Response to Office Action

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)

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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

To the Commissioner for Trademarks:

Application serial no. 88249037 ROMEO(Standard Characters, see http://uspto.report/TM/88249037/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant responds as follows to the Office Action issued March 25, 2019. Registration is refused under Trademark Act Section 2(d), 15 U.S.C. ?1052(d), on grounds that applicant?s mark, when used on or in connection with the identified services, so resembles the marks in U.S. Registration Nos. 5,663,574 and 3,680,600 as to be likely to cause confusion, to cause mistake, or to deceive. For the following reasons, applicant requests reconsideration. Applicant has amended its statement of services in Class 35 to more clearly delineate the advertising services with which applicant?s mark will be used. In actual commerce, applicant and registrants are providing different types of services to highly sophisticated customers in distinct channels of trade, and therefore the marks do not have the same commercial impression and are not likely to be confused. When the distinct services and channels of trade are taken into account, the differences in appearance become significant. A. The services are very different Applicant?s current descriptions, as amended, are limited to services related to providing advertising for or medical services related to therapies and treatment for erectile dysfunction, namely: IC 035. Advertising and marketing services, namely, promoting the goods and services of others with respect to providing therapies and treatment for erectile dysfunction; doctor referrals with respect to providing therapies and treatment for erectile dysfunction. IC 044. Medical services, namely, providing therapies and treatment for erectile dysfunction To the relevant consumers in the medical field, applicant?s description ?therapies and treatment for erectile dysfunction? excludes the vast array of medical services. Applicant?s description is limited to the erectile dysfunction field, which is a unique specialty within the dozens of medical fields of practice. As far as applicant can determine, the services of the cited references are vastly different and have no connection whatsoever to the specialized field of treatment of erectile dysfunction. Based on Internet searches, applicant is unable to locate evidence that the owner of ROMEO DESIGN?, Romeo Partecipazioni S.P.A., is using the mark on anything, much less the services listed in U.S. Registration 5,663,574. However, if it is presumed that the registrant is using ROMEO DESIGN? on the services listed in US 5,663,574, then ROMEO DESIGN? is used on household and building related goods and services, such as home furnishings, home items, building construction, architecture and the like: IC 011. US 013 021 023 031 034. G & S: Lamps; chandeliers; bath tubs; lamp shades; lanterns for lighting; light diffusers; water fountains; ornamental fountains; showers; faucets; wash-hand basins being parts of sanitary installations; shower cubicles; hydromassage bath apparatus; sauna bath installations IC 020. US 002 013 022 025 032 050. G & S: Furniture; office furniture; beds; coatstands; deck chairs; divans; works of art of wood, wax, plaster or plastic; umbrella stands; interior textile window blinds; picture frames; pillows; magazine racks; bottle racks; jewellery organizer displays IC 021. US 002 013 023 029 030 033 040 050. G & S: Containers for household or kitchen use; bread boards; serving trays, namely, cabarets; cooking pots; boxes for dispensing paper towels for household use; non-electric candelabras; coffeepots, non-electric; coffee services; cocktail shakers; corkscrews, electric and non-electric; drinking glasses; dishes; works of arts of porcelain, ceramic, earthenware or glass; flower pots; vases; cutting boards for the kitchen; tea pots, non-electric; tea infusers; tea services; tea caddies; sugar bowls; salt cellars; perfume burners; vaporizers for perfume sold empty; pepper mills, hand-operated; napkin holders; decanters; ice buckets; ice cube molds; jugs; mosaics of glass, not for building IC 035. US 100 101 102. G & S: Advertising; business management; business management assistance; business management consultancy; business management and organization consultancy; business organization consultancy; business administration services; business management of hotels; business management assistance for industrial or commercial companies; consultancy services regarding business strategies; professional business consultancy; business efficiency expert services; personnel management consultancy; advisory services for business management; business appraisals; business supervision; business organization consultancy; commercial or industrial management assistance; book-keeping; compilation of statistics; outsourced administrative management for companies; business project management services for construction projects; relocation services for business; business project management IC 037. US 100 103 106. G & S: Construction consultancy; building construction; demolition of buildings; construction information; providing home repair information; furniture maintenance; swimming-pool maintenance; cleaning of buildings; plant maintenance; building maintenance and repair; building construction supervision; supervision of building repair IC 042. US 100 101. G & S: Architectural services; architectural consultancy; construction drafting; design of interior decor; interior design; dress designing; industrial design; research and development of new products for others; interior styling services; engineering feasibility studies; design feasibility studies; technical assessments; technical project planning; architectural design; civil engineering design services; architectural consultation; architectural and urban planning services; structural engineering services; design services; engineering drawing; design planning; quality control; engineering; surveying; urban planning; construction drafting; energy auditing Nothing in registrant?s listing has anything to do with medicine, much less therapies and treatment for erectile dysfunction. In view of applicant?s narrowing amendment to applicant?s statement of services, it is respectfully suggested that U.S. Registration 5,663,574 is no longer pertinent to the likelihood of confusion analysis because the services are completely unrelated. Applicant has found evidence that the owner of Linde Aktiengesellschaft Corporation is using REMEO? in a highly specialized area of medical care, namely ?integrated care path for long-term mechanically ventilated patients.? (please see Exhibit A). Cited U.S. Registration 3,680,600 for REMEO is registered for the following services in Class 44: ?health care services; home health care services; providing health care facilities for long and short term care.? In view of this statement, applicant submits that it is improper to characterize the registration as being merely for ?health care services.? In reality, Linde is using its mark on a much narrower aspect of health care services, namely an integrated care path for long term mechanically ventilated patients. Because applicant?s statement of services is not directed broadly to all medical services, but rather to a narrow subspecialty of medical services (erectile dysfunction), applicant respectfully submits that there is also no basis for concluding that the cited registrations are for the same types of services. Based on the respective statements of services, and taking into account the foregoing product information, it is respectfully submitted that applicant?s services are clearly differentiated from the services of the cited registrations. B. The relevant customers are highly sophisticated and not likely to be confused Applicant?s services circulate in a narrow segment of the medical channel of trade, namely to doctors who prescribe ROMEO? erectile dysfunction services for use on their patients. An important factor to consider is the sophistication of and the degree of care exercised by consumers who typically buy the services of applicant and registrant. Sophistication is important and often dispositive because sophisticated consumers may be expected to exercise greater care. Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 718 (Fed.Cir.1992). Applicant will market and sell its ROMEO? erectile dysfunction services to doctors and the hospitals and clinics they work for. Trademark precedent recognizes that doctors and surgeons constitute a ?highly intelligent and discriminating public.? U.S. Surgical Corp. v. Orris, Inc., 5 F.Supp. 2d 1201, 1210 (D. Kan. 1998); Warner-Hudnut, Inc. v. Wander Co., 47 C.C.P.A. 1172, 280 F.2d 435, 436 (C.C.P.A.1960); Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206-07, 220 USPQ 786, 791(1st Cir. 1983). In Hewlett-Packard Co. v. Human Performance Measurement, Inc., 23 USPQ2d 1390, 1396 (TTAB 1992), the T.T.A.B. recognized the high degree of sophistication of customers of medical equipment, such as those of applicant: In this regard, we further note that the respective goods of the parties are sophisticated medical equipment which would be selected with great care by purchasers familiar with the source or origin of the products. See In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985). Buyers of the parties' goods, as well as potential customers for the products, plainly are highly educated, sophisticated purchasers who know their equipment needs and would be expected to exercise a great deal of care in its selection. Given the deliberation involved in determining the suitability of particular medical instruments for specific patient care applications, and since customers and prospective purchasers typically deal directly with the parties in making their purchasing decisions, we believe that the parties' marks are not so similar that confusion as to the origin or affiliation of their medical instruments would be likely to occur. Id. at 1396. The customers of applicant?s ROMEO? erectile dysfunction services will be doctors and surgeons who specialize in erectile dysfunction. As such, the relevant customers are sophisticated, highly educated, and much less likely to be confused by the use of the marks ?ROMEO DESIGN? and ?REMEO? on services that are not related to applicant?s. Like all doctors, the doctors who will use and provide applicant?s ROMEO erectile dysfunction services are held to a high standard of professional care in the treatment of their patients. These doctors will therefore exercise a high level of care in selecting goods and services associated with the treatment of their patients. As noted above, there is no basis for concluding that registrant Romeo Partecipazioni is using ROMEO DESIGN in connection with medical services. Registrant Linde is using REMEO in a specialized medical service, namely an integrated care path for long-term mechanically ventilated patients. (Exhibit A) However, there is no basis for concluding that Linde?s services would be purchased by doctors specializing in erectile dysfunction. Doctors who do not specialize in erectile dysfunction are likewise held to a high standard of professional care in the treatment of their patients. Consequently, if specialists in other fields of medicine are purchasing registrant?s services, then it should also be assumed that such specialists will tend to exhibit sufficient sophistication and care to avoid inadvertently buying applicant?s ROMEO erectile dysfunction services. It is also important to note that in the medical field, trade names play a primary role in brand identification. Because doctors must be trained how to use and prescribe particular brands of medical devices and services, doctors typically establish an on-going commercial relationship with a particular medical device company or medical service provider, based on previous satisfaction and familiarity with products of the company. Thus, doctors who use erectile dysfunction services sold by applicant Aesthetic Management Partners are likely to identify such services by the trade name ?Aesthetic Management Partners,? and to rely upon Aesthetic Management Partners? trademarks to distinguish one type of applicant?s services from another. The heavy reliance on trade names make it highly unlikely that a doctor will confuse applicant?s products with those of registrant, or vice versa. In connection with the high degree of sophistication and high degree of care of the relevant consumers, it should also be noted that applicant?s ROMEO erectile dysfunction services are a high-end service. Applicant?s ROMEO erectile dysfunction services comply with governing standards, such as Food and Drug Administration regulations (see 21 CFR 820 et seq.), in order to ensure safe and effective treatment of patients. The cost of the services, together with the sophistication and care with which doctors prescribe the services for use on patients, make it highly unlikely that applicant?s services will be confused with those of registrant. C. Separate and Distinct Channels of Trade of the Respective Goods For the reasons discussed above, registrant Romeo Partecipazioni?s registered ROMEO DESIGN services for use in an entirely different channel of trade, namely household and building related goods and services, such as home furnishings, home items, building construction, architecture and the like. There is thus no basis whatever that the services of registrant and application will travel in the same channels of trade. While registrant Linde does use REMEO in a medical field, the actual channels by which the respective goods reach the market do not overlap. When parties sell their goods through separate and distinct channels of trade or distribution, confusion is unlikely. See McCormick & Co. v. B. Manischewitz Co., 206 F.2d 744, 98 USPQ 367 (6th Cir. 1953) (no confusion likely between spices and kosher foods); Telex Corp. v. Sound Ear, Inc., 169 USPQ 255 (TTAB 1971) (no likelihood of confusion between hearing aids and listening device for TVs and radios, even though both are used by people who are hard of hearing). Where the identification of goods is restricted to certain narrow channels of trade, an applicant can avoid a finding of likelihood of confusion with a registration for a similar mark for related goods. In re Shoe Works, Inc., 6 USPQ.2d 1890 (TTAB 1988) (no likely confusion was found between ?Palm Bay? for women?s shoes and the registered mark ?Palm Bay? for shorts and pants where applicant?s description of goods was sufficiently narrow). Applicant?s services will circulate in a narrow segment of the medical channel of trade, namely to doctors who prescribe ROMEO erectile dysfunction services for use on their patients. There is no basis for concluding that the services of applicant and registrant Linde reach the doctors and hospitals through the same channel of trade. The T.T.A.B. noted the distinctive nature of medical channels of trade in Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390, 1395 (T.T.A.B. 1991: Consequently, we concur with applicant that the fact that both parties sell their goods to hospitals, and thus share a common channel of trade, does not necessarily mandate a finding that the products are related and that confusion is likely. As applicant, quoting from Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 791(1st Cir. 1983), points out in its brief: "The 'hospital community' is not a homogeneous whole, but is composed of separate departments with diverse purchasing requirements, which, in effect, constitute different markets for the parties' respective products". The fact, therefore, that there is some overlap in the trade channels is not dispositive in this case. Even if the respective services somehow crossed paths in commerce (which applicant highly doubts would happen), the services are so dissimilar that there would be no likelihood of confusion, for the reasons discussed above. If the goods or services in question are not related or are marketed in such a way that they would not be encountered by the same persons in situations that would create the incorrect assumption that they originate from the same source, then, even if the marks are identical, confusion is not likely. Local Trademarks, Inc. v. Handy Boys, Inc., 16 USPQ.2d 1156 (TTAB 1990); Quartz Radiation Corp. v. Comm/Scope Co., 1 USPQ.2d 1668 (TTAB 1986). The test is whether consumers are likely to be confused, not whether the marks themselves are confusingly similar. Myrurgia, S.A. v. Comptoir de La Parfumerie S.A. Ancienne Maison Tschanz, 441 F.2d 673, 675, 169 USPQ 587, 588 (CCPA 1971); In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (the test is ?not whether people will confuse the marks but whether the marks will confuse people.?). In this case, there is no possibility that the marks will confuse consumers, because of the differences in channels of trade, the differences between the goods, and the sophistication and care of the relevant customers. D. Appearance of the Marks Applicant submits that in the context of the respective channels of trade and sophisticated customer bases, the difference in appearance between ROMEO and registrants? respective marks is significant to the likelihood of confusion analysis. As noted above, in view of applicant?s amendment, the fact that registrant Romeo Partecipazioni makes no reference to medical goods or services in its statements of goods and services appears to rule out reliance on ROMEO DESIGN as a basis for likelihood of confusion. However, to the extent that the Office may conclude that the registration remains relevant, applicant notes the following. Since registrant Romeo Partecipazioni is a design service company in the home and building area, the inclusion of the descriptive term ?DESIGN? in registrant?s mark ROMEO DESIGN presumably creates a distinct commercial impression in the mark as a whole to consumers of registrant?s home and building related design services. It seems reasonable to presume that if a consumer of such design services were somehow to run across the two marks in actual commerce, the design consumer would readily note the difference in appearance between ROMEO DESIGN and ROMEO, thus avoiding any likelihood of confusion. Turning to REMEO, while there are similarities in appearances between REMEO and ROMEO, there are also distinctions. Applicant does not agree with the Office?s position that the change from an ?E? to an ?O? will result in a slight difference in pronunciation. On the contrary, normal pronunciation is likely to immediately distinguish the appearance of the marks for most relevant consumers. In the real world, are the sophisticated medical purchasers of REMEO? integrated care paths for long-term mechanically ventilated patients truly going to ignore the distinction between REMEO and ROMEO when marketed on therapies and treatments for erectile dysfunction? When the differences in services, relevant customers, and channels of trade are taken into account, the differences in appearance between REMEO and ROMEO become enough to create materially distinct impressions. E. No Actual Confusion Although applicant has not yet marketed its ROMEO? erectile dysfunction services, applicant has strong reason to believe, based on its many years of experience in the highly specialized medical aesthetics field, that there will not be actual confusion between applicant?s ROMEO? erectile dysfunction services and any goods or services that do not travel in erectile dysfunction channels of trade, which would include Linde?s REMEO? integrated care paths for long-term mechanically ventilated patients. In actual commerce, confusion simply does not occur between applicant?s marks and those of non-medical companies, and there is thus no reason to anticipate or infer that actual confusion will arise in this instance. When absence of actual confusion is considered in light of the factors discussed above, it is respectfully submitted that there is no likelihood of confusion in the actual marketplace. CONCLUSION While applicant appreciates the overriding concern of preventing confusion among consumers as to the source of goods, there is no likelihood of confusion in the actual marketplace, for the reasons set forth above. Accordingly, applicant respectfully requests that the Office withdraw this refusal, and that applicant?s mark be published for opposition.

EVIDENCE
Evidence in the nature of Exhibit A - use of cited mark by registrant has been attached.
Original PDF file:
evi_451819925-20190925184018400070_._Ex_A_REMEO.pdf
Converted PDF file(s) ( 2 pages)
Evidence-1
Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 035 for Advertising and marketing services, namely, promoting the goods and services of others; doctor referrals
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Advertising and marketing services, namely, promoting the goods and services of others; Advertising and marketing services, namely, promoting the goods and services of others with respect to providing therapies and treatment for erectile dysfunction; doctor referrals; doctor referrals with respect to providing therapies and treatment for erectile dysfunctionClass 035 for Advertising and marketing services, namely, promoting the goods and services of others with respect to providing therapies and treatment for erectile dysfunction; doctor referrals with respect to providing therapies and treatment for erectile dysfunction
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Mark R. Crosby. Mark R. Crosby of AESTHETIC MANAGEMENT PARTNERS, INC., is located at

      SUITE 200
      2492 WALNUT AVENUE
      TUSTIN, California 92780
      US

The phone number is 901-260-2565.

The email address is ssentilles@walkcook.com

The applicants proposed attorney information: Mark R. Crosby. Other appointed attorneys are Shawn Sentilles. Mark R. Crosby of AESTHETIC MANAGEMENT PARTNERS, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 200
      2492 WALNUT AVENUE
      TUSTIN, California 92780
      United States
The docket/reference number is AMP-2.

The phone number is 901-260-2565.

The email address is ssentilles@walkcook.com

Mark R. Crosby submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: MARK R. CROSBY. MARK R. CROSBY of AESTHETIC MANAGEMENT PARTNERS, INC., is located at

      SUITE 200
      2492 WALNUT AVENUE
      TUSTIN, California 92780
      US

The phone number is 646-373-8515.

The email address is mark.crosby@ampgrowth.net; ssentilles@walkcook.com; lstclair@walkcook.com

The applicants proposed correspondence information: Mark R. Crosby. Mark R. Crosby of AESTHETIC MANAGEMENT PARTNERS, INC., is located at

      SUITE 200
      2492 WALNUT AVENUE
      TUSTIN, California 92780
      United States
The docket/reference number is AMP-2.

The phone number is 901-260-2565.

The email address is ssentilles@walkcook.com; mark.crosby@ampgrowth.net; lstclair@walkcook.com

SIGNATURE(S)
Response Signature
Signature: /Shawn Sentilles/     Date: 09/25/2019
Signatory's Name: Shawn Sentilles
Signatory's Position: Attorney for applicant

Signatory's Phone Number: 901-260-2565

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    MARK R. CROSBY
   AESTHETIC MANAGEMENT PARTNERS, INC.
   SUITE 200
   2492 WALNUT AVENUE
   TUSTIN, California 92780
Mailing Address:    Mark R. Crosby
   AESTHETIC MANAGEMENT PARTNERS, INC.
   SUITE 200
   2492 WALNUT AVENUE
   TUSTIN, California 92780
        
Serial Number: 88249037
Internet Transmission Date: Wed Sep 25 18:52:01 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XX-20190925185201998
075-88249037-61071f092ed090ca60366754a24
74be68b368b88586105f657f6294faa589a4-N/A
-N/A-20190925184018400070