| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
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| SERIAL NUMBER | 85562589 | ||||||||||||||||||||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 114 | ||||||||||||||||||||||||
| MARK SECTION | |||||||||||||||||||||||||
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=85562589 | ||||||||||||||||||||||||
| LITERAL ELEMENT | ULTRAFLEX | ||||||||||||||||||||||||
| 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) | |||||||||||||||||||||||||
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This is in response to the Office Action issued on May 30, 2012. Remarks I. §2(d) Likelihood of Confusion The Examining Attorney now refuses registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d) on the ground that Applicant’s trademark ULTRAFLEX is confusingly similar to the mark identified in registration no. 3398358. Applicant respectfully disagrees with the Examining Attorney’s assessment and submits the following arguments in support of its position. As the Examining Attorney is aware, a likelihood of confusion is defined as “a substantial likelihood that the public will be confused.” Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 206 U.S.P.Q. 961 (1st Cir. 1980). The determination of likelihood of confusion focuses on whether the relevant purchasing public would mistakenly assume that the Applicant’s goods originate from the same source as, or are associated with, the goods in the cited registrations. See, e.g., Paula Payne Prods. Co. v. Johnson Publ’g Co., 177 U.S.P.Q. 76, 77 (C.C.P.A. 1973). To maintain a likelihood of confusion refusal, the Examining Attorney must demonstrate that confusion is probable and not simply possible. Rodeo Collection, Ltd. v. West Seventh, 2 U.S.P.Q.2d 1204 (9th Cir. 1987). Thus, the law requires “a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.” Int’l Ass’n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 41 U.S.P.Q.2d 1251, 1255 (1st Cir. 1996). The determination as to whether confusion is likely is made on a case-by-case basis aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). See, e.g., On-Line Careline Inc. v. Am. Online Inc., 56 U.S.P.Q.2d 1471, 1474 (Fed. Cir. 2000). In any likelihood of confusion analysis, the two key considerations are the similarities between the marks and the relatedness of the goods. In re Aztec Res. Enters., Inc., 50 U.S.P.Q.2d 1209 (T.T.A.B 1999). Applicant submits that a thorough review of these considerations shows that a likelihood of confusion with the cited registration is not probable. The goods used in connection with the cited registration differs from Applicant’s goods to such a degree that a likelihood of confusion is not probable. With regard to registration no. 3398358, the goods covered by the registration are “medical devices, namely, cannulae.” These are sufficiently different from the goods claimed in association with Applicant’s mark. Cannulae utilize a trocar during insertion, which generally occurs into a bodily cavity, duct, or vessel. See Ex. A. Applicant’s goods, on the other hand are “catheters”, which are generally inserted into a hollow organ of the body. See Ex. B. The goods offered for sale by Applicant and Registrant are to different customers through different trade channels. Furthermore, it is also essential to consider the sophistication of the buyers. “In every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.” Dupont, 476 F.2d at 1362 (emphasis in original). “Sophisticated consumers may be expected to exercise greater care.” Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489, (1st Cir. 1981). “[T]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.” Astra Pharm. Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, (1st Cir. 1983). Consumers purchasing Applicant’s and Registrant’s products are sophisticated because both Applicant’s products are expensive and require technical skill to operate and are only purchased after careful consideration by the consumers. Given that the consumers of both Applicant’s goods and Registrant’s goods are sophisticated, the differences in the marks and the associated goods, confusion is not likely between Registrant’s and Applicant’s marks. Finally, it is well recognized that when a mark is commonly used on numerous types of goods by unrelated companies, it may be reasonable to infer that purchasers have been conditioned to expect different sources for specifically different goods even though such goods might be deemed sufficiently related to be attributable to a single source under an uncommonly used mark. Compare Amstar Corp. v. Domino's Pizza Inc., 615 F.2d 252, 259-60, (5th Cir. 1980) (no confusion likely between DOMINO for sugar and DOMINO for pizza services in presence of third party use), cert. denied, 449 U.S. 899, (1980); In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467 (T.T.A.B. 1988) (confusion likely between restaurant services and a mustard sold under MUCKY DUCK mark with no presence of third party use). The ability of purchasers to distinguish between goods through trademarks commonly used by different third parties reflects what happens in a real world setting. Matsushita Elec. Indus. Co., Ltd. v. Nat’l Steel Constr. Co., 442 F.2d 1383, 1385 (Fed. Cir. 1971). In this case, there are numerous third-party registrations containing the word “ULTRAFLEX”. These registrations create a crowded marketplace of “ULTRAFLEX” formative marks, which indicates that even minor differences between the marks can be sufficient to avoid confusion. Applicant points out the following third-party registrations containing the word “ULTRAFLEX”:
In light of the differences in the goods sold in association with Applicant’s and Registrant’s marks, the sophistication of the consumers of Applicant’s and Registrant’s products and the crowded marketplace, Applicant requests that the Examining Attorney withdraw the refusal and allow Applicant’s mark ULTRAFLEX to be registered. II. Conclusion For all the aforementioned reasons, applicant respectfully requests the Examining Attorney to withdraw the refusal under Section 2(d) of the Trademark Act. If further clarification is needed or if a telephone conference would be useful in resolving any issues pending in this application, Applicant requests that the examiner contacts the undersigned. |
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| EVIDENCE SECTION | |||||||||||||||||||||||||
| EVIDENCE FILE NAME(S) | |||||||||||||||||||||||||
| ORIGINAL PDF FILE | evi_430231141-111015588_._Evidence.pdf | ||||||||||||||||||||||||
| CONVERTED PDF FILE(S) (4 pages) |
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| \\TICRS\EXPORT16\IMAGEOUT16\855\625\85562589\xml4\ROA0003.JPG | |||||||||||||||||||||||||
| \\TICRS\EXPORT16\IMAGEOUT16\855\625\85562589\xml4\ROA0004.JPG | |||||||||||||||||||||||||
| \\TICRS\EXPORT16\IMAGEOUT16\855\625\85562589\xml4\ROA0005.JPG | |||||||||||||||||||||||||
| DESCRIPTION OF EVIDENCE FILE | Exhibits to Response to Office Action | ||||||||||||||||||||||||
| SIGNATURE SECTION | |||||||||||||||||||||||||
| RESPONSE SIGNATURE | /KLS/ | ||||||||||||||||||||||||
| SIGNATORY'S NAME | Kelu L. Sullivan | ||||||||||||||||||||||||
| SIGNATORY'S POSITION | Attorney of Record/DC Bar Member | ||||||||||||||||||||||||
| SIGNATORY'S PHONE NUMBER | 202-861-1532 | ||||||||||||||||||||||||
| DATE SIGNED | 11/29/2012 | ||||||||||||||||||||||||
| AUTHORIZED SIGNATORY | YES | ||||||||||||||||||||||||
| FILING INFORMATION SECTION | |||||||||||||||||||||||||
| SUBMIT DATE | Thu Nov 29 11:58:28 EST 2012 | ||||||||||||||||||||||||
| TEAS STAMP | USPTO/ROA-X.XX.XXX.XXX-20 121129115828976035-855625 89-490456ce4d720fba7d913d 183a56dc27d57-N/A-N/A-201 21129114537796507 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This is in response to the Office Action issued on May 30, 2012.
Remarks
I. §2(d) Likelihood of Confusion
The Examining Attorney now refuses registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d) on the ground that Applicant’s trademark ULTRAFLEX is confusingly similar to the mark identified in registration no. 3398358. Applicant respectfully disagrees with the Examining Attorney’s assessment and submits the following arguments in support of its position.
As the Examining Attorney is aware, a likelihood of confusion is defined as “a substantial likelihood that the public will be confused.” Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 206 U.S.P.Q. 961 (1st Cir. 1980). The determination of likelihood of confusion focuses on whether the relevant purchasing public would mistakenly assume that the Applicant’s goods originate from the same source as, or are associated with, the goods in the cited registrations. See, e.g., Paula Payne Prods. Co. v. Johnson Publ’g Co., 177 U.S.P.Q. 76, 77 (C.C.P.A. 1973).
To maintain a likelihood of confusion refusal, the Examining Attorney must demonstrate that confusion is probable and not simply possible. Rodeo Collection, Ltd. v. West Seventh, 2 U.S.P.Q.2d 1204 (9th Cir. 1987). Thus, the law requires “a showing that the allegedly infringing conduct carries with it a likelihood of confounding an appreciable number of reasonably prudent purchasers exercising ordinary care.” Int’l Ass’n of Machinists and Aerospace Workers, AFL-CIO v. Winship Green Nursing Ctr., 41 U.S.P.Q.2d 1251, 1255 (1st Cir. 1996). The determination as to whether confusion is likely is made on a case-by-case basis aided by the application of the factors set out in In re E.I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). See, e.g., On-Line Careline Inc. v. Am. Online Inc., 56 U.S.P.Q.2d 1471, 1474 (Fed. Cir. 2000). In any likelihood of confusion analysis, the two key considerations are the similarities between the marks and the relatedness of the goods. In re Aztec Res. Enters., Inc., 50 U.S.P.Q.2d 1209 (T.T.A.B 1999). Applicant submits that a thorough review of these considerations shows that a likelihood of confusion with the cited registration is not probable.
The goods used in connection with the cited registration differs from Applicant’s goods to such a degree that a likelihood of confusion is not probable. With regard to registration no. 3398358, the goods covered by the registration are “medical devices, namely, cannulae.” These are sufficiently different from the goods claimed in association with Applicant’s mark. Cannulae utilize a trocar during insertion, which generally occurs into a bodily cavity, duct, or vessel. See Ex. A. Applicant’s goods, on the other hand are “catheters”, which are generally inserted into a hollow organ of the body. See Ex. B. The goods offered for sale by Applicant and Registrant are to different customers through different trade channels.
Furthermore, it is also essential to consider the sophistication of the buyers. “In every case turning on likelihood of confusion, it is the duty of the examiner, the board and this court to find, upon consideration of all the evidence, whether or not confusion appears likely.” Dupont, 476 F.2d at 1362 (emphasis in original). “Sophisticated consumers may be expected to exercise greater care.” Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489, (1st Cir. 1981). “[T]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.” Astra Pharm. Prods. v. Beckman Instruments, 718 F.2d 1201, 1206, (1st Cir. 1983). Consumers purchasing Applicant’s and Registrant’s products are sophisticated because both Applicant’s products are expensive and require technical skill to operate and are only purchased after careful consideration by the consumers. Given that the consumers of both Applicant’s goods and Registrant’s goods are sophisticated, the differences in the marks and the associated goods, confusion is not likely between Registrant’s and Applicant’s marks.
Finally, it is well recognized that when a mark is commonly used on numerous types of goods by unrelated companies, it may be reasonable to infer that purchasers have been conditioned to expect different sources for specifically different goods even though such goods might be deemed sufficiently related to be attributable to a single source under an uncommonly used mark. Compare Amstar Corp. v. Domino's Pizza Inc., 615 F.2d 252, 259-60, (5th Cir. 1980) (no confusion likely between DOMINO for sugar and DOMINO for pizza services in presence of third party use), cert. denied, 449 U.S. 899, (1980); In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467 (T.T.A.B. 1988) (confusion likely between restaurant services and a mustard sold under MUCKY DUCK mark with no presence of third party use). The ability of purchasers to distinguish between goods through trademarks commonly used by different third parties reflects what happens in a real world setting. Matsushita Elec. Indus. Co., Ltd. v. Nat’l Steel Constr. Co., 442 F.2d 1383, 1385 (Fed. Cir. 1971).
In this case, there are numerous third-party registrations containing the word “ULTRAFLEX”. These registrations create a crowded marketplace of “ULTRAFLEX” formative marks, which indicates that even minor differences between the marks can be sufficient to avoid confusion. Applicant points out the following third-party registrations containing the word “ULTRAFLEX”:
|
Mark |
Reg. No. |
Goods |
Owner |
|
ULTRA-FLEX |
3150843 |
IC010: Dental instruments, namely bendable shaft electo-surgical electrodes |
Jaco, LLC |
|
ULTRA-FLEX |
1985330 |
IC010: Anesthesia breathing circuit with the ability to compress or expand the length of the circuit, for delivery of gases to a patient |
King Systems Corporation |
|
ULTRAFLEX |
3398358 |
IC010: Medical devices, namely, cannulae |
Medtronic, Inc. |
|
ULTRAFLEX |
2970884 |
IC010: Medical instruments and apparatuses, namely, infusion sets for the subcutaneous administration of insulin |
Roche Diagnostics GmbH |
|
ULTRAFLEX |
1701606 |
IC010: Dynamic splints for anatomical joints |
Ultraflex Systems, Inc. |
In light of the differences in the goods sold in association with Applicant’s and Registrant’s marks, the sophistication of the consumers of Applicant’s and Registrant’s products and the crowded marketplace, Applicant requests that the Examining Attorney withdraw the refusal and allow Applicant’s mark ULTRAFLEX to be registered.
II. Conclusion
For all the aforementioned reasons, applicant respectfully requests the Examining Attorney to withdraw the refusal under Section 2(d) of the Trademark Act. If further clarification is needed or if a telephone conference would be useful in resolving any issues pending in this application, Applicant requests that the examiner contacts the undersigned.
