To: | CyberMed, Inc. (kslefiletm@hdp.com) |
Subject: | U.S. Trademark Application Serial No. 88249896 - CORE1 - 15234-200196 |
Sent: | October 18, 2019 02:08:27 PM |
Sent As: | ecom109@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88249896
Mark: CORE1
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Correspondence Address:
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Applicant: CyberMed, Inc.
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Reference/Docket No. 15234-200196
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: October 18, 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.
A new refusal is added below.
A. Refusal to Register: Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5206915. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
For the reasons discussed below, the examining attorney concludes that confusion as to the source of goods and services is likely between the applicant's mark CORE 1 with design and the registrant's mark ONECORE for the goods and/or services listed in the application.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.[Reserved]
Similarity 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)); 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, the applicant’s mark(s) CORE 1 and design and the wording in the registered mark(s) ONECORE are similar in appearance and sound and would create the same general overall commercial impression among potential consumers.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The second part of the legal analysis involves comparing the goods to determine whether they are similar or related, and could cause a mistaken belief among potential purchasers that the goods come from a common source.
The applicant’s goods/services, namely “Implant fixture for dental purposes; implant bridges for dental purposes; dental instruments for use in implant surgery; implant screws taps for dental purposes; implant extenders for dental purposes; dental implants apparatus and instruments, namely, devices used to install dental implants; dental implant filling system, namely, implant abutments, implant bridges, implant fixtures, CT machines, intra-oral scanners, imaging devices, and measuring devices; dental apparatus; medical guidewires; membrane for dental purposes; dental instruments, namely, dentures and dental crowns; dental burs; drills for dental applications; dental foundation supports; dental milling machine; dental broaches; dental screws” are almost identical to registrant’s goods/services, namely “Artificial teeth; dental inlays and onlays; pins for artificial teeth; dental crowns; dental bridges; dental root post and implants; dental products and materials, namely, cutting and grinding discs for dental applications, tooth models and preformed artificial teeth for use in machining and manufacturing dental inlays, onlays, dental crowns, bridges, artificial teeth and dentures”. It is therefore quite likely that both applicant’s and registrant’s goods/services will travel through the same channels of trade to the same classes of purchasers.
In this case, the goods and/or services in the application and registration(s) are identical in part. Therefore, it is presumed that the channels of trade and class 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)). Thus, applicant’s and registrant’s goods and/or services are related.
The dental materials in class 005 are complimentary and also highly related.
The marks are very similar. The goods/services are identical. The similarities among the marks and the goods/services are so great as to create a likelihood of confusion among consumers. The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988). TMEP §§1207.01(d)(i).
B. Identification of Goods/Services
· International Class 010: Implant fixture for dental purposes; implant bridges for dental purposes; dental instruments for use in implant surgery; implant screws taps for dental purposes; implant extenders for dental purposes; dental implants apparatus and instruments, namely, devices used to install dental implants; dental implant filling system, namely, implant abutments, implant bridges, implant fixtures, CT machines, intra-oral scanners, imaging devices, and measuring devices; dental apparatus; medical guidewires; membrane for dental purposes; dental instruments, namely, dentures and dental crowns; dental burs; drills for dental applications; dental foundation supports; dental milling machine; dental broaches; dental screws
In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).
Applicant must specify the common commercial or generic name for the goods/services. If the goods/services have no common commercial or generic name, applicant must describe the nature of the goods/services as well as their main purpose, channels of trade, and the intended consumer(s).
Applicant may adopt the following identification of goods/services if accurate: See TMEP §1402.01
International Class 010: Implant fixture for dental purposes; implant bridges for dental purposes; dental instruments for use in implant surgery; implant screws taps for dental purposes; implant extenders for dental purposes; dental implants apparatus and instruments, namely, devices used to install dental implants {please give the common name for the device}; dental implant filling system, {comprised of} implant abutments, implant bridges, implant fixtures, CT machines, intra-oral scanners, imaging devices and measuring devices {give common name for the imaging and measuring device and what is being measured}; dental apparatus {please define with common name}; medical guidewires; membrane for dental purposes {define the membrane in this class}; dental instruments, namely, dentures and dental crowns; dental burs; drills for dental applications; dental foundation supports; dental milling machine; dental broaches; dental screws
Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
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.
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
/Rossman, William/
William M. Rossman
Examing Attorney
Law Office 109
571-272-9029
William.Rossman@uspto.gov
RESPONSE GUIDANCE