To: | Amendia, Inc. (patents@spinalelements.com) |
Subject: | U.S. Trademark Application Serial No. 88250541 - TALON - TM0102A |
Sent: | October 11, 2019 12:24:08 PM |
Sent As: | ecom101@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88250541
Mark: TALON
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Correspondence Address:
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Applicant: Amendia, Inc.
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Reference/Docket No. TM0102A
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 11, 2019
Responsive to applicant’s communication received September 24, 2019.
Section 2(d) Refusal Continued - Based Solely on Reg. No. 4118099
Registration was refused under Section 2(d) of the Trademark Act based on a likelihood of confusion with Registration Numbers 2861177, 2035695, 3268708 and 4118099. Applicant’s arguments in support of registration have been closely evaluated. Based on those arguments, the Section 2(d) refusal to register applicant’s mark based on Reg. Nos. 2861177, 2035695 and 3268707 has been withdrawn. However, the refusal to register applicant’s mark under Section 2(d) of the Act based on Reg. No. 4118099 is continued.
Applicant asserts that the Office refusal to register its mark based on Reg. No. 4118099 should be withdrawn because applicant owns the assets of Omni Acquisition, Inc., the owner of Reg. No.4118099. Applicant has provided insufficient information that would allow the examiner to withdraw the refusal. If, for example, applicant evidence that Omni Acquisition, Inc. is a wholly owned subsidiary of applicant, then the refusal to register will be withdrawn.
If applicant has a different legal relationship with Omni Acquisition, Inc., applicant must show that the relationship is sufficient to overcome a likelihood of confusion. That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods in connection with which the trademarks are used, as well as a “unity of control” over use of the trademarks themselves. 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).
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 and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “unity of control” over the use of the trademarks and/or service marks. 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).
Pending applicant’s response of the above requested information, the Section 2(d) refusal is continued.
Similarity of Marks
Furthermore, the wording “LONG CANNULATED SYSTEM” in registrant’s mark has been disclaimed and as such is less significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). 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).
Similarity of Goods
In this case, the goods in the application and registration are virtually identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same. 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 are related.
For the above noted reasons, the refusal to register applicant’s mark under Section 2(d) of the Act is continued.
Attorney Information Required
To provide bar information. Applicant’s attorney should respond to this Office action by using the appropriate TEAS response form and provide his or her bar information in the “Attorney Information” page of the form, within the bar information section. See 37 C.F.R. §2.17(b)(1)(ii). Bar information provided in any other area of the form will be viewable by the public in USPTO records.
All other previously raised issues have been addressed and resolved.
Questions Regarding Office Action
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
/Russ Herman/
Examining Attrorney
Law Office 101
(571)272-9172
russ.herman@uspto.gov
RESPONSE GUIDANCE