Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87525645 PINPOINT(Standard Characters, see http://uspto.report/TM/87525645/mark.png) has been amended as follows:

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

Applicant has applied for registration of PINPOINT for “Computer software for clinical diagnosis of epilepsy based on electroencephalography (EEG) and magnetocephalography (MEG) data” in Class 9. Epilepsy is a brain function disorder that takes the form of recurring convulsive or non-convulsive seizures. Epilepsy refers to a seizures linked to diverse neurological disorders. These disorders may arise from structural abnormalities in the developing brain, infections such as meningitis or encephalitis, lack of oxygen to the brain during birth or after a stroke, brain injury which results in scar tissue, tumor, and from degenerative conditions such as Alzheimer's disease.  The seizures can be subtle (momentary lapses of consciousness), or conspicuous (sudden and extended loss of body control). Seizure frequency and length is unpredictable. An electroencephalogram (EEG) is a test used to evaluate the electrical activity in the brain. Brain cells communicate with each other through electrical impulses. An EEG can be used to help detect potential problems associated with this activity. An EEG tracks and records brain wave patterns. Small flat metal discs called electrodes are attached to the scalp with wires. The electrodes analyze the electrical impulses in the brain and send signals to a computer that records the results. The electrical impulses in an EEG recording reveal abnormal patterns and irregularities that indicate epileptic seizures.

Magnetoencephalography (MEG) is a technique for mapping brain activity by recording magnetic fields produced by electrical currents occurring naturally in the brain, using very sensitive magnetometers. MEG can accurately detect the specific location of abnormal or damaged brain tissue. Applicant’s goods are computer software for clinical diagnosis of epilepsy based on electroencephalography (EEG) and magnetocephalography (MEG) data. The software can identify and specify the location of abnormal or damaged brain tissue that triggers epileptic seizures. Treatments can be targeted to the abnormal or damaged brain tissue. An aggressive intervention, e.g. epilepsy surgery, may be undertaken to remove abnormal or damaged brain tissue while sparing healthy brain areas. Knowing the exact position of both damaged and properly-functioning and essential brain regions (such as the primary motor cortex and primary sensory cortex, visual cortex, and areas involved in speech production and comprehension) is critical to avoid inadvertent damage to critical brain areas during brain surgery.

The Examining Attorney has refused registration of Applicant's mark under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles a prior registered mark as to be likely to cause confusion. The registered mark cited by the Examining Attorney is as follows:  PINPOINT, U.S. Registration No. 4691612 owned by Novadaq Technologies, Inc. for “computer hardware and software for medical imaging apparatus” in International Class 009 (also registered for “medical imaging apparatus comprised primarily of medical imaging hardware and software and parts and fittings therefor” in Class 10).

In addition, two pending applications, also owned by Novadaq Technologies, Inc., are noted as a potential basis for future rejection under Section 2(d) of the Lanham Act.  Specifically, the following applications are noted: PINPOINT S1, Serial No. 87129357 for “computer hardware and software for medical imaging apparatus” on Class 9, and “medical imaging apparatus comprised primarily of medical imaging hardware and software and parts and fittings therefor” in Class 10; and PINPOINT S3, Serial No. 87129367 for “computer hardware and software for medical imaging apparatus” on Class 9, and “medical imaging apparatus comprised primarily of medical imaging hardware and software and parts and fittings therefor”

A determination of likelihood of confusion under Section 2(d) is based upon an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In determining a likelihood of confusion, the Examining Attorney must consider the following factors, when relevant: similarity of the marks; similarity of the goods/services; similarity of the channels of trade; fame of the registered mark; conditions of purchase; third party usage of similar marks for similar goods; instances of actual confusion; concurrent use of marks without actual confusion; range of goods on which registrant uses mark; market interface between applicant and registrant; right to exclude other from use of the mark; extent of potential confusion; and, any other established probative fact.

PINPOINT is a Weakly Suggestive Mark

The term “pinpoint” has a dictionary definition which is “to locate or describe exactly or precisely.”  (Exhibit 1, Dictionary.com definition of “pinpoint.”) “Pinpoint” is a descriptive or weakly suggestive mark for goods that have the purpose of precisely locating a specified target. In the context of medical products, “pinpoint” is a descriptive or weakly suggestive mark for goods that have the purpose of precisely locating abnormal or damaged tissues in the body.

Registrant’s mark PINPOINT is used in connection with a laparascopic camera and imaging system that provides both white-light video and fluorescence video.  (Exhibit 2, PINPOINT advertising materials from Registrant’s website.)  As stated therein, “PINPOINT is the only laparoscopic imaging system offering simultaneous, real-time, true HD white light and on-demand HD fluorescence imaging through a single laparoscope. This enables surgeons to visualize tissue perfusion and anatomical structures during multiple minimally invasive procedures. The fluorescent imaging agent binds to protein in blood and is metabolized and excreted by the liver thereby providing laparoscopic visualization of the hepatic artery and bile ducts. In colorectal, esophageal and bariatric surgeries, SPY Fluorescence enables a precise visual assessment of blood flow in vessels, as well as the quality of tissue perfusion. In laparoscopic cholecystectomy, bile duct misidentification and hepatic artery injury with white light endoscopy alone is most commonly associated with early surgeon experience, aberrant patient anatomy and obesity. Intraoperative fluorescence imaging may be used to visualize vessels and structures, which may lessen the risk of complications during minimally invasive surgery.”

Clearly the mark as applied to Registrant’s goods is an application of the dictionary meaning of “pinpoint” as it identifies its product as capable of precisely locating and describing a specified target for laparoscopic surgery. It is this meaning that leads a medical center such as Fort Sanders Regional Medical Center, Knoxville, TN to advertise that “With image-guided information, a surgeon can create a precise, detailed map of the surgical area and pinpoint the exact position needed for surgical instruments.” (Exhibit 3.)

“Pinpoint” as applied to Applicant’s goods has the same meaning.  It is a term commonly used in patient information and medical literature.  This for example, the Mayo Clinic’s informational webpage on epilepsy (Exhibit 4) states that “your doctor may use a combination of analysis techniques to help pinpoint where in the brain seizures start…” and that a test may include “single-photon emission computerized tomography (SPECT). This type of test is used primarily if you've had an MRI and EEG that didn't pinpoint the location in your brain where the seizures are originating.”   A ScienceDaily article (Exhibit 5) is captioned “Brain regions most likely to cause epilepsy seizures Mathematical approach could pinpoint which brain tissue should be removed during surgical treatment.”  A Nature Reviews Neurology article (Exhibit 6) is titled: “Epilepsy: High-frequency oscillations pinpoint the seizure-onset zone.”

Clearly, the term “pinpoint” is a weakly suggestive mark for products which exactly or precisely locate body tissues, particularly abnormal or diseased or damaged tissue.

The weakness of “pinpoint” is confirmed by the coexistence of numerous third party PINPOINT marks.  A Trademark search Report (Exhibit 7) reveals 7 different PINPOINT marks for medical devices, another 4 registrations for medical-related software, goods and services, and another 13 PINPOINT marks for non-medical, yet position –related goods and services.

The PINPOINT marks for medical devices include:

PINPOINT, Reg. No. 3908001 owned by PTW NY Corporation for medical radiation measuring apparatus, namely, ion chamber for dose distribution measurements in radiotherapy;

PINPOINT, Reg. Nos. 4283622 and 4276970 owned by C. R. Bard, Inc  for medical devices and apparatus in the nature of ultrasound disposables accessories for ultrasound apparatus, namely, caps with gel used as an ultrasound coupling medium; needle guides and probe sheaths; and parts and fittings thereof;

PINPOINT MD, Reg. No. 4284085 owned by DTC MD Holding, LLC  for electronic online delivery of medical test and lab results to medical professionals and medical patients and providing an online database for the physician review of patient lab results; medical consultation concerning the patient lab results;

PINPOINT, Reg. No. 3230270 owned by Microport Orthopedics Holdings Inc. for medical apparatus; namely, instrumentation for use in orthopedic surgery;

PINPOINT, Reg. No. 3372025 owned by Beekley Corporation for skin markers for radiographic and medical imaging procedures, namely, a self-adhesive substrate attachable to the skin;

PINPOINTE, Reg. No. 3803945 owned by Nuvolase, Inc. for medical devices, namely, light-based medical devices for treating infection; and

PINPOINT, Reg. No. 2134900 owned by Boston Scientific Corporation for biopsy catheters.

The PINPOINT marks for other medical-related software, goods and services include:

PINPOINT RX, Reg. No 4099910 owned by Centice Corporation for scientific apparatus, namely, spectrometers and parts and fittings therefor;

PINPOINT, Reg. No. 4243940 owned by Pinpoint Limited for alarm systems used to summon assistance in the event of attack on staff or personnel in hospitals, clinics, care homes, secure institutions, social work offices and schools, comprised of infrared portable and non-portable call transmitters and structurally-installed call receivers, intercoms, lcd panels for information display, alarm central units and call transmission and electric monitoring apparatus, namely, computer hardware and software used to transmit electronic messages and data via communications networks; attack alarm systems comprised of personal security alarms;

PINPOINT, Reg. No. 3392276 owned by AI Insight, Inc. for software-mediated risk management consultation services in the medical field, namely, claims data analysis regarding high risk individuals and forecasting health plan costs for managed care plans and other managed care systems; and PINPOINT COMPLIANCE, Reg. No. 3573058 also owned by AI Insight, Inc. for computer software for use in the medical field to provide, organize, store and analyze medical information relating to medical claims and insurance; and

PINPOINT, Reg. No. 4613380 owned by Zymo Research Corp. for chromatographic columns, for use in isolation and preparation of nucleic acids from fresh and paraffin embedded tissue for scientific research and analysis, sold individually and as a part of kits.

The PINPOINT marks for other non-medical, yet position –related goods and services are listed in Exhibit 7 and include:

PINPOINT TECHNOLOGY, SN: 86417001

PINPOINT and Design, Reg. No. 3972646

PINPOINT, Reg. No. 4012840

PINPOINT, Reg. No. 4141437

PINPOINT and Design, Reg. No. 4280270

PINPOINT SCAN, Reg. No. 4299080

PINPOINT, Reg. No. 4526398

PINPOINT, Reg. No. 4738549

PINPOINT, Reg. No. 4818671

CORENA PINPOINT, Reg. No. 4894550

PINPOINT, Reg. No. 3759105

PINPOINT, Reg. No. 3006556

PINPOINT, Reg. No. 4612626

911 PINPOINT, Reg. No. 2062078

Accordingly, the mark PINPOINT, for medical diagnostic or therapeutic products that can be used to identify abnormal, damaged, or diseased tissue should be considered a weakly suggestive mark. Weak designations are entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984). T.M.E.P. § 1207.01(b)(ix).  Third-party registrations such as submitted with this response are relevant to show that a mark or a portion of a mark is descriptive, suggestive, or so commonly used that the public will look to other elements to distinguish the source of the goods or services. See, e.g., In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150, 1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).  Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). If the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).  See T.M.E.P.§1207.01(d)(iii).

The approach to likelihood of confusion in this case should recognize that the analysis is an analysis of weakly suggestive marks. The presence of weakly suggestive terms in two trademarks is an insufficient basis on which to find a likelihood of confusion when there are differences between the marks and/or goods. For example, the decisions in Plus Products v. Star Kist Foods, Inc., 220 U.S.P.Q. 541 (T.T.A.B. 1983) (PLUS for pet vitamins and pet food supplements not confusingly similar to MEAT PLUS for pet food); Burger King Systems, Inc. v. Sandwich Chef, Inc., 203 U.S.P.Q. 733 (C.C.P.A. 1979) (SANDWICH CHEF not confusingly similar to BURGER CHEF for restaurant services); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006) (BOX SOLUTIONS and Design for servers not confusingly similar to BOX and design for computers); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER for restaurant services); and In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); show that the mere use of common words among trademarks is an insufficient basis on which to find a likelihood of confusion when the marks are weakly suggestive marks.

Relatedness of the Goods

The Office Action asserts that Applicant’s “Computer software for clinical diagnosis of epilepsy based on electroencephalography (EEG) and magnetocephalography (MEG) data” are related to the for “computer hardware and software for medical imaging apparatus” of the cited mark because the goods involve medical software.  However, a general relationship between the goods and/or services at issue is insufficient to establish a likelihood of confusion. See General Electric Company v. Graham Magnetics Incorporated, 197 USPQ 690, 694 (TTAB 1977); Harvey Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975). As the Board stated in General Electric:

It is, however, not enough to find one term that may generically describe the goods. More must be shown: that is, a commercial or technological relationship must exist between the goods such that the use of the trademark in commercial transactions on the goods is likely to produce opportunities for purchasers or users of the goods to be misled about their source or sponsorship.

General Electric, 197 USPQ at 694 (emphasis supplied); see also Harvey Hubbell, 188 USPQ at 520 ("In determining whether products are identical or similar, the inquiry should be whether they appeal to the same market, not whether they resemble each other physically or whether a word can be found to describe the goods of the parties").

In general, the manufacturers and suppliers of EEG and MEG systems operate in a distinct market from medical imaging systems such as those used in laparascopic surgery. This is because the systems are detecting very different things.  EEG and MEG systems detect electrical and magnetic signals in the brain and involve a sensor network that is applied to the head and used to detect brain signal activity. Medical imaging systems are camera systems adapted to attach to a laparoscope and produce images of body structures in white light, and/or narrow frequency bands such as infrared, or fluorescence colors.

The two types of systems used by different medical staff and in different facilities, for different purposes. MEG systems are typically operated by radiology departments, usually by technicians, and the data is interpreted by radiologists or neurologists. The EEG and MEG data is used in the diagnosis and treatment of epilepsy. Laparascopic camera systems are typically operated by surgical (operating room) departments, by operating room staff and the images are used by surgeons to guide them in the surgery.

There are numerous Board cases finding no likelihood of confusion between even identical marks for goods or services used in a common industry, where the goods and/or services at issue differ from each other and there is insufficient evidence to establish a reasonable basis for assuming that they would be encountered by the same purchasers. See, Borg-Warner Chemicals, Inc. v. Helena Chemical Co., 225 USPQ 222, 224 (TTAB 1983) (no likelihood of confusion between BLEND EX for stabilizing chemical composition for fertilizers and pesticides versus BLENDEX for synthetic resins used in the industrial arts - "while both products are chemical compositions, said products neither overlap nor move in common trade channels"); In re Fesco, 219 USPQ 437 (TTAB 1983) (no likelihood of confusion between FESCO & Design for distributorship services in the field of farm machinery and equipment versus FESCO for a variety of fertilizer processing and machinery and equipment); Chase Brass & Copper Co., Inc. v. Special Springs, Inc., 199 USPQ 243 (TTAB 1978) (no likelihood of confusion between BLUE DOT for springs for engine distributors versus BLUE DOT for brass rods, both products used in new automobile manufacture); Autac, Inc. v. Walco Sys., Inc., 195 USPQ 11 (TTAB 1977) (no likelihood of confusion between AUTAC for thermocouple automatic temperature regulators for brushless wire preheaters versus AUTAC for retractile electric cords, both products used in the wire manufacturing industry); Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169 (TTAB 1987) (no likelihood of confusion between HI-COUNTRY & Design for various fruit juices versus HI-COUNTRY (stylized) for meat snack foods in the nature of jerky and sausage).

Given the weakly suggestive nature of the marks, and the differences in the goods, and channels of trade, a conclusion of no likelihood of confusion is appropriate.

This conclusion is supported by decisions that distinguish among classes of purchasers and channels of trade such as: Edwards Lifesciences Corporation v. VigiLanz Corporation, where the Trademark Board held that applicant’s VIGILANZ computer monitoring system used by hospital pharmacies was not likely to cause confusion with Opposer’s VIGILANCE heart monitor and software used in the same hospital, because they were used by different personnel in the hospital. In Edwards Lifesciences Corporation v. VigiLanz Corporation, 94 U.S.P.Q.2d 1399, 2010 WL 1514315 (T.T.A.B. 2010). See David Crystal, Inc. v. Soo Valley Co., 471 F. 2d 1245, 176 U.S.P.Q. 326 (sales to industrial users and to consumers); Dynamics Research Corp. v. Langenau Mfg. Co., 704 F.2d 1575, 217 U.S.P.Q. 649 (Fed.Cir.1983) (distinct groups of professional purchasers); Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440, 205 U.S.P.Q. 981 (9^th Cir. 1980) (tube-making machinery and tubes: distinct group of knowledgeable purchasers of expensive goods); In re Shipp, 4 U.S.P.Q. 2d 1174 (T.T.A.B. 1987) (applicant’s PURITAN for laundry and dry cleaning services rendered to consumers will not likely cause confusion with the cited trademark PURTINA for commercial dry cleaning machine filters sold only to dry cleaning professionals; it is unlikely that applicant’s customers would ever encounter any of the commercial goods sold under the cited mark); Oxford Industries, Inc. v. JBJ Fabrics, Inc., 6 U.S.P.Q. 2d 1756 (plaintiff sells JBJ garments through retail channels to consumers, defendant, a fabric printer, doing business under the JBJ marks, sells its converted fabric to garment manufacturers; the parties’ products are “marketed through distinctly different channels of commerce”; no likely confusion found).

Accordingly, it is submitted that in accordance with In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) the rejection under Section 2(d) should be withdrawn, and the noted potential conflict over two pending applications related to the cited registration also be withdrawn, and the application be approved for publication.

EVIDENCE
Evidence in the nature of Exhibit 1, Dictionary.com definition of "pinpoint"; Exhibit 2, PINPOINT advertising materials from Registrant's website; Exhibit 3, Fort Sanders Regional Medical Center, Knoxville, TN surgical services advertising; Exhibit 4, Mayo Clinic's informational webpage on epilepsy; Exhibit 5, ScienceDaily article re epilepsy; Exhibit 6, Nature Reviews Neurology article titled: "Epilepsy: High-frequency oscillations pinpoint the seizure-onset zone"; Exhibit 7, Trademark search Report of PINPOINT marks has been attached.
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SIGNATURE(S)
Response Signature
Signature: /SPMcNamara/     Date: 01/18/2018
Signatory's Name: Stephen P. McNamara
Signatory's Position: Attorney of record, Connecticut bar member

Signatory's Phone Number: (203) 324-6155

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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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.

        
Serial Number: 87525645
Internet Transmission Date: Thu Jan 18 13:35:18 EST 2018
TEAS Stamp: USPTO/ROA-XX.XX.XX.XXX-20180118133518704
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914d2e76d7fdf62aa6e2181179d1a5d31f421b-N
/A-N/A-20180118131318806641