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. 87640958 SWEEP(Standard Characters, see http://uspto.report/TM/87640958/mark.png) has been amended as follows:

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

IDENTIFICATION OF THE GOODS

The Examining Attorney has requested that the description of the goods listed in the application be revised to clarify their specific medical use, purpose and/or function. 

Pursuant to the Examining Attorney’s request, by the present amendment, Applicant has replaced the description previously on file with the following:

medical and surgical equipment and apparatus, and parts and fittings therefor, for use in orthopedics; medical and surgical equipment and apparatus, and parts and fittings therefor, for use in ablation

In this regard, a revised application incorporating the foregoing amendment is submitted herewith. The Applicant respectfully submits that the goods, as currently amended, are defined in compliance with U.S. Acceptable Identification of Goods and Services Manual, and requests that the objection be withdrawn. 

PRIOR-FILED APPLICATIONS AND SECTION 2(d), 15 U.S.C. § 1052(d) REFUSAL – LIKELIHOOD OF CONFUSION

The Examining Attorney has cited the following U.S. trademark applications and registrations:

·         Application No. 87/526,664 for CLEANSWEEP relating to “respiratory suction apparatus” (Class 10);

·         Application No. 79/213,324 for SWEEPS relating to “lasers for dental use” (Class 10);

·         Registration Nos. 5,262,901 and 5,262,891 for OCUSWEEP and OCUSWEEP & Design relating to medical apparatus and instruments in the field of eye examination, diagnosis and eye health (Class 10);

·         Registration No. 4,372,789 for CLEAN SWEEP relating to “medical instruments for use in endocervical tissue sampling” (Class 10);

·         Registration No. 1,709,296 for CELL SWEEP relating to “cytological samplers used for procedures such as pap smears; microscope slides” (Class 10); and

·         Registration No. 3,833,418 for LASER SWEEP relating to “feature of light and/or electromagnetic radiation emitting devices in the nature of combs, wands and hand-held units that use low level lasers, light emitting diodes, infrared light and pulsed light for medical diagnostic and therapeutic applications” and “electronic stimulator for use with a user’s body or body region such as head, torso, and extremities” (Class 10).

The Applicant respectfully submits that the contemporaneous use of the subject mark and the cited marks would be unlikely to cause confusion in the marketplace given the substantial differences in the associated goods.  The likelihood of confusion is further removed when one considers the specialization and sophistication of consumers of the respective goods.

Differences in the Goods

The Applicant respectfully submits that the goods in association with the subject mark are different from those recited in association with the cited trademarks, and that the differences in the parties’ respective goods eliminate any likelihood of confusion between the Applicant’s mark and the cited marks. 

The goods in the currently amended subject application are described as “medical and surgical equipment and apparatus, and parts and fittings therefor, for use in orthopedics; medical and surgical equipment and apparatus, and parts and fittings therefor, for use in ablation”.

Applicant respectfully submits that the goods in association with the subject application, as currently amended, are different from the goods recited in connection with the cited marks. For example,

·         cited Application No. 87/526,664 for CLEANSWEEP relates to a respiratory suction apparatus, which is typically used in medicine for removing mucous from the airway or lungs of a patient;

·         cited Application No. 79/213,324 for SWEEPS relates to the field of dentistry, and in particular to lasers for dental use;

·         cited Registration Nos. 5,262,901 and 5,262,891 for OCUSWEEP and OCUSWEEP & Design) relate to the field of optometry and ophthalmology, namely eye examination, diagnosis and eye health;

·         cited Registration No. 4,372,789 for CLEAN SWEEP relates to medical instruments for use in endocervical tissue sampling. Similarly, cited Registration No. 1,709,296 for CELL SWEEP, which Applicant notes coexists with CLEAN SWEEP relates to cell samplers used in procedures such as pap smears (sampling of cells from the cervix), and further relates to microscope slides. 

·         cited Registration No. 3,833,418 for LASER SWEEP relates to light/electromagnetic radiation devices and electronic stimulators use with a user’s body or body region.

Sophistication of the Consumer

Although the Applicant believes that the arguments advanced above are sufficient to overcome the confusion objection, Applicant furthermore submits that the goods associated with the cited marks and the subject mark would be purchased by well informed, knowledgeable and sophisticated medical personnel specializing and practicing in their respective fields of medicine. 

Since the respective consumers for both the goods listed in the cited applications and registrations and the Applicant’s products are highly specialized and knowledgeable in their respective medical fields and specializations, as such, they would take care to ensure that they are purchasing the correct products for their specialized medical needs from the appropriate provider.  For example, see Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 718 (Fed. Cir. 1992) (no confusion between identical marks where, inter alia, both parties’ goods and services “are usually purchased after careful consideration by persons who are highly knowledgeable about the goods or services and their source.”); see also TMEP § 1207.01(d)(vii).  The care taken by the consumers in purchasing products of a sophisticated nature, such as medical equipment and instruments, greatly minimizes, if not entirely eliminates, any perceived likelihood of confusion.

Further, considering that medical equipment is fairly expensive, the consumers of such products would expend careful consideration and conduct extensive research into the purchase of such goods to ensure they are purchasing the right equipment for their needs from the best resources. Expensive items are likely to be more carefully scrutinized by prospective purchasers than less expensive ones, thereby lessening the risk of confusion between similar trademarks where expensive items are involved.

The price level of goods and services in an important factor in determining the amount of care the reasonably prudent buyer will use. If goods or services are relatively expensive, more care is taken and buyers are less likely to be confused as to source of affiliation. See McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126 (2^nd Cir. 1979). As Judge Meskill noted in the Mcgregor-Doniger case:

The relevant cases not only authorize but instruct the trial courts, in making a determination as to the likelihood of confusion, to consider the level of sophistication of the relevant purchasers....The greater the value of an article the more careful the typical consumer can be expected to be; the average purchaser of an automobile will no doubt devote more attention to examining different products...than will the average purchaser of a ball of twine....

Coexistence of Marks on the Register

Furthermore, Applicant notes the Office found no likelihood of confusion between the cited mark CELL SWEEP and the mark CLEAN SWEEP even though both marks relate to medical instruments used in the same medical field, namely gynecological examinations and tissue sampling. 

Since the Office has allowed a number of marks incorporating the word “SWEEP” to co-exist on the Register, including the two cited marks for use with goods related to gynecology, it is apparent that the Applicant’s mark for use in association with “medical and surgical equipment and apparatus, and parts and fittings therefor, for use in orthopedics; medical and surgical equipment and apparatus, and parts and fittings therefor, for use in ablation” should not be regarded as confusingly similar to the cited marks, and should also be allowed to co-exist, given the differences discussed above.

In view of the foregoing, the Applicant respectfully submits that based on the differences between the goods, the specialization and sophistication of the respective consumers, and the careful scrutiny that will go into the purchase of medical equipment, as well as the fact that the Office has permitted the registration of a number of marks containing the word SWEEP for use in association with Class 10 goods, including those in the same medical specialty, there would be little likelihood of confusion between the subject application and the cited marks.

The Applicant therefore respectfully requests that the confusion objection be withdrawn.

In view of the foregoing, it is submitted that the Application is in condition for approval which is respectfully requested. The Applicant looks forward to favourable action on this matter.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical and surgical equipment and apparatus; probes for medical purposes
Original Filing Basis:
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.

Proposed:
Tracked Text Description: Medical and surgical equipment and apparatus; medical and surgical equipment and apparatus, and parts and fittings therefor, for use in orthopedics; probes for medical purposes; medical and surgical equipment and apparatus, and parts and fittings therefor, for use in ablationClass 010 for medical and surgical equipment and apparatus, and parts and fittings therefor, for use in orthopedics; medical and surgical equipment and apparatus, and parts and fittings therefor, for use in ablation
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.

SIGNATURE(S)
Response Signature
Signature: /Eugene J. Rath III/     Date: 05/08/2018
Signatory's Name: Eugene J. Rath III
Signatory's Position: Attorney of Record, Michigan Bar Member

Signatory's Phone Number: (269) 381-1156

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: 87640958
Internet Transmission Date: Tue May 08 10:27:10 EDT 2018
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2018050810271002
5744-87640958-610f0ed8e60ff6943381da7d7e
c9548bd6d92d9893e2ec42cbc7788c1e29e9260-
N/A-N/A-20180508093644593091