Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86215894 LIGHTPATH(Standard Characters, see http://uspto.report/TM/86215894/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

RESPONSE TO OFFICE ACTION Applicant has amended the filing basis to Intent-to-Use, and submits a supporting Declaration for this. The Examining Attorney has refused registration of the applied-for mark is refused because of an asserted likelihood of confusion with the marks in U.S. Registration Nos. 2639210 and 2106549. Trademark Act Section 2(d), 15 U.S.C. Section1052(d); see TMEP Sections1207.01 et seq. The mark in Registration 2,639,210 is LIGHTPATH TECHNOLOGIES, and design, covering the following goods: Optical components for imaging and non-imaging application, namely, lenses, lens blanks, lens assemblies, lenslet arrays, optical fibers, optical isolators, micro-lens arrays, collimators, collimator arrays, component modules, molded aspheres, and collimator assemblies The mark in Registration 2,106,549 is LIGHTPATH covering the following goods: Optical components for imaging and non-imaging application, namely, lenses, lens blanks, lens assemblies, catadioptric elements, optical concentrators, prisms, lenslet arrays, optical fibers, waveguides, optical multiplexers, and optical demultiplexers The cited registrations are owned by LightPath Technologies, Inc. The Examining Attorney contends that since each mark features LIGHTPATH, and the registrant's website shows that their products are used in the "medical industries" then there is a likelihood that consumers would confuse the respective marks as they are used on assertedly related goods. Applicant's mark is LIGHTPATH for "Medical imaging apparatus incorporating medical imaging software." As the Examining Attorney is aware, a meritorious refusal based on a likelihood of confusion requires both a close similarity between the marks and a showing, supported by evidence, that the respective goods are sufficiently related such that they would be encountered by the same class of purchaser in a common commercial context where confusion could likely arise. These requirements have not been met here. For one, the mere fact that the marks are similar does not establish that they are likely to be confused unless they are shown to be used on sufficiently related goods. And the goods at issue under the Application and cited registrations are not sufficiently related to support the refusal. They will not be encountered by the same class of consumers nor will they appear in any common commercial context that would likely give rise to source confusion. These goods are highly specialized, have very different uses, are sold to very different markets, and are purchased by different sets of sophisticated purchasers. In addition, these respective goods are not competitive at all. Indeed, the most that may be said about their relatedness is that goods of the type listed in the cited registrations could be used in the manufacture of Applicant's imaging apparatus. But even this is pure speculation as the registrant?s website lists the following medical applications for their goods: "We work with many companies in biotechnology developing new optics and optical systems for flow cytometers, DNA sequencers, medical lasers and vein illumination systems. For surgical laser systems, LightPath's line of GRADIUM lenses provides the required small spot size and high power for medical laser systems." No mention is made of medical imaging apparatus at all, and there is no indication that the registrant's named goods have anything to do with Applicant's named products, let alone that anyone would confuse the brand name of one of maybe hundreds of component parts used in a sophisticated imaging system with the brand name of the imaging system itself, or its driving software. A finding of likely confusion cannot be based on conjecture. Even identical marks used on goods which may be otherwise considered to be related do not create a likelihood of confusion if the particular commercial context and setting where each mark is used differs enough. See e.g., In re Sears Roebuck and Co., 2 U.S.P.Q.2d 1312 (T.T.A.B. 1987) (CROSS-OVER for bras held not likely to be confused with CROSSOVER for ladies? sportswear); In re British Bulldog, Ltd., 224 U.S.P.Q. 854 (T.T.A.B. 1984) (PLAYERS for men's underwear held not likely to be confused with PLAYERS for shoes); In re Sydel Lingerie Co., Inc., 197 U.S.P.Q. 629 (T.T.A.B. 1977) (BOTTOMS UP for ladies' and children's underwear not likely to be confused with BOTTOMS UP for men's clothing). These cases emphasize that likelihood of confusion is not a theoretical determination, but rather involves practical consideration of the marketplace within which consumers encounter marks. Hiram Walker & Sons, Inc., v. Castlewood International Corp., 196 U.S.P.Q. 636 (T.T.A.B. 1977). Here, at most, there is no connection between the respective goods save for the mere chance, postulated without any supporting evidence, that registrant's goods somehow may mistakenly be recognized as a component part of a medical imaging system like Applicant's. This is a tenuous connection at best, inconsistent with a showing that any confusion would be likely . The Examining Attorney takes the position that the refusal is supported because Applicant's and registrant's goods are each used ?in the medical industries.? However, this is an improper basis for concluding that the goods are sufficiently related to support the rejection. Lumping divergent and disparate goods into the same broad categories does not substitute for actual evidence of relatedness. In Interstate Brands Corp. v. Celestial Seasonings, Inc., 198 U.S.P.Q. 151 (C.C.P.A. 1978), the C.C.P.A. held that RED ZINGER for herbal tea was not confusingly similar to ZINGERS for snack cakes, noting that an analysis of the actual relationship of the goods based on their individual characteristics is always required. It added that it is not proper to corral different goods within a very broad market category, such as "medical industries" and then use this to hold that these goods are automatically "related." Indeed, the Board has specifically rejected such a "per se" approach to finding relatedness. Electronic Data Systems Corp. v. EDSA Micro Corp., 23 U.S.P.Q. 2d 1460 (T.T.A.B. 1992). It then follows that it is not proper to assume that the very different goods presented here are related merely because the Examining Attorney speculates that they "are of a kind that may emanate from a single source." A showing of relatedness requires supporting evidence. Here, no third party registrations are included which cover the same goods, no website evidence showing sales of the same goods by the same entities is presented, there is not even any indication whatsoever whether Applicant's goods would even actually incorporate any of registrant's goods, let alone any indication of how any purchasers would encounter (or even know) the brand names of any of internal components of medical imaging systems. The inadequacy of this "per se" approach to relatedness stands in stark contrast to the actual registrant and its business, which is to supply optical products to manufacturers in a broad swath of industries, and not to supply medical devices to end user hospitals or research facilities that buy Applicant's goods. While perhaps certain manufacturers of medical devices could sporadically encounter the marks of both component parts and of finished devices, the Board has held that this does not establish relatedness. Manufacturers are knowledgeable about the products in their field and the sources thereof. Thus, the likelihood that they would be confused by the use of similar marks here on the differing goods "is much less than would be the case if both marks were encountered by the ultimate purchasers" and "the record contains no convincing evidence that ultimate purchasers would be likely to encounter both marks." In re Albert Trostel & Sons Co. 29 USPQ2d 1783, 1785-86 (TTAB 1993) The Examining Attorney's reliance on what is no more than a broad and vaguely articulable connection between Applicant's and registrant's businesses cannot support a finding that the marks at issue would likely cause confusion. To reiterate, likelihood of confusion is not a theoretical determination, but rather involves practical consideration of the marketplace. Hiram Walker & Sons, Inc., v. Castlewood International Corp., 196 U.S.P.Q. 636 (T.T.A.B. 1977). In sum, the refusal to register should be reconsidered and withdrawn. CONCLUSION Based on the foregoing, Applicant submits that all questions in the Office Action are now answered and respectfully requests that this application be passed for publication.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical imaging apparatus incorporating medical imaging software
Original Filing Basis:
Filing Basis: Section 1(a), Use in Commerce: The applicant is using the mark in commerce, or the applicant's related company or licensee is using the mark in commerce, on or in connection with the identified goods and/or services. 15 U.S.C. Section 1051(a), as amended. The mark was first used at least as early as 03/10/2014 and first used in commerce at least as early as 03/10/2014 , and is now in use in such commerce.

Proposed: Class 010 for Medical imaging apparatus incorporating medical imaging software
Deleted Filing Basis: 1(a)
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

ATTORNEY ADDRESS
Applicant proposes to amend the following:
Proposed:
Charles T.J. Weigell of Fross Zelnick Lehrman & Zissu, P.C., having an address of
866 United Nations Plaza New York, New York 10017
United States
The attorney docket/reference number is DAVT 1405023 .


CORRESPONDENCE ADDRESS CHANGE
Applicant proposes to amend the following:
Current:
LIGHTPOINT MEDICAL LTD
LIGHTPOINT MEDICAL LTD
CARDINAL POINT, PARK ROAD
CARDINAL POINT
RICKMANSWORTH
GB
WD31RE

Proposed:
Charles T.J. Weigell of Fross Zelnick Lehrman & Zissu, P.C., having an address of
866 United Nations Plaza New York, New York 10017
United States
The docket/reference number is DAVT 1405023 .



SIGNATURE(S)
Declaration Signature
Original PDF file:
HS_631381729-170410558_._st_for_Change_of_Address_for_Correspondence__F1598616x96B9E_.pdf
Converted PDF file(s) (2 pages)
Signature File1
Signature File2
Signatory's Name: Charles T.J. Weigell
Signatory's Position: Attorney for Applicant

Signatory's Name: David Tuch
Signatory's Position: CEO

Response Signature
Signature: /ctw/     Date: 12/18/2014
Signatory's Name: Charles T.J. Weigell
Signatory's Position: Attorney for Applicant, New York State Bar Member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Charles T.J. Weigell
   Fross Zelnick Lehrman & Zissu, P.C.
   866 United Nations Plaza
   New York, New York 10017
        
Serial Number: 86215894
Internet Transmission Date: Thu Dec 18 17:05:21 EST 2014
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.X-20141218170521245
480-86215894-5008f1ddf873a94718f9fec6147
0d263442e89f982cfff6cc68daffe95fb7d2f40-
N/A-N/A-20141218170410558336