To: | Milford Holding Company (msmolow@smolowlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86212121 - OPTIMUM - 42.072 |
Sent: | 3/27/2014 9:03:58 AM |
Sent As: | ECOM105@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86212121
MARK: OPTIMUM
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CORRESPONDENT ADDRESS: MITCHELL A. SMOLOW DR. MITCHELL A. SMOLOW, LL.M. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Milford Holding Company
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/27/2014
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:
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Applicant’s mark is OPTIMUM for “Dental instruments, namely, root canal therapy instruments used to shave the inside of a root canal; dental diamonds; dental burrs.”
The cited mark is:
OPTIMOM for “Orthopaedic devices and implants, namely, heads, cups, bearings, screws, cup flanges, stems; orthopedic joint implants; apparatus, appliances and instruments for use in bio-engineering or musculo-skeletal surgical and medical techniques, namely, heads, cups, bearings, screws, cup flanges, stems; hip or joint prosthesis; total joint prosthesis for the treatment of degenerative arthritis; metal-on-metal products for total joint replacements, namely, heads, cups, bearings, screws, cup flanges, stems; metal-on-metal hip prosthesis; acetabular cups; metal-on-metal acetabular cups; surgical and medical apparatus and instruments for the fixation and stapling of prosthesis; power-tool surgical apparatus for use in orthopaedic surgery; cases for surgical and medical apparatus and instruments; disposable apparatus and equipment for use in orthopaedics and related surgery; surgical and medical apparatus and instruments for use in trauma repair surgery; parts for the aforesaid goods; surgical and medical apparatus and instruments for the installation of hip prostethis; artificial limbs, eyes and teeth; suture materials.” (Reg. No. 3325672).
The respective marks are highly similar. In fact, the marks only differ by one letter. Further, both marks are pronounced identically. Additionally, both marks begin with the prefix “OPTI-”.
The goods of the respective parties are closely related. Registrant’s ID includes “artificial . . . teeth.” Please note the following commercial entities that sell both (1) artificial teeth and (2) root canal instruments or dental burrs:
See attached internet evidence.
For the reasons stated above, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
IDENTIFICATION OF GOODS:
Class 10 -
In Class 10, applicant’s identification is: “dental instruments, namely, root canal therapy instruments used to shave the inside of a root canal; dental diamonds; dental burrs.”
The following wording is unacceptable:
“Dental diamonds” is indefinite. More specificity is required as to the exact nature of this dental diamond product. Put in another way, the functionality of the product must be stated. See below for suggestions.
Taking the above together, applicant may adopt the following:
Class 10: dental instruments, namely, root canal therapy instruments used to shave the inside of a root canal; dental implants made of diamonds; dental burrs
TMEP §1402.01.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Simon Teng
Trademark Examining Attorney
Law Office 105
(571) 272-4930
simon.teng@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.