| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86085567 |
| LAW OFFICE ASSIGNED | LAW OFFICE 107 |
| MARK SECTION | |
| MARK | http://tess2.gov.uspto.report/ImageAgent/ImageAgentProxy?getImage=86085567 |
| LITERAL ELEMENT | PATHWAY |
| 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) | |
|
The Examining Attorney issued an Office Action on January 25, 2014, refusing the application on the grounds of a likelihood of confusion between its mark and the registered trademark PATHWAY ACCESS SHEATH CATHETER (Reg. No. 3399335). The Examining Attorney and Applicant attorney conducted a telephone interview on February 13, 2014 during which the response was discussed.. The Applicant responds that there is no likelihood of confusion in light of the differences between the devices themselves, the level of sophistication and education of the consumers. The Registrant’s product is a sheath catheter for insertion of catheter devices for use in urological procedures, for example, a balloon. An example of this is attached hereto as Exhibit A and is incorporated herein by reference. Urological procedures, by their very name, relate to the bladder, the urethra and the urinary tract. Urological devices are specific for that purpose. Such devices are not employed in procedures for other parts of the body, for example, for use in the nose, ear, mouth, anus or vagina. They are very specific to this one body system. Thus, the Registrant’s channel of trade is specific to the urinary tract. Within that channel of trade, the consumers are urological consumers, either practitioners or their agents, with a high degree of sophistication. Such consumers are highly educated and skilled in the urological trade and in urological devices. By contrast, Applicant’s goods are for muscle profiling. Applicant’s goods are specifically used for muscular rehabilitation of the pelvic muscles of the anus and the vagina. The device itself is depicted on page 3 of 8 of Exhibit B, which is a manual for the device, and is incorporated herein by reference. The goods are control units with probes that are inserted into the anus or vagina for muscle rehabilitation. The muscle chiefly involved with this probe is the pelvic floor muscle group, which does not include any of the muscles for the urinary tract. The probe can be used actively, by having the patient contract against the probe, or passively, by inducing an electric current at a certain frequency to stimulate muscle contraction. This product has been in use since 1990. Given its use and size, it is not intended for urology, nor is it in any way a catheter, catheter sheath or catheter component. Applicant requests permission to amend its goods description from “Medical devices, namely, a device for muscle profiling” to “Medical devices, namely, a device for muscle profiling for use in rehabilitation of the muscles of the anus and vagina.” Applicant asserts that this device cannot be used for urodynamic testing by an urologist. It is not a urological device, nor can it be inserted into the urethra by virtue of its size. It is not therefore complementary to the Registrant’s device. There is not a likelihood of confusion because the goods are dissimilar, the channels of trade are dissimilar, and the consumers are highly sophisticated when it comes to discerning vaginal and rectal devices from a urological device. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_751472313-141223271_._PrometheusExhibitA0005TM_1.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT16\IMAGEOUT16\860\855\86085567\xml4\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_751472313-141223271_._PrometheusExhibitB0005TM_1.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\855\86085567\xml4\ROA0003.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\860\855\86085567\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\855\86085567\xml4\ROA0005.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\855\86085567\xml4\ROA0006.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A shows the Registrant's device, a sheath for a urological catheter. Exhibit B is a manual for applicant's device and the device is shown on page 3 of 8. |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | Medical devices, namely a device for muscle profiling |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/30/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/30/1990 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 010 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Medical devices, namely, a device for muscle profiling for use in rehabilitation of the muscles of the anus and vagina. | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/30/1990 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/30/1990 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jeffrey S. Newman/ |
| SIGNATORY'S NAME | Jeffrey S. Newman |
| SIGNATORY'S POSITION | Attorney of Record, Pennsylvania Bar Member |
| SIGNATORY'S PHONE NUMBER | 603-336-3026 |
| DATE SIGNED | 02/13/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Feb 13 14:24:22 EST 2014 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 140213142422407337-860855 67-500aa233ef787873c7ea78 46537aed92570d7cd56f9dd83 b37474ca63d6699d2a1-N/A-N /A-20140213141223271958 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examining Attorney issued an Office Action on January 25, 2014, refusing the application on the grounds of a likelihood of confusion between its mark and the registered trademark PATHWAY ACCESS SHEATH CATHETER (Reg. No. 3399335). The Examining Attorney and Applicant attorney conducted a telephone interview on February 13, 2014 during which the response was discussed..
The Applicant responds that there is no likelihood of confusion in light of the differences between the devices themselves, the level of sophistication and education of the consumers. The Registrant’s product is a sheath catheter for insertion of catheter devices for use in urological procedures, for example, a balloon. An example of this is attached hereto as Exhibit A and is incorporated herein by reference. Urological procedures, by their very name, relate to the bladder, the urethra and the urinary tract. Urological devices are specific for that purpose. Such devices are not employed in procedures for other parts of the body, for example, for use in the nose, ear, mouth, anus or vagina. They are very specific to this one body system. Thus, the Registrant’s channel of trade is specific to the urinary tract. Within that channel of trade, the consumers are urological consumers, either practitioners or their agents, with a high degree of sophistication. Such consumers are highly educated and skilled in the urological trade and in urological devices.
By contrast, Applicant’s goods are for muscle profiling. Applicant’s goods are specifically used for muscular rehabilitation of the pelvic muscles of the anus and the vagina. The device itself is depicted on page 3 of 8 of Exhibit B, which is a manual for the device, and is incorporated herein by reference.
The goods are control units with probes that are inserted into the anus or vagina for muscle rehabilitation. The muscle chiefly involved with this probe is the pelvic floor muscle group, which does not include any of the muscles for the urinary tract. The probe can be used actively, by having the patient contract against the probe, or passively, by inducing an electric current at a certain frequency to stimulate muscle contraction. This product has been in use since 1990. Given its use and size, it is not intended for urology, nor is it in any way a catheter, catheter sheath or catheter component.
Applicant requests permission to amend its goods description from “Medical devices, namely, a device for muscle profiling” to “Medical devices, namely, a device for muscle profiling for use in rehabilitation of the muscles of the anus and vagina.”
Applicant asserts that this device cannot be used for urodynamic testing by an urologist. It is not a urological device, nor can it be inserted into the urethra by virtue of its size. It is not therefore complementary to the Registrant’s device.
There is not a likelihood of confusion because the goods are dissimilar, the channels of trade are dissimilar, and the consumers are highly sophisticated when it comes to discerning vaginal and rectal devices from a urological device.
