UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 1/27/2014

 

 

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.

 

Section 2(d) Refusal – Likelihood of Confusion – Class 9 and 10

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1609629, 2600983, 3781584, 3417701, 1979789, 2949860, 4296885 and 4426019.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

 

Similarity of the Marks

 

 

Applicant’s mark is AQUARIUS with a wave design.

 

The cited marks are as follows:

 

RN 1609629 – AQUARIUS

 

RN 2600983 – AQUARIUS WORKSTATION

 

RN 3781584 – AQUARIUS

 

RN 3417701 – AQUARIUS

 

RN 1979789 – AQUARIUS

 

RN 2949860 – AQUARIUS

 

RN 4296885 – AQUARIS

 

RN 4426019 – AQUARIUS 

 

 

Applicant’s mark is similar the marks in the cited marks in RNs 1609629, 2600983, 3781584, 3417701, 1979789, 2949860 and 4426019 because they all share the same common dominant literal element, AQUARIUS. 

 

Applicant’s mark is similar in sound and appearance to the mark in RN 4296885 AQUARIS.  Applicant has merely deleted the letter “U” from the end of the mark.  This difference is minor and does not change the overall commercial created by the marks.  Moreover, slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).

 

 

Similarity of the Goods and Trade Channels

 

 

The goods of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

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 and/or services] 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 has identified its goods broadly as the following:

 

 

Scientific apparatus and instruments, none being weighing apparatus and instruments or scales, and none being, or for use with, haemofiltration apparatus and instruments; optical apparatus and instruments, none being, or for use with, haemofiltration apparatus and instruments; scientific apparatus and instruments and optical apparatus and instruments, not including pagers, paging systems, paging instruments and apparatus, paging receivers, paging interface apparatus for use with computers, alarm devices, alarms, alarm control apparatus, alarm sensors, alarm signalling apparatus, receivers and transmitters, alarms systems, encoders, location systems, lone worker alarms, nurse call systems or parts and fittings for all these aforesaid goods in Class 9;

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; disposable medical and surgical apparatus and instruments; catheters; medical and surgical drains and drainage systems; drainage reservoirs for medical and surgical use; vascular ties and clamp covers; tubing for medical and surgical use; stethoscopes; probes for medical and surgical use; clamps for medical and surgical use; parts and fittings for all the aforesaid; none of the aforementioned goods being, or for use with, haemofiltration apparatus and instruments in Class 10.

As identified, applicant’s goods could encompass control units and logic systems for de-ionized fluid heating, hardware and software for viewing images, medical fluid balance monitor, pumps and module for various treatments in the field of renal replacement therapies and fluid balance monitor, pumps and module comprising an extracorporeal blood circuit and a substitute and filtrate circuit, medical lasers, medical diagnostic equipment, namely a multichannel computerized urodynamic monitor and processor apparatus, coatings, in the nature of hydrophilic coatings, for medical devices, medical hearing aids and cold temperature therapy systems, namely, pads shaped to conform to body portions and receive a flow of water, a reservoir for storing cold water, and a pump for circulating the water through the pad. 

Therefore, it is presumed applicant’s and registrant’s goods are marketed in the same trade channels to the same classes of consumers.  The examining attorney will reconsider the refusal upon acceptable amendment to the identifications.

 

Conclusion

Based on the foregoing, there is a likelihood of confusion and registration is refused under Trademark Act Section 2(d).

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

 

Section 2(d) – Prior Pending Applications

 

 

The filing dates of pending U.S. Application Serial Nos. 79133763 and 86010541 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

 

 

 

Identification of Goods

 

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a).  If applicant uses indefinite words such as “accessories,” “apparatus,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems,” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1401.05(d), 1402.03(a).

 

In addition, applicant must clarify in the identification whether applicant is providing the following goods in Class 9:

paging instruments and apparatus, paging receivers, paging interface apparatus for use with computers, alarm devices, alarms, alarm control apparatus, alarm sensors, alarm signalling apparatus, receivers and transmitters, alarms systems, encoders, location systems, lone worker alarms, nurse call systems or parts and fittings for all these aforesaid goods

 

 

Applicant may adopt the following identification, if accurate: 

 

 

Class 9:            Scientific apparatus and instruments, namely, [specify items by their common commercial name] none being weighing apparatus and instruments or scales, and none being, or for use with, haemofiltration apparatus and instruments; optical apparatus and instruments, namely, [specify items by their common commercial name], none being, or for use with, haemofiltration apparatus and instruments; scientific apparatus and instruments, namely, [specify items by their common commercial name] and optical apparatus and instruments, namely, [specify items by their common commercial name], not including pagers, paging systems, paging instruments and apparatus, paging receivers, paging interface apparatus for use with computers, alarm devices, alarms, alarm control apparatus, alarm sensors, alarm signalling apparatus, receivers and transmitters, alarms systems, encoders, location systems, lone worker alarms, nurse call systems [applicant must amend the wording to clarify whether applicant is providing these goods]; parts and fittings for all these aforesaid goods

 

Class 10:          Surgical, medical, dental and veterinary apparatus and instruments, namely, [specify items by their common commercial name], artificial limbs, eyes and teeth; orthopaedic articles, namely, [specify items by their common commercial name]; suture materials; disposable medical and surgical apparatus and instruments, namely, [specify items by their common commercial name] ; catheters; medical and surgical drains and drainage systems comprising [specify items]; drainage reservoirs for medical and surgical use; vascular ties and clamp covers; tubing for medical and surgical use; stethoscopes; probes for medical and surgical use; clamps for medical and surgical use; parts and fittings for all the aforesaid; none of the aforementioned goods being, or for use with, haemofiltration apparatus and instruments

 

 

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

Multiple – Class Application Requirements

 

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class.

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Description of Mark – Clarification Required

 

The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark.  Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements.  See 37 C.F.R. §2.37; TMEP §§808 et seq. 

 

Therefore, applicant must provide a more complete description of the applied-for mark.  The following is suggested:

 

The mark consists of the wording AQUARIUS in stylized form with a wave design underneath connected to the “A” in AQUARIUS.

 

 

 

/Michele-Lynn Swain/

Michele-Lynn Swain

Examining Attorney

Law Office 116

571-272-9232

michele.swain@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 1/27/2014 FOR U.S. APPLICATION SERIAL NO. 86085747

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 1/27/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.