| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 85950379 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/85950379/mark.png |
| LITERAL ELEMENT | CURACEL |
| 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) | |
|
This is in response to an Office Action mailed on September 17, 2013 regarding Application Serial No. 85950379 for the mark “CURACEL” in International Class 5 wherein the Examining Attorney has refused registration of the Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), on the stated ground that Applicant’s mark when used on or in connection with the goods applied for in Class 5 may so resemble the mark in U.S. Registration No. 3979951for the mark “CUREXCELL”, registered in Class 5 for “Therapeutic preparations, namely, cellular compositions for wound treatment”as to be likely to cause confusion, to cause mistake, or to deceive. Applicant originally applied to register its mark “CURACEL for the following goods: Class 5: “Pharmaceutical and hygienic products; dressings; absorbable, implantable, oxidized cellulose with haemostatic effect in gauze pad form and in powder form” As a part of this response to office action, Applicant is requesting the Examining Attorney to amend the identification of goods in to read in its entirety as follows (amendments underlined): Class 5: “Pharmaceutical and hygienic products, namely, haemostatic preparations; haemostatic dressings for wounds, burns, surgery; absorbable, implantable, oxidized cellulose with haemostatic effect in gauze pad form and in powder form, all excluding therapeutic preparations, namely, cellular compositions for wound treatment” Applicant respectfully submits that, especially in view of its amended identification of goods, its mark is not likely to be confused with the mark cited for the following reasons: 1. The likelihood of confusion between two marks must be determined by a two-step analysis. First, the marks must be compared for similarities in appearance, sound, connotation and commercial impression. In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Second, the goods and/or services of the respective marks must be compared to determine if they are related or if the activities surrounding their marketing are such that confusion of origin is likely. In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983); In re International Telephone and Telegraph Corp., 197 U.S.P.Q. 910 (T.T.A.B. 1978); Guardian Products Co., v. Scott Paper Co., 200 U.S.P.Q. 738 (T.T.A.B. 1978). 2. When comparing two marks, they must be considered in their entireties for purposes of confusion analysis under Section 2(d). In assessing likelihood of confusion, the commercial impressions of the two marks must be considered in their entireties, similarities should not be overemphasized, and significant differences should not be neglected. Worthington Foods. Inc. v. Kellogg Co., 732 F. Supp. 1417, 1439 (S.D. Ohio 1990) (the analysis “must not focus on certain prominent features that both parties’ marks have in common, to the exclusion of others which cause the parties’ marks as a whole to create in the minds of consumers different impressions”); Colgate-Palmolive Co. v. Carter-Wallace. Inc., 167 U.S.P.Q. 529,530 (C.C.P.A. 1970); Kayser-Roth Corp. v. Morris & Co., 164 U.S.P.Q. 153 (T.T.A.B. 1969) (no likelihood of confusion exists when marks are considered in their entireties despite the fact that Applicant’s mark includes the entire mark of the opposer). No element of a mark is ignored simply because it is less dominant or even if it would not have trademark significance if used alone. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F. 2d 727 (Fed. Cir. 1988). Thus, the sight, sound, and meaning of the marks in their entireties must be considered when evaluating the marks’ overall commercial impressions.
The Examining Attorney states that the Applicant’s mark and the cited mark are likely to cause confusion because, inter alia: i. CURACEL, is very similar to the registered mark, CUREXCELL; ii. both marks begin with the letters “CUR” and end with the letters “CELL”. The marks have almost the identical appearance; iii. slight differences in the sound of similar marks will not avoid a likelihood of confusion; the goods are closely related because the Applicant’s goods is so broad that it would include the registrant’s goods. The Applicant respectfully disagrees with Examining Attorney and submits that the cited mark and the Applicant’s mark are not confusing similar due to the following reasons: a. Although the marks both begin with the letters “CUR”, at one glance, the cited mark “CUREXCELL” and the Applicant’s mark “CURACEL” are clearly distinguishable and distinctively different. There are other significant elements in these marks that render them visually different from each other, even if there may be some phonetic similarity. The Examining Attorney is incorrect in stat that both marks end with the letters “CELL”. The Applicant’s mark in fact ends with the letters “CEL”. b. First, visually, while both marks comprise the initial three letters “CUR”, the marks also comprise other letters, i.e. the letters “ACEL” in the Applicant’s mark and the letters “EXCELL” in the cited mark which render both marks visually very different. These four and five additional letters in each mark play a key role in visually distinguishing the Applicant’s mark from the cited mark and the Examining Attorney should not ignore these significant differences nor assume that these words would not make as much of an impact on consumers’ minds. c. Second, phonetically, the Applicant submits that the cited mark would be pronounced by the ordinary U.S. consumer as “Cure”, “x” plus “cell”, consisting of the word “cure” (as in “cure a disease”) and “xcell” (an abbreviation of the word excel), whereas Applicant’s mark would naturally be pronounced as “cur”, “a” plus “cel”. Hence, the Applicant submits that both marks would be pronounced with completely different vowels and completely different medial consonants. d. Therefore, these overall differences in sound and sight sufficiently distinguish Applicant’s mark from the cited mark, giving the marks distinctively different commercial impressions, and obviating any appreciable likelihood of confusion. e. The goods under the cited registration and the goods under Applicant’s application, as amended, expressly exclude the cited goods, thereby obviating any likelihood of confusion. Given the express exclusion of the goods of the cited registrant, the Applicant’s mark and the cited mark are sufficiently dissimilar to avoid any likelihood of confusion. f. In any event, the average consumer, in this case being highly qualified medical staff and being reasonable, well-informed and circumspect, is not likely to be confused into thinking that the Applicant’s goods and the cited registrant’s goods originate from the same or related sources. Based on the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), and allow the Application to proceed to publication. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 005 |
| DESCRIPTION | |
| Pharmaceutical and hygienic products; dressings; absorbable, implantable, oxidized cellulose with haemostatic effect in gauze pad form and in powder form | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 005 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Pharmaceutical and hygienic products, namely, haemostatic preparations; haemostatic dressings for wounds, burns, surgery; absorbable, implantable, oxidized cellulose with haemostatic effect in gauze pad form and in powder form, all excluding therapeutic preparations, namely, cellular compositions for wound treatment | |
| FILING BASIS | Section 1(b) |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | HERBERT H. FINN GREENBERG TRAURIG, LLP 77 W WACKER DR STE 3100 CHICAGO Illinois (IL) US 60601-4904 |
| NEW CORRESPONDENCE SECTION | |
| NAME | HERBERT H. FINN |
| FIRM NAME | Seiter Legal Studio |
| STREET | 2500 Broadway, Bldg F, Suite F-125 |
| CITY | Santa Monica |
| STATE | California |
| ZIP/POSTAL CODE | 90404 |
| COUNTRY | United States |
| williamjseiter@seiterlegalstudio.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /wjs/ |
| SIGNATORY'S NAME | William J. Seiter |
| SIGNATORY'S POSITION | Attorney |
| DATE SIGNED | 03/17/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 17 23:00:01 EDT 2014 |
| TEAS STAMP | USPTO/ROA-X.XX.XX.XXX-201 40317230001764405-8595037 9-5001374332abb30c8daca8f a042c97778e5751356c51db47 f4adf8639f983d-N/A-N/A-20 140317224710209936 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
This is in response to an Office Action mailed on September 17, 2013 regarding Application Serial No. 85950379 for the mark “CURACEL” in International Class 5 wherein the Examining Attorney has refused registration of the Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), on the stated ground that Applicant’s mark when used on or in connection with the goods applied for in Class 5 may so resemble the mark in U.S. Registration No. 3979951for the mark “CUREXCELL”, registered in Class 5 for “Therapeutic preparations, namely, cellular compositions for wound treatment”as to be likely to cause confusion, to cause mistake, or to deceive.
Applicant originally applied to register its mark “CURACEL for the following goods:
Class 5: “Pharmaceutical and hygienic products; dressings; absorbable, implantable, oxidized cellulose with haemostatic effect in gauze pad form and in powder form”
As a part of this response to office action, Applicant is requesting the Examining Attorney to amend the identification of goods in to read in its entirety as follows (amendments underlined):
Class 5: “Pharmaceutical and hygienic products, namely, haemostatic preparations; haemostatic dressings for wounds, burns, surgery; absorbable, implantable, oxidized cellulose with haemostatic effect in gauze pad form and in powder form, all excluding therapeutic preparations, namely, cellular compositions for wound treatment”
Applicant respectfully submits that, especially in view of its amended identification of goods, its mark is not likely to be confused with the mark cited for the following reasons:
1. The likelihood of confusion between two marks must be determined by a two-step analysis. First, the marks must be compared for similarities in appearance, sound, connotation and commercial impression. In re E.I. Du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973). Second, the goods and/or services of the respective marks must be compared to determine if they are related or if the activities surrounding their marketing are such that confusion of origin is likely. In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983); In re International Telephone and Telegraph Corp., 197 U.S.P.Q. 910 (T.T.A.B. 1978); Guardian Products Co., v. Scott Paper Co., 200 U.S.P.Q. 738 (T.T.A.B. 1978).
2. When comparing two marks, they must be considered in their entireties for purposes of confusion analysis under Section 2(d). In assessing likelihood of confusion, the commercial impressions of the two marks must be considered in their entireties, similarities should not be overemphasized, and significant differences should not be neglected. Worthington Foods. Inc. v. Kellogg Co., 732 F. Supp. 1417, 1439 (S.D. Ohio 1990) (the analysis “must not focus on certain prominent features that both parties’ marks have in common, to the exclusion of others which cause the parties’ marks as a whole to create in the minds of consumers different impressions”); Colgate-Palmolive Co. v. Carter-Wallace. Inc., 167 U.S.P.Q. 529,530 (C.C.P.A. 1970); Kayser-Roth Corp. v. Morris & Co., 164 U.S.P.Q. 153 (T.T.A.B. 1969) (no likelihood of confusion exists when marks are considered in their entireties despite the fact that Applicant’s mark includes the entire mark of the opposer). No element of a mark is ignored simply because it is less dominant or even if it would not have trademark significance if used alone. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F. 2d 727 (Fed. Cir. 1988). Thus, the sight, sound, and meaning of the marks in their entireties must be considered when evaluating the marks’ overall commercial impressions.
The Examining Attorney states that the Applicant’s mark and the cited mark are likely to cause confusion because, inter alia:
i. CURACEL, is very similar to the registered mark, CUREXCELL;
ii. both marks begin with the letters “CUR” and end with the letters “CELL”. The marks have almost the identical appearance;
iii. slight differences in the sound of similar marks will not avoid a likelihood of confusion;
the goods are closely related because the Applicant’s goods is so broad that it would include the registrant’s goods.
The Applicant respectfully disagrees with Examining Attorney and submits that the cited mark and the Applicant’s mark are not confusing similar due to the following reasons:
a. Although the marks both begin with the letters “CUR”, at one glance, the cited mark “CUREXCELL” and the Applicant’s mark “CURACEL” are clearly distinguishable and distinctively different. There are other significant elements in these marks that render them visually different from each other, even if there may be some phonetic similarity. The Examining Attorney is incorrect in stat that both marks end with the letters “CELL”. The Applicant’s mark in fact ends with the letters “CEL”.
b. First, visually, while both marks comprise the initial three letters “CUR”, the marks also comprise other letters, i.e. the letters “ACEL” in the Applicant’s mark and the letters “EXCELL” in the cited mark which render both marks visually very different. These four and five additional letters in each mark play a key role in visually distinguishing the Applicant’s mark from the cited mark and the Examining Attorney should not ignore these significant differences nor assume that these words would not make as much of an impact on consumers’ minds.
c. Second, phonetically, the Applicant submits that the cited mark would be pronounced by the ordinary U.S. consumer as “Cure”, “x” plus “cell”, consisting of the word “cure” (as in “cure a disease”) and “xcell” (an abbreviation of the word excel), whereas Applicant’s mark would naturally be pronounced as “cur”, “a” plus “cel”. Hence, the Applicant submits that both marks would be pronounced with completely different vowels and completely different medial consonants.
d. Therefore, these overall differences in sound and sight sufficiently distinguish Applicant’s mark from the cited mark, giving the marks distinctively different commercial impressions, and obviating any appreciable likelihood of confusion.
e. The goods under the cited registration and the goods under Applicant’s application, as amended, expressly exclude the cited goods, thereby obviating any likelihood of confusion. Given the express exclusion of the goods of the cited registrant, the Applicant’s mark and the cited mark are sufficiently dissimilar to avoid any likelihood of confusion.
f. In any event, the average consumer, in this case being highly qualified medical staff and being reasonable, well-informed and circumspect, is not likely to be confused into thinking that the Applicant’s goods and the cited registrant’s goods originate from the same or related sources.
Based on the foregoing, Applicant respectfully requests that the Examining Attorney withdraw the refusal under Section 2(d) of the Trademark Act, 15 U.S.C. Section 1052(d), and allow the Application to proceed to publication.