Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  May 04, 2020

 

 INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 26, 2020.

 

In a previous Office action dated October 2, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION. 

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 1930109.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). 

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Refusal to register the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 1930109 is hereby maintained and made FINAL.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01. 

 

The applied-for mark is “PAVMED” for “Medical and surgical instruments and apparatus for use in general, cardiovascular, cardiothoracic, neuro, oral, maxillofacial, tissue, otolaryngology, pediatric, plastic, trauma, hand, orthopedic, thoracic, urological and laparoscopic surgeries and interventional procedures; Medical and surgical instruments and apparatus for use in infusion systems, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time, none of the foregoing related to use in respiratory procedures or related to respiratory instruments or apparatus” in international class 10.

 

U.S. Registration No. 1930109 is for the mark “PAV” and is used in connection with “lung ventilator device” in international class 10.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

 

In this case, applicant’s mark, “PAVMED”, is confusingly similar to registrant’s mark, “PAV”, because the marks are highly similar in sound, appearance, connotation, and commercial impression.  Specifically, the marks share the wording “PAV”, and this term would be pronounced and displayed identically, thereby creating similarities in sound and appearance.  

 

The applied for mark also has the additional wording “MED”. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Matter that is descriptive of or generic for a party’s goods and/or services 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 previously attached evidence shows that the wording “MED” in the applied-for mark is merely descriptive of applicant’s goods, namely, that the applicant is providing medical goods.  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “PAV” the more dominant element of the mark.

 

Ultimately, applicant’s mark is likely to cause confusion with the registered mark because the similarities in sound, appearance, and connotation create the same overall commercial impression in the minds of consumers.  Thus the marks are confusingly similar.

 

Comparison of the Goods

 

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).

 

In this case, both applicant and registrant use the marks on closely related goods.

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely “medical ventilators” and “infusion pumps”, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). (See U.S. Registration Nos. 5755602 and 5091630 attached)

 

The attached Internet evidence, consisting of providers of lung ventilator devices, infusion pumps, and surgical apparatus and instruments, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark.  For example, Drager makes surgical apparatus and instruments and also provides ventilators. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Drager

·       Surgical apparatus and instruments

o   http://www.draeger.com/en-us_us/Hospital/Departments/Operating-Room

o   http://www.draeger.com/en-us_us/Hospital/Portfolio/Anesthesia-Machines

·       Ventilators

o   http://www.draeger.com/en-us_us/Hospital/Portfolio/Ventilation-Respiratory-Monitoring

 

GETINGE

• Surgical apparatus and instruments
• • http://www.getinge.com/us/products/hospital/vascular-surgery-solutions/
• Ventilators
• • http://www.getinge.com/int/products/hospital/mechanical-ventilation/

 

Philips

• Surgical apparatus and instruments:
• • http://www.usa.philips.com/healthcare/product/HC718133/zenition-70-mobile-c-arm-with-flat-detector
  • http://www.usa.philips.com/healthcare/solutions/interventional-xray/orthopedic-surgery
• Ventilator:
• • http://www.usa.philips.com/healthcare/solutions/hospital-respiratory-care/hospital-respiratory-ventilation

 

GE HEALTHCARE

• Surgical apparatus and instruments:
• • http://www.gehealthcare.com/products/surgical-imaging
• Ventilator:
• • http://www.gehealthcare.com/products/ventilators/carescape-r860

 

Vyaire

• Ventilator
• • http://www.vyaire.com/products/bellavista-1000-ventilator
• Surgical instruments
• • http://www.vyaire.com/solutions/operative-care

 

Smith’s Medical

• Ventilators
• • http://www.smiths-medical.com/products/ventilation/mechanical-ventilation/ventilators/pneupac-parapac-ventilator
• Surgical apparatus and instruments
• • http://www.smiths-medical.com/products/tracheostomy
  • http://www.smiths-medical.com/products/drainage-systems
• Infusion pumps
• • http://www.smiths-medical.com/products/infusion/ambulatory-infusion/ambulatory-infusion-pumps/caddsolis-vip-ambulatory-infusion-pump

 

Vetland

• Infusion pumps
• • http://vetlandmedical.com/vet_products/vetland-serenity%c2%ad-iv-flo-infusion-pump/
• Ventilators
• • http://vetlandmedical.com/vet_products/hallowell-2002pro/

 

Consideration of Applicant’s Arguments

 

Applicant has amended the identification of goods to exclude respiratory instruments. However, the issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01. In this case, the evidence above shows that surgical apparatus and instruments, infusion pumps, and lung ventilators are often provided by the same source. Therefore, the goods remain closely related.

 

Accordingly, the goods of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.

 

Therefore, upon encountering “PAVMED” and “PAV” used on the identified goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. Accordingly, refusal to register the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 1930109 is hereby maintained and made FINAL. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on May 04, 2020 for

U.S. Trademark Application Serial No. 88202914

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Odette Martins/

Trademark Examining Attorney

Law Office 123

(571) 270-0122

odette.martins@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from May 04, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”