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.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 4/20/2018

 

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

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.

 

Statutory Refusals

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4731719, 4731720 and 5119646; 3883513 and 4611009; and 4176597.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrants.  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

There is a likelihood of confusion because applicant’s mark, SI, and registrant’s JCBD, LLC’s marks, SI-TECHNOLOGY; SI-DESIS and SI (stylized), are very similar; and the applicant’s goods, namely, “Medical software for measuring anatomical parameters, planning surgical procedures, and assessing surgical outcomes; medical apparatus in the nature of a medical workstation comprised primarily of computer hardware, software, LCD screen display, electronic nerve stimulators, optical cameras, and sensors for use in the fields of spinal cord and nerve detection and surveillance, surgical planning, and surgical navigation during surgical procedures including, robotic assisted surgery, and surgical procedures using robotic arms for surgical purposes”, move in the same trade channels as registrant’s goods, namely, “Orthopedic surgical implants made of artificial materials, namely, implants used to immobilize and fuse joints; orthopedic surgical implants made of artificial materials for surgical repair and stabilization of the spine and pelvis and attachments and components therefor”; “Orthopedic surgical implants made of artificial materials, namely, implants used to immobilize and fuse joints; orthopedic surgical implants made of artificial materials for surgical repair and stabilization of the spine and pelvis and attachments and components therefor” and “Orthopedic surgical implants comprising artificial material and attachments and components therefor; surgical and medical apparatus and instruments for use in performing surgery and sizing and placement of implants”, leading consumers to believe that applicant and registrant are related.

 

There is a likelihood of confusion because applicant’s mark, SI, and registrant’s SI-BONE, Inc.’s marks, SI-BONE and SI-BONE and design , are very similar; and the applicant’s goods, namely, “Medical software for measuring anatomical parameters, planning surgical procedures, and assessing surgical outcomes; medical apparatus in the nature of a medical workstation comprised primarily of computer hardware, software, LCD screen display, electronic nerve stimulators, optical cameras, and sensors for use in the fields of spinal cord and nerve detection and surveillance, surgical planning, and surgical navigation during surgical procedures including, robotic assisted surgery, and surgical procedures using robotic arms for surgical purposes”, move in the same trade channels as registrant’s goods, namely, “Orthopedic surgical implants, namely, rods used to immobilize and fuse joints” and “Orthopedic surgical implants comprising artificial materials, namely, rods to immobilize and fuse joints; medical and surgical instruments, namely, orthopedic instruments”, leading consumers to believe that applicant and registrant are related.

 

There is a likelihood of confusion because applicant’s mark, SI, and registrant’s Globus Medical Inc.’s mark, SI-LOK, are very similar; and the applicant’s goods, namely, “Medical software for measuring anatomical parameters, planning surgical procedures, and assessing surgical outcomes; medical apparatus in the nature of a medical workstation comprised primarily of computer hardware, software, LCD screen display, electronic nerve stimulators, optical cameras, and sensors for use in the fields of spinal cord and nerve detection and surveillance, surgical planning, and surgical navigation during surgical procedures including, robotic assisted surgery, and surgical procedures using robotic arms for surgical purposes”, move in the same trade channels as registrant’s goods, namely, “Spinal implants made from artificial materials for use in spine surgery”, leading consumers to believe that applicant and registrant are related.

 

Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s marks.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.

 

Moreover, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the lettering SI is the salient if only element in the marks since the other wording constitutes descriptive matter. And although SI is also deemed descriptive, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in [a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

The compared goods 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); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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)); TMEP §1207.01(a)(i). The goods of the all the relevant parties consist of medical goods used for bone and spinal surgery.

 

The goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See for example the attachment from http://www.google.com/search?source=hp&ei=vlnaWryEIMil_QaZtqyIDg&q=spinal+surgery+goods&oq=spinal+surgery+goods&gs_l=psy-ab.3...1836.8465.0.8741.20.16.0.4.4.0.140.1379.14j2.16.0....0...1c.1.64.psy-ab..0.19.1464...0j0i131k1j0i22i30k1.0.vywatEXIOSA  showing a wide array of goods available to medical professionals in the field of spinal and orthopedic surgery.  See In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). 

 

Please note the following.

 

The filing dates of pending U.S. Application Serial Nos. 86623563 and 86725257 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.

 

Please note the following additional refusal.

 

Registration is refused because the applied-for mark merely describes a feature and characteristic of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

Applicant’s mark is SI for Medical software for measuring anatomical parameters, planning surgical procedures, and assessing surgical outcomes; medical apparatus in the nature of a medical workstation comprised primarily of computer hardware, software, LCD screen display, electronic nerve stimulators, optical cameras, and sensors for use in the fields of spinal cord and nerve detection and surveillance, surgical planning, and surgical navigation during surgical procedures including, robotic assisted surgery, and surgical procedures using robotic arms for surgical purposes.

 

The attached evidence from AcronymFinder.com shows that the letters “SI” stand for “Sacroiliac Joint.” An abbreviation, initialism, or acronym is merely descriptive when it is generally understood as “substantially synonymous” with the descriptive words it represents.  See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956)) (holding NKJV substantially synonymous with merely descriptive term “New King James Version” and thus merely descriptive of bibles); In re BetaBatt Inc., 89 USPQ2d 1152, 1155 (TTAB 2008) (holding DEC substantially synonymous with merely descriptive term “direct energy conversion” and thus merely descriptive of a type of batteries and battery related services); TMEP §1209.03(h).  The attached evidence from http://www.spineuniverse.com/conditions/sacroiliac-joint-pain; http://zyga.com/ and http://neurosurgicalassociatespc.com/sacroiliitis/ confirms that the letters “SI” are a well-known acronym for the Sacroiliac Joint, which is “located in the pelvis, linking the iliac bone (pelvis) to the sacrum (lowest part of the spine above the tailbone).” The wording “Sacroiliac Joint” is merely descriptive of applicant’s goods, namely, that the orthopedic instruments are used for spinal surgery on the Sacroiliac Joint. The relevant consumer viewing applicant’s mark in connection with orthopedic instruments used in spinal surgery would recognize the letters “SI” as an acronym for the Sacroiliac Joint. Therefore, the acronym “SI” is merely descriptive of a use of applicant’s goods.

 

See also the attachment from http://www.spine-health.com/conditions/spine-anatomy/sacroiliac-joint-anatomy excerpted below:

 

The sacroiliac joint connects the sacrum (triangular bone at the bottom of the spine) with the pelvis (iliac bone that is part of the hip joint) on each side of the lower spine. It transmits all the forces of the upper body to the pelvis and legs. There is not a lot of motion in the joint and it is very strong and stable.

 

It is not clearly understood why sacroiliac joint dysfunction occurs, although some believe it is due to a limitation in its normal motion patterns and/or misalignment of the joint. Sacroiliac joint (SI joint) pain typically results in pain on one side very low in the back or in the buttocks. Another term for sacroiliac joint pain is sacroiliitis, a term that describes inflammation in the joint.

 

 

To permit proper examination of the application, applicant must submit additional information about applicant’s services.  See 37 C.F.R. §2.61(b); TMEP §814.  The requested information should include fact sheets, brochures, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for services of the same type, explaining how its own services will differ.  If the services feature new technology and no information regarding competing services is available, applicant must provide a detailed factual description of the services.

 

Applicant is also requested to state whether its goods will be used on the Sacroiliac Joint.

 

Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the services will not satisfy this requirement for information.

 

Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.  Merely stating that information about the services is available on applicant’s website is an insufficient response and will not make the relevant information of record.  See In re Planalytics, 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusals, applicant must also respond to the requirement set forth below.

 

Identification

 

The wording in the identification of goods is overbroad and must be limited to one class or classes added.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Applicant may substitute the following wording, if accurate:

 

 

Class 9

 

Medical software for measuring anatomical parameters, planning surgical procedures, and assessing surgical outcomes

 

 

Class 10

 

Medical apparatus in the nature of a medical workstation comprised primarily of computer hardware, software, LCD screen display, electronic nerve stimulators, optical cameras, and sensors for use in the fields of spinal cord and nerve detection and surveillance, surgical planning, and surgical navigation during surgical procedures including, robotic assisted surgery, and surgical procedures using robotic arms for surgical purposes

 

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule).  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

NOTE: Applicant has a companion application.  Applicant is referred to TMEP Section 1402.08 for moving goods between companion applications.

 

See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

 

Further action awaits response to the above.

 

/Raul Cordova/

Examining Attorney

Law Office 114

571-272-9448

Raul.Cordova@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 4/20/2018 FOR U.S. APPLICATION SERIAL NO. 87741586

 

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 4/20/2018 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  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 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.