To: | U.S. Patent Innovations, LLC (info@24ipusa.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88206818 - CANADY SMART OR STEALTH - 9101.100 |
Sent: | 2/4/2019 3:10:40 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88206818
MARK: CANADY SMART OR STEALTH
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: U.S. Patent Innovations, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/4/2019
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is CANADY SMART OR STEALTH in standard character form for “medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, inert gas supply units, probes, electrodes, and handpieces for robotic electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for robotic electrosurgery; surgical instruments being computerized surgical manipulation systems; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, clamps, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; endoscopes” in International Class 10.
Registrant’s mark is CANADY PLASMA in standard character form for “Medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, probes, electrodes, and handpieces for electrosurgery; high frequency electrosurgical argon generators and probes, handpieces and electrodes sold therewith; electrosurgical generators with argon capabilities for use in general surgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes” in International Class 10.
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). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
In this case, the following factors are the most relevant: Similarity of the marks, relatedness of the goods, and similarity of the trade channels of the goods.
SIMILARITY OF THE MARKS
CANADY SMART OR STEALTH and CANADY PLASMA are sufficiently similar to create a likelihood of confusion.
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)); TMEP §1207.01(b).
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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
In the present case, both the applied-for mark and the registered mark share the word “CANADY”. This word is also the first word in both marks, thus consumers are likely to focus on the word “CANADY” and assume a connection between the marks.
Although the applied-for mark and the registered mark contain additional wording, the additional wording in the marks does not obviate the marks’ overall similarity because of the commercial impression that the marks are connected to the surname CANADY. See the attached evidence from LEXISNEXIS®, establishing the surname significance of CANADY. A trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., __ F.3d __, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Moreover, the additional wording “PLASMA” in the registered mark is disclaimed. Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Finally, the marks CANADY SMART OR STEALTH and CANADY PLASMA identify closely related and, in some cases, identical goods. Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
RELATEDNESS OF THE GOODS
Applicant has identified its goods as “medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, inert gas supply units, probes, electrodes, and handpieces for robotic electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for robotic electrosurgery; surgical instruments being computerized surgical manipulation systems; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, clamps, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; endoscopes” in International Class 10.
Registrant has identified its goods as “Medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, probes, electrodes, and handpieces for electrosurgery; high frequency electrosurgical argon generators and probes, handpieces and electrodes sold therewith; electrosurgical generators with argon capabilities for use in general surgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes” in International Class 10.
In this case, the following goods in the application and registration are identical:
Medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, probes, electrodes, and handpieces for electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes
Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
In this case, the registration use(s) broad wording to describe “handpieces for electrosurgery” which presumably encompasses all goods of the type described, including applicant’s more narrow “disposable tools for surgical manipulation systems, namely, cutters, clamps, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; endoscopes”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Likewise, applicant’s broadly worded “surgical instruments being computerized surgical manipulation systems” presumably encompasses the registrant’s “handpieces for electrosurgery”. Id. The attached evidence from applicant’s website and www.intuitive.com consisting of surgical manipulation systems and surgical instruments or handpieces also demonstrates that surgical instruments or handpieces are included in surgical manipulation systems. Thus, applicant’s and registrant’s above-mentioned goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
Based on the foregoing, consumers encountering CANADY SMART OR STEALTH used for “medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, inert gas supply units, probes, electrodes, and handpieces for robotic electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for robotic electrosurgery; surgical instruments being computerized surgical manipulation systems; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, clamps, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors, suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; endoscopes” and CANADY PLASMA for “Medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, probes, electrodes, and handpieces for electrosurgery; high frequency electrosurgical argon generators and probes, handpieces and electrodes sold therewith; electrosurgical generators with argon capabilities for use in general surgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes” are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
OWNERSHIP OF CITED REGISTRATION
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.
(2) Submit copies of documents evidencing the chain of title.
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 3999419.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #10; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
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 mark in the referenced application. 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.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods and/or services may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate (suggested changes in bold):
Class 10: Medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical
generators, inert gas supply units, probes, electrodes, and handpieces for electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for
electrosurgery; surgical instruments being computerized surgical manipulation systems comprised of surgeon's console, master control, and immersive video display; disposable
tools for surgical manipulation systems, namely, cutters, clamps, elevators, gouges, knives, electrosurgical instruments, electrocautery instruments, laser instruments, ultrasound instruments, scrub
and biopsy brushes, clip appliers and clips, tack appliers and tacks, applicators, ligature carriers, needle holders, clamps {duplicate entry must be
deleted}, hemostats, graspers, curettes, instrument guides, ligature passing and knotting instruments, needles, scalpels, retractors, snares, stylets, forceps, dissectors, calipers, scissors,
suction and irrigation probes, saws, retainers, suturing apparatus, chisels and contractors, files, pliers, hammers, rasps, spatulas, and strippers; medical endoscopes
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.
MULTIPLE-CLASS APPLICATION – ADVISORY
(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). The application identifies goods that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. 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).
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.
VOLUNTARY DISCLAIMER OF REGISTRABLE MATTER – ADVISORY
Therefore, applicant may request to withdraw this disclaimer from the application. If applicant does not expressly request its withdrawal, the disclaimer will remain in the application and will be printed on the registration certificate.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Chioma (Bata) Oputa/
Examining Attorney
Law Office 103
(571) 272-5234
chioma.oputa@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.