pharmaceutical purposes; reagents and media for medical and veterinary diagnostic purposes; reagents for medical use” “electromagnetic medical diagnostic imaging apparatus,” “electromagnetic medical diagnostic imaging apparatus,” “medical diagnostic instruments for the analysis of body fluids,” “MRI diagnostic apparatus,” “sample preparation device for medical diagnostic uses,” and “ultrasonic medical diagnostic apparatus; ultrasound diagnostic apparatus; x-ray diagnostic apparatus.”
Cited registrant’s goods are “pharmaceuticals, namely, hormonal preparations” and “medical device, namely, an intrauterine device for contraception.”
And with respect to the refused goods in International Class 10, the goods are related cited registrant’s contraception device because they could be used to diagnose or detect fertility, conception, or pregnancy. With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Absent restrictions in an application and/or registration, the identified goods are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identifications set forth in the application and registration have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording that does not exclude use for reproductive or contraceptive detection, diagnosis, or prevention.
Because the marks are similar and the goods are related, a likelihood of confusion exists to prevent registration of applicant’s mark under Section 2(d) of the Trademark Act for all of International Class 5, and “electromagnetic medical diagnostic imaging apparatus,” “medical diagnostic instruments for the analysis of body fluids,” “MRI diagnostic apparatus,” “sample preparation device for medical diagnostic uses,” and “ultrasonic medical diagnostic apparatus; ultrasound diagnostic apparatus; x-ray diagnostic apparatus” in International Class 10 only.
RESPONDING TO A PARTIAL REFUSAL
(1) Deleting the goods to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
PARTIAL ABANDONMENT ADVISORY
International Class 5 – ENTIRE CLASS
International Class 10 – “Electromagnetic medical diagnostic imaging apparatus,” “medical diagnostic instruments for the analysis of body fluids,” “MRI diagnostic apparatus,” “sample preparation device for medical diagnostic uses,” and “ultrasonic medical diagnostic apparatus; ultrasound diagnostic apparatus; x-ray diagnostic apparatus.”
The application will then proceed with the following goods only:
International Class 10 – “Blood pressure and diabetic diagnostic medical devices; Breath gas analyzers for medical diagnostics; Cytometers for medical diagnostic use; Diagnostic apparatus for the detection of periodontal disease; Diagnostic apparatus for the detection of cancer; Diagnostic kits consisting primarily of probes, buffers and reagents for use in microbial testing; Dynamometers for diagnostic muscle strength testing; Flow cytometers and flow-based analyzers providing cell and particle analysis, detection, or counting for medical, clinical, medical diagnostic, and therapeutic uses; Flow cytometers for medical diagnostic uses; Hematology analyzers for medical diagnostic uses; Instrument and apparatus systems for medical diagnostic uses consisting of flow cytometers, hematology analyzers, sample preparation device, and related data management software sold as a unit; Medical apparatus and instruments for diagnostic radiopharmaceutical use; Medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing; Medical diagnostic apparatus, analytical apparatus for medical purposes and blood pressure measuring apparatus; Medical diagnostic apparatus for detecting cancer; Medical dose meter that measures the total radiation dose received by a patient during a diagnostic procedure; Medical instrument for cardiovascular diagnostics; Nuclear medicine diagnostic imaging apparatus; Organoleptic diagnostic testing apparatus for medical, dental or cosmetic use; Orthopedic apparatus and instruments for diagnostic and therapeutic use; Orthopedic devices for diagnostic and therapeutic use; Radiological apparatus for diagnostic and medical purposes, namely, magnetic resonance imager; Radiological apparatus for diagnostic and medical purposes, namely, a helium-3 polarizer used for magnetic resonance imaging (MRI) of the lungs; Ultrasonic bone densitometer with computer, printer, and computer software for use therewith, sold as a unit, for medical diagnostic use.”
See 37 C.F.R. §2.65(a); TMEP §718.02(a).
Examining Attorney
Law Office 104
Phone - (571) 272-8856
Fax - (571) 273-8856
jason.blair@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.