To: | C. R. BARD, INC. (tmdocket@oblon.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85624080 - LUTONIX - 398672US35 |
Sent: | 8/15/2012 10:04:13 AM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85624080
MARK: LUTONIX
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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: C. R. BARD, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 8/15/2012
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
I. 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. 3928832 (LUTONIX). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Comparison of the Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, 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).
In the present case, applicant’s mark is LUTONIX and registrant’s mark is LUTONIX. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and/or services.
Therefore, the marks are confusingly similar.
Comparison of goods
In this case, the parties’ goods are highly related because they are catheters in Class 10.
Viewing all of the factors together, based on the similarity of the registered mark(s) to the proposed mark and the similarity of the goods and/or services, confusion as to source is likely. Purchasers familiar with the mark(s) of the cited registration(s), upon seeing applicant’s mark, would be likely to conclude that applicant’s goods and/or services emanated from the same source, or that applicant’s goods and/or services were associated with and/or sponsored by the registrant(s). Accordingly, registration is refused due to the likelihood of confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration
II. INFORMALITIES
Applicant must respond to the requirement(s) set forth below.
Identification of goods requires clarification – Class 1
The identification of goods is indefinite and must be clarified because the applicant must provide more information about the coatings. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:
Class 1: “Polymeric coatings for medical devices”
Identification of goods requires clarification – Class 10
Some of the wording in the identification of goods is indefinite and must be clarified because the applicant must be more specific about the exact nature of the goods relating to the coatings. See TMEP §1402.01. Applicant may adopt the following identification, if accurate:
Class 10: “Medical devices and apparatus, namely, catheters and parts and fittings therefor; Coatings for medical devices, sold as an integral part of drug delivery systems, for delivery of a wide range of pharmaceuticals”.
/Carolyn P. Cataldo/
Trademark Examining Attorney
Law Office 103
Office: 571-272-9207
carolyn.pendleton@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 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 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.