| 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 | 88181913 |
| LAW OFFICE ASSIGNED | LAW OFFICE 124 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88181913/mark.png |
| LITERAL ELEMENT | SUNSTONE |
| 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) | |
|
This is responsive to the Office Action dated February 15, 2019 in Applicant’s U.S. trademark Application Serial No. 88181913. Applicant respectfully provides this Response without submitting to the accuracy of any of the Examining Attorney’s assertions. In the Office Action, the Examining Attorney noted a prior-filed, then pending application and stated that “[i]f the mark in the referenced application registers, applicant’s mark may be refused registration . . . because of a likelihood of confusion between the two marks.” The cited application, U.S. Application Serial No. 88069078 for “SUNSTONE PILOT” has since registered as Registration No. 5731994. Applicant submits that there is no likelihood of confusion between Applicant’s mark and that of Registration No. 5731994. The question of likelihood of confusion is determined on a case-by-case basis. E.g., In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). While du Pont set out a series of factors to consider in a likelihood of confusion analysis, it noted that the facts of the case determine which factors “play a dominant role.” Id. at 1362. In this case, “the dissimilarity and nature of the goods or services” and the sophistication of the consumers are dispositive. Id. at 1361. Because the goods and services are distinguishable in nature and are marketed to sophisticated, specialized consumers, there is no likelihood of confusion. Applicant’s goods are electromagnetic, echolocation, and electrocardiographic apparatuses used to aid in the placement of catheters and accessories therefor. In contrast, Registration No. 5731994 for “SUNSTONE PILOT” covers “training services in the field of medical devices.” The goods and services covered by Applicant’s mark and the identified registration are clearly distinguishable. While Applicant’s “SUNSTONE” mark covers products in the form of apparatuses used in the placement of catheters, “SUNSTONE PILOT” covers purely services. Applicant submits that its goods are therefore quite different from Registrant’s services, and the Examiner should give this difference significant weight and withdraw the rejection on likelihood of confusion grounds. Moreover, the users of Applicant’s and Registrant’s goods and services are sophisticated consumers with the ability to distinguish between the “SUNSTONE” and “SUNSTONE PILOT” brands. The consumers of Applicant’s and Registrant’s goods are medical professionals. These consumers are sophisticated and experienced in their field. It is most unlikely that such skilled healthcare professionals would confuse a product with a service. As such, Applicant submits that the du Pont factor of consumer sophistication weighs heavily in favor of registration of Applicant’s mark. The Examining Attorney also requested that Applicant amend its identification of the goods. As suggested by the Examining Attorney, Applicant clarifies its identification as follows: “Electromagnetic, echolocation, and Electrocardiographic (ECG) apparatuses to assist in the placement of catheters and accessories therefor, namely, remote control devices, carrying cases, power supplies, leads, connectors, and guidewires, specifically adapted for electromagnetic, echolocation, and electrocardiographic (ECG) apparatuses.” In view of the foregoing, Applicant respectfully requests that the Examining Attorney advance the present application. Applicant submits that there is no likelihood of confusion with the cited Registration. This Response is submitted without prejudice. |
|
| GOODS AND/OR SERVICES SECTION (009)(no change) | |
| GOODS AND/OR SERVICES SECTION (010)(current) | |
| INTERNATIONAL CLASS | 010 |
| DESCRIPTION | |
| Electromagnetic, echolocation, and/or Electrocardiographic (ECG) apparatus to assist in the placement of catheters and accessories therefor | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (010)(proposed) | |
| INTERNATIONAL CLASS | 010 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Electromagnetic, echolocation, and Electrocardiographic (ECG) apparatuses to assist in the placement of catheters and accessories therefor, namely, remote control devices, carrying cases, power supplies, leads, connectors, and guidewires, specifically adapted for electromagnetic, echolocation, and electrocardiographic (ECG) apparatuses | |
| FILING BASIS | Section 1(b) |
| ATTORNEY SECTION (current) | |
| NAME | Alfred W. Zaher |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | MONTGOMERY, MCCRACKEN, WALKER & RHOADS, LLP |
| STREET | 1735 MARKET STREET |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | US |
| PHONE | 215-772-7234 |
| FAX | 215-772-7620 |
| azaher@mmwr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| ATTORNEY SECTION (proposed) | |
| NAME | Alfred W. Zaher |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | MONTGOMERY, MCCRACKEN, WALKER & RHOADS, LLP |
| STREET | 1735 MARKET STREET |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | United States |
| PHONE | 215-772-7234 |
| FAX | 215-772-7620 |
| azaher@mmwr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| CORRESPONDENCE SECTION (current) | |
| NAME | ALFRED W. ZAHER |
| FIRM NAME | MONTGOMERY, MCCRACKEN, WALKER & RHOADS, LLP |
| STREET | 1735 MARKET STREET |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | US |
| PHONE | 215-772-7234 |
| FAX | 215-772-7620 |
| azaher@mmwr.com; sli@mmwr.com; jgannon@mmwr.com; mschwarz@mmwr.com; trademarks@mmwr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Alfred W. Zaher |
| FIRM NAME | MONTGOMERY, MCCRACKEN, WALKER & RHOADS, LLP |
| STREET | 1735 MARKET STREET |
| CITY | PHILADELPHIA |
| STATE | Pennsylvania |
| POSTAL CODE | 19103 |
| COUNTRY | United States |
| PHONE | 215-772-7234 |
| FAX | 215-772-7620 |
| azaher@mmwr.com; rmoss@mmwr.com; bvinci@mmwr.com; mschwarz@mmwr.com; trademarks@mmwr.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /alfred w zaher/ |
| SIGNATORY'S NAME | Alfred W. Zaher |
| SIGNATORY'S POSITION | Attorney of Record, Pennsylvania bar member |
| SIGNATORY'S PHONE NUMBER | 215-772-7234 |
| DATE SIGNED | 08/13/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 13 14:52:11 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XXX-2 0190813145211116225-88181 913-610ff48c12327829c1361 3f1115c6c5d994e88cb75691f bb23adb8612d197eb16-N/A-N /A-20190813141752372620 |
| 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) |
This is responsive to the Office Action dated February 15, 2019 in Applicant’s U.S. trademark Application Serial No. 88181913. Applicant respectfully provides this Response without submitting to the accuracy of any of the Examining Attorney’s assertions.
In the Office Action, the Examining Attorney noted a prior-filed, then pending application and stated that “[i]f the mark in the referenced application registers, applicant’s mark may be refused registration . . . because of a likelihood of confusion between the two marks.” The cited application, U.S. Application Serial No. 88069078 for “SUNSTONE PILOT” has since registered as Registration No. 5731994. Applicant submits that there is no likelihood of confusion between Applicant’s mark and that of Registration No. 5731994.
The question of likelihood of confusion is determined on a case-by-case basis. E.g., In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). While du Pont set out a series of factors to consider in a likelihood of confusion analysis, it noted that the facts of the case determine which factors “play a dominant role.” Id. at 1362. In this case, “the dissimilarity and nature of the goods or services” and the sophistication of the consumers are dispositive. Id. at 1361. Because the goods and services are distinguishable in nature and are marketed to sophisticated, specialized consumers, there is no likelihood of confusion.
Applicant’s goods are electromagnetic, echolocation, and electrocardiographic apparatuses used to aid in the placement of catheters and accessories therefor. In contrast, Registration No. 5731994 for “SUNSTONE PILOT” covers “training services in the field of medical devices.” The goods and services covered by Applicant’s mark and the identified registration are clearly distinguishable. While Applicant’s “SUNSTONE” mark covers products in the form of apparatuses used in the placement of catheters, “SUNSTONE PILOT” covers purely services. Applicant submits that its goods are therefore quite different from Registrant’s services, and the Examiner should give this difference significant weight and withdraw the rejection on likelihood of confusion grounds.
Moreover, the users of Applicant’s and Registrant’s goods and services are sophisticated consumers with the ability to distinguish between the “SUNSTONE” and “SUNSTONE PILOT” brands. The consumers of Applicant’s and Registrant’s goods are medical professionals. These consumers are sophisticated and experienced in their field. It is most unlikely that such skilled healthcare professionals would confuse a product with a service. As such, Applicant submits that the du Pont factor of consumer sophistication weighs heavily in favor of registration of Applicant’s mark.
The Examining Attorney also requested that Applicant amend its identification of the goods. As suggested by the Examining Attorney, Applicant clarifies its identification as follows: “Electromagnetic, echolocation, and Electrocardiographic (ECG) apparatuses to assist in the placement of catheters and accessories therefor, namely, remote control devices, carrying cases, power supplies, leads, connectors, and guidewires, specifically adapted for electromagnetic, echolocation, and electrocardiographic (ECG) apparatuses.”
In view of the foregoing, Applicant respectfully requests that the Examining Attorney advance the present application. Applicant submits that there is no likelihood of confusion with the cited Registration. This Response is submitted without prejudice.