| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87840040 |
| LAW OFFICE ASSIGNED | LAW OFFICE 103 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87840040/mark.png |
| LITERAL ELEMENT | SYMPHONY |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION 1. Introduction This responds to the Office Action, dated May 21, 2018. The Trademark Examining Attorney raises an advisory objection based on prior pending application, Serial No. 87814127 of Smith & Nephew. The Trademark Examining Attorney also has objected to the specification of goods of the subject application as indefinite. Applicant amends the specification of goods to: “surgical implants comprising artificial material solely for use in spinal surgeries and surgical instruments solely for use in spinal surgeries.” It is respectfully suggested that this amendment not only complies with the Trademark Examining Attorney’s requirements regarding the specification, but is a restriction to both use and trading channels that would avoid any potential objection based on the prior mark of Smith & Nephew, which covers “artificial hips; hip stems; acetabular cups; surgical instruments for use in implanting artificial hips.” Furthermore, Applicant and Smith & Nephew have entered into a consent and coexistence agreement memorializing that their respective products are not interchangeable and are marketed and sold in distinct trading channels thereby avoiding any potential for confusion (hereinafter “Consent”). A copy of the Consent is submitted herewith. 2. Argument There is no “per se” rule for a likelihood of confusion. TMEP 1207.01 (a) (iv). The Trademark Examining Attorney is guided by the thirteen factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Citigroup Inc. v. Capital City Bank Grp. Inc., 98 USPQ 2d 1253 (Fed. Cir. 2011). The analysis is no different within the medical industry. Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (T.T.A.B. 1976). The test of whether two marks are confusingly similar is based on whether it is likely that the purchasing public would mistakenly assume that the applicant’s goods originate from the same source as, or are associated with the goods covered by the cited mark. See In re Majestic Distilling Co., 315 F. 3d 1311, 1314-1315 (Fed. Cir. 2003). The commercial realities of the marketplace and consumer perceptions are key in an analysis of a likelihood of confusion. Indeed, as stated by the predecessor to the Federal Circuit, “[w]e are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.” Witco Chem. Co. v. Whitfield Chem. Co., 164 USPQ 43, 44-45 (C.C.P.A. 1969). Without question, the nature and scope of a party's goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g., J & J Snack Foods Corp. v. McDonald's Corp., 18 U.S.P.Q. 2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 16 U.S.P.Q. 2d 1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1 U.S.P.Q. 2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 177 U.S.P.Q. 76 (CCPA 1973). Here, although the marks are the same, the products are not identical and do not compete with each other in application, and are not used by the same medical professionals. The respective products are not – by any stretch of the imagination – “impulse purchases” but, rather, purchases made by highly sophisticated consumers, namely specialist doctors. Where the purchasers are sophisticated, more care is taken and confusion is less likely to result. See, e.g., Barre-National, Inc. v. Barr Laboratories, Inc., 773 F. Supp. 735 (D. N.J. 1991) (denying plaintiff’s preliminary injunction motion on the basis that it cannot establish a likelihood of confusion between the marks BARR and BARRE, both used on liquid pharmaceuticals); Astra Pharmaceutical Products v. Beckman Instruments, 718 F.2d 1201, 1206 (1st Cir. 1983) (finding no likelihood of confusion between ASTRA for pharmaceuticals and ASTRA for computerized blood analyzer machines). The Trademark Office has frequently permitted identical marks for noncompeting goods in the medical device industry, recognizing that particular specialties are distinct trading channels. Because of the marketplace differences, Applicant and the owner(s) of the potential citation have entered into a consent agreement, which acknowledges that their respective consumers are “distinct medical professionals [who] are not likely to confuse the Applicant’s use of SYMPHONY as a source indicator for spinal implants with the possible cited mark intended to be registered and used for hip implants. See, Consent at ¶ 3. Moreover, the parties to the Consent acknowledge that the channels of trade are different because the respective products are used by completely different medical specialists. Id. The parties’ respective goods are narrowly defined, by use, and trading channels, and do not overlap. Id. Indeed, although not required in a Consent, the parties to the Consent have agreed to consult with each other in the unlikely event that particular developments suggest to either party the possibility that their respective marks are likely to be confused. See, Consent at ¶ 3.
The Consent should be accorded great weight. The parties acknowledge that their respective consumers are sophisticated in distinguishing branded products in their fields. The goods are not impulse purchases. The specifications for both parties’ goods are narrow, with restrictions to fields of use. See In re American Cruise Lines, Inc., 128 U.S.P.Q, 1157 (T.T.A.B. 2018); see also, In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993); In re Mastic Inc., 829 F.2d 1114, 4 U.S.P.Q.2d 1292 (Fed. Cir. 1987); In re Donnay, 31 U.S.P.Q. 2d 1953; 1956 (T.T.A.B. 1994).
In sum, given the Applicant’s arguments, and the Consent, through which the Applicant and the owner of the possible citation acknowledge the lack of potential confusion based on the differences in the parties’ goods, the different channels of trade, and the sophistication of each parties’ respective consumers, it is respectfully requested that the Trademark Examining Attorney reconsider the initial advisory objection, and permit Applicant’s mark to proceed to publication.
Respectfully submitted, /Jacqueline M. Lesser/ Attorney of Record, NY and PA Bars Baker & Hostetler LLP |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_3898219243-20181017082322850675_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (8 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0005.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit "A" Consent Agreement |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | |
| Surgical implants and instruments solely for use in spinal surgeries | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 010 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| surgical implants comprising artificial material solely for use in spinal surgeries and surgical instruments solely for use in spinal surgeries | |
| FILING BASIS | Section 1(b) |
| ADDITIONAL STATEMENTS SECTION | |
| MISCELLANEOUS STATEMENT | Executed Associate Power of Attorney |
| MISCELLANEOUS FILE NAME(S) | |
| ORIGINAL PDF FILE | mis-3898219243-20181017082322850675_._Executed_Associate_Power_of_Attorney_for_SYMPHONY.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\878\400\87840040\xml4\ROA0010.JPG |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Jacqueline M. Lesser/ |
| SIGNATORY'S NAME | Jacqueline M. Lesser |
| SIGNATORY'S POSITION | Associate Attorney of record, PA and NY bar member |
| SIGNATORY'S PHONE NUMBER | 215.564.2155 |
| DATE SIGNED | 10/17/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Oct 17 13:51:00 EDT 2018 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0181017135100616833-87840 040-610445fb566b67c47d661 cac55fec205aab52c1d8b8976 bb7b7aad35a122b3d5d-N/A-N /A-20181017102420897633 |
| 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
1. Introduction
This responds to the Office Action, dated May 21, 2018. The Trademark Examining Attorney raises an advisory objection based on prior pending application, Serial No. 87814127 of Smith & Nephew. The Trademark Examining Attorney also has objected to the specification of goods of the subject application as indefinite.
Applicant amends the specification of goods to: “surgical implants comprising artificial material solely for use in spinal surgeries and surgical instruments solely for use in spinal surgeries.” It is respectfully suggested that this amendment not only complies with the Trademark Examining Attorney’s requirements regarding the specification, but is a restriction to both use and trading channels that would avoid any potential objection based on the prior mark of Smith & Nephew, which covers “artificial hips; hip stems; acetabular cups; surgical instruments for use in implanting artificial hips.” Furthermore, Applicant and Smith & Nephew have entered into a consent and coexistence agreement memorializing that their respective products are not interchangeable and are marketed and sold in distinct trading channels thereby avoiding any potential for confusion (hereinafter “Consent”). A copy of the Consent is submitted herewith.
2. Argument
There is no “per se” rule for a likelihood of confusion. TMEP 1207.01 (a) (iv). The Trademark Examining Attorney is guided by the thirteen factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Citigroup Inc. v. Capital City Bank Grp. Inc., 98 USPQ 2d 1253 (Fed. Cir. 2011). The analysis is no different within the medical industry. Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (T.T.A.B. 1976).
The test of whether two marks are confusingly similar is based on whether it is likely that the purchasing public would mistakenly assume that the applicant’s goods originate from the same source as, or are associated with the goods covered by the cited mark. See In re Majestic Distilling Co., 315 F. 3d 1311, 1314-1315 (Fed. Cir. 2003). The commercial realities of the marketplace and consumer perceptions are key in an analysis of a likelihood of confusion. Indeed, as stated by the predecessor to the Federal Circuit, “[w]e are not concerned with mere theoretical possibilities of confusion, deception, or mistake or with de minimis situations but with the practicalities of the commercial world, with which the trademark laws deal.” Witco Chem. Co. v. Whitfield Chem. Co., 164 USPQ 43, 44-45 (C.C.P.A. 1969).
Without question, the nature and scope of a party's goods or services must be determined on the basis of the goods or services recited in the application or registration. See, e.g., J & J Snack Foods Corp. v. McDonald's Corp., 18 U.S.P.Q. 2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 16 U.S.P.Q. 2d 1783 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 1 U.S.P.Q. 2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 177 U.S.P.Q. 76 (CCPA 1973). Here, although the marks are the same, the products are not identical and do not compete with each other in application, and are not used by the same medical professionals.
The respective products are not – by any stretch of the imagination – “impulse purchases” but, rather, purchases made by highly sophisticated consumers, namely specialist doctors. Where the purchasers are sophisticated, more care is taken and confusion is less likely to result. See, e.g., Barre-National, Inc. v. Barr Laboratories, Inc., 773 F. Supp. 735 (D. N.J. 1991) (denying plaintiff’s preliminary injunction motion on the basis that it cannot establish a likelihood of confusion between the marks BARR and BARRE, both used on liquid pharmaceuticals); Astra Pharmaceutical Products v. Beckman Instruments, 718 F.2d 1201, 1206 (1st Cir. 1983) (finding no likelihood of confusion between ASTRA for pharmaceuticals and ASTRA for computerized blood analyzer machines).
The Trademark Office has frequently permitted identical marks for noncompeting goods in the medical device industry, recognizing that particular specialties are distinct trading channels. Because of the marketplace differences, Applicant and the owner(s) of the potential citation have entered into a consent agreement, which acknowledges that their respective consumers are “distinct medical professionals [who] are not likely to confuse the Applicant’s use of SYMPHONY as a source indicator for spinal implants with the possible cited mark intended to be registered and used for hip implants. See, Consent at ¶ 3. Moreover, the parties to the Consent acknowledge that the channels of trade are different because the respective products are used by completely different medical specialists. Id. The parties’ respective goods are narrowly defined, by use, and trading channels, and do not overlap. Id. Indeed, although not required in a Consent, the parties to the Consent have agreed to consult with each other in the unlikely event that particular developments suggest to either party the possibility that their respective marks are likely to be confused. See, Consent at ¶ 3.
The Consent should be accorded great weight. The parties acknowledge that their respective consumers are sophisticated in distinguishing branded products in their fields. The goods are not impulse purchases. The specifications for both parties’ goods are narrow, with restrictions to fields of use. See In re American Cruise Lines, Inc., 128 U.S.P.Q, 1157 (T.T.A.B. 2018); see also, In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 U.S.P.Q.2d 1071 (Fed. Cir. 1993); In re Mastic Inc., 829 F.2d 1114, 4 U.S.P.Q.2d 1292 (Fed. Cir. 1987); In re Donnay, 31 U.S.P.Q. 2d 1953; 1956 (T.T.A.B. 1994).
In sum, given the Applicant’s arguments, and the Consent, through which the Applicant and the owner of the possible citation acknowledge the lack of potential confusion based on the differences in the parties’ goods, the different channels of trade, and the sophistication of each parties’ respective consumers, it is respectfully requested that the Trademark Examining Attorney reconsider the initial advisory objection, and permit Applicant’s mark to proceed to publication.
Respectfully submitted,
/Jacqueline M. Lesser/
Attorney of Record, NY and PA Bars
Baker & Hostetler LLP
