| To: | U.S. Patent Innovations, LLC (info@24ipusa.com) |
| Subject: | U.S. Trademark Application Serial No. 88206818 - CANADY SMART OR STEALTH - 9101.100 |
| Sent: | August 23, 2019 02:33:57 PM |
| Sent As: | ecom103@uspto.gov |
| Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88206818
Mark: CANADY SMART OR STEALTH
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Correspondence Address:
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Applicant: U.S. Patent Innovations, LLC
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Reference/Docket No. 9101.100
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 23, 2019
INTRODUCTION
This Office action is in response to applicant’s communication filed on July 29, 2019.
In a previous Office action(s) dated February 4, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: (1) Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. Applicant was also advised that pending U.S. Application Serial No. 88014090 may present a bar to registration based on a likelihood of confusion under Trademark Act Section 2(d). In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided. See TMEP §§713.02.
Further, applicant’s arguments in response to the refusal under Trademark Act Section 2(d) have been considered and found unpersuasive for the reasons set forth below. Accordingly, the refusal under Trademark Act Section 2(d) is maintained and continued. See TMEP §713.02.
Finally, upon further review of the application, the consent statement by Jerome Canady appears to be deficient in that the consent is provided to U.S. Medical Innovations, LLC and not the applicant, U.S. Patent Innovations, LLC. This raises a new issue requiring further clarification. The trademark examining attorney apologizes for any inconvenience caused.
The following is a SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Based on applicant’s response, the refusal under Trademark Act Section 2(d) is MAINTAINED and CONTINUED.
Applicant’s mark is CANADY SMART OR STEALTH in standard character form for, as amended, “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 comprised of surgeon's console, master control, and immersive video display; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, 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; medical 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
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 previously 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., 903 F.3d 1297, 1305, 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, legally identical goods. Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
RELATEDNESS OF THE GOODS
Applicant has amended its identification of goods as follows: “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 comprised of surgeon's console, master control, and immersive video display; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, 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; medical 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 registration use(s) broad wording to describe “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”, which presumably encompasses all goods of the type described, including applicant’s more narrow “medical and surgical apparatus and instruments for use in general surgery, namely, electrosurgical generators, probes, electrodes, and handpieces for robotic electrosurgery; medical devices, namely, flexible probes, in particular endoscopic and bronchoscopic probes for robotic electrosurgery; surgical instruments being disposable tools for surgical manipulation systems, namely, cutters, 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; medical 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). Thus, applicant’s and registrant’s 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 and/or services 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)). Thus, applicant’s and registrant’s aforementioned goods are related.
Further, the Internet evidence attached to the previous Office action demonstrated that the same entity commonly produces inert gas supply units and electrosurgical generators, and markets these goods under the same mark. 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).
APPLICANT’S ARGUMENTS
Applicant does not argue against the trademark examining attorney’s assertion that the applied-for mark, CANADY SMART OR STEALTH, is likely to be confused with the registered mark, CANADY PLASMA. Instead, applicant argues that U.S. Medical Innovations, LLC, the owner of the cited registration, is a subsidiary of applicant. In sum, applicant indicates that it has a legal relationship with the registrant(s) in the cited registration(s). However, a legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.” That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and a “unity of control” over the use of the trademarks and/or service marks. See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §1201.07.
Unity of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity. See TMEP §1201.07(b)(i)-(ii). Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another. See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii). It is additionally presumed when, absent contradictory evidence, applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership. TMEP §1201.07(b)(ii).
However, in most other situations, additional evidence is required to show unity of control. For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source. See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii).
In this case, applicant has stated that the registrant is applicant’s subsidiary company, however, it is unclear from the record whether registrant is a wholly owned subsidiary of applicant.
Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties. In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods in connection with which the trademarks are used, and the parties’ “unity of control” over the use of the trademarks. See TMEP §1201.07(b)(i)-(iii). This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1). However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified. TMEP §1201.07(b)(i).
CONCLUSION
Based on the foregoing, consumers encountering CANADY SMART OR STEALTH and CANADY PLASMA, for legally identical and closely related goods, are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Applicant did not claim ownership of the prior-filed application referenced in the previous Office action and did not otherwise explain its relationship with Canady Robotics. Although the website attached to applicant’s response lists Canady Robotics as a subsidiary of applicant, the evidence does not indicate that Canady Robotics is a wholly owned subsidiary of applicant, and without such an assertion, for the reasons discussed above, an additional explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods in connection with which the marks are used and the parties’ “unity of control” over the use of the marks are required.
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.
OWNERSHIP OF CITED REGISTRATION AND POTENTIALLY CONFLICTING APPLICATION
(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).
Applicant may provide evidence of ownership of the mark(s) by satisfying one of the following:
(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 Application Serial No(s). 88014090.” 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, check the box for “Miscellaneous Statement” and write in the free form text field for the “Miscellaneous Statement” that “Applicant is the owner of Application Serial No(s). 88014090,” inserting the relevant application serial number(s); 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).
DEFICIENT CONSENT STATEMENT
The applied-for mark includes the surname of the following individual: Jerome Canady, M.D. Although the application includes a written consent personally signed by this individual, the consent statement is deficient because it is for the wrong party. Specifically, the consent statement details U.S. Medical Innovations, LLC as the party to whom consent is given, however, the applicant is U.S. Patent Innovations, LLC. Because the individual(s) named in the mark did not sign the application and the application did not include a proper written consent, applicant must provide a proper written consent to register the name(s). See 15 U.S.C. §1052(c); TMEP §§813.01(a)-(b), 1206.04(a), 1206.05.
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.
How to respond. Click to file a response to this nonfinal Office action
Chioma (Bata) Oputa
Examining Attorney
Law Office 103
571-272-5234
chioma.oputa@uspto.gov
RESPONSE GUIDANCE