UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 4/9/2019

 

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.

 

SUMMARY OF ISSUES:

 

·       Section 2(d) Refusal – Likelihood of Confusion

·       Identification of Goods and Services

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4929587 and 4792730.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Applicant’s mark is DUO (in standard character form) for “Stethoscopes; digital stethoscopes; EKG machines; non-invasive medical apparatus and instruments for auscultation; non-invasive medical apparatus and instruments for monitoring, recording, reproducing and electronically transmitting information indicative of heart rate, heart sounds, cardiac electrical signals and heart function; non-invasive medical apparatus and instruments for recording and electronically transmitting cardiac measurements to remote computing devices for cardiac analysis, namely, application of machine learning-based diagnostic and classification techniques; non-invasive heart monitors” in International Class 010. Registrants’ marks are CLICKLINE DUO in U.S. Registration No. 4929587 (also in standard character form) for multiple classes, with the relevant class being International Class 010 - “Aerosol dispensers for medical purposes; acupuncture needles; medical apparatus for analyzing the results of endoscopic examinations; apparatus for artificial respiration; apparatus and installations for the production of X-rays, for medical purposes; nursing appliances, namely, intubation blades; medical apparatus for the treatment of deafness; body rehabilitation apparatus for medical purposes; microdermabrasion apparatus; instrument cases fitted for medical instruments and for use by doctors; respirators for artificial respiration; babies' bottles; basins for medical purposes; receptacles for applying medicines, namely medical fluid injectors and infusers; teething rings; blood testing apparatus; bougies; hernia bandages; artificial breasts; incubators for medical purposes; incubators for babies; surgical apparatus and instruments for use in general and endoscopic surgery; thread, surgical; surgical implants comprising artificial material; surgical cutlery; suture needles; surgical sponges; mirrors for surgeons; suture materials; defibrillators; MRI and medical imaging diagnostic apparatus; dialyzers; drainage tubes for medical purposes; insufflators for medical purposes; ice bags for medical purposes; bandages, elastic; electric acupuncture instruments; electrodes for medical use; electrocardiographs; tips for crutches for invalids; finger guards for medical purposes; feeding bottle teats; dental burs; galvanic belts for medical purposes; galvanic therapeutic appliances; gastroscopes; uterine syringes; obstetric apparatus for cattle; obstetric surgical instruments and apparatus; surgical forceps; hearing protectors, namely, ear plugs for medical use; physiotherapy apparatus, namely, manually operated exercise equipment for physical therapy purposes; appliances for washing body cavities; plaster bandages for orthopaedic purposes; belts for medical purposes; orthopaedic belts; hair prostheses; hematimeters; gloves for medical purposes; urinals; urethral probes; urethral probe syringes; invalids' hoists; hot air vibrators for medical purposes; blankets, electric, for medical purposes; heating cushions, electric, for medical purposes; heart pacemakers; hearing aids for the deaf; ear trumpets being hearing aids; corsets for medical purposes; corn knives, namely, in the nature of surgical blades; syringes for injections; inhalers; injectors for medical purposes; douche bags; enema apparatus for medical purposes; cannulae; castrating pincers; surgical catgut; catheters; orthopedic cushions for medical purposes; pads for preventing pressure sores on patient bodies; surgical compressors; soporific pillows for insomnia; stockings for varices for medical purposes; ambulance stretchers; draw-sheets for sick beds; crutches; artificial eyes; artificial limbs; artificial skin for surgical purposes; artificial jaws; lenses for surgical implantation; artificial teeth; lamps for medical purposes, namely, surgical operating lamps; lancets; lasers for medical purposes; abdominal belts; abdominal corsets; spoons for administering medicine; air pillows for medical purposes; air cushions for medical purposes; air mattresses, for medical purposes; masks for use by medical personnel; massage apparatus; esthetic massage apparatus; gloves for massage; childbirth mattresses; medical apparatus and instruments for use in minimally invasive surgery; medical guidewires; physical exercise apparatus, for medical purposes; knives for surgical purposes; breast pumps; umbilical belts; commode chairs; needles for medical purposes; anaesthetic delivery apparatus; anaesthetic masks; contraceptives, non-chemical, namely, intra-uterine contraceptive devices; ear picks; ear plugs for medical purposes; clothing especially for operating rooms, namely, medical wearing apparel in the nature of scrub tops and pants; operating tables; surgical drapes; ophthalmometers; ophthalmoscopes; orthopedic articles, namely, implants of artificial material; supportive bandages; knee bandages, orthopedic; orthopedic footwear; orthopaedic soles; pessaries; balling guns for theraputic purposes; condoms; pulse meters; pumps for medical purposes, namely infusion pumps for delivering measured amounts of solutions into the blood stream over time; quartz lamps for medical purposes; radiological apparatus for medical purposes; fumigation apparatus for medical purposes; X-ray apparatus for medical purposes; X-ray photographs for medical purposes; X-ray tubes for medical purposes; radiology screens for medical purposes; radium tubes for medical purposes; saws for surgical purposes; feeding bottles; feeding bottle valves; scissors for surgery; splints, surgical; slings; babies' pacifiers; cupping glasses; arch supports for boots or shoes for the purpose of correcting flat feet; protection devices against X-rays, for medical purposes namely, radiation shields for protecting patients undergoing radiation procedures; maternity support belts for medical purposes; armchairs for medical or dental purposes; love dolls; scalpels; probes for medical purposes; containers especially made for medical waste; hydrostatic beds, specially made for medical purposes; cases fitted for medical instruments; furniture especially made for medical purposes; spirometers; syringes for medical purposes; spittoons for medical purposes; hygienic basins for medical purposes; stents; sterile sheets, surgical; stethoscopes; boots for medical purposes; hot air therapeutic apparatus; thermo-electric compresses; thermal packs for first aid purposes; thermometers for medical purposes; stretchers, wheeled; trocars; droppers for medical purposes, sold empty; dropper bottles for medical purposes, sold empty; filters for ultraviolet rays, for medical purposes; ultraviolet ray lamps for medical purposes; incontinence sheets; hypogastric belts; abdominal pads; urological apparatus and instruments, namely, urological imaging systems and urological surgical instruments; vaginal syringes; vaporizers for medical purposes; veterinary apparatus and instruments, namely, instruments for veterinary surgery; bed vibrators; vibromassage apparatus; hydrostatic beds for medical purposes; water bags for medical purposes; resuscitation apparatus; brushes for cleaning body cavities; clips, surgical; dental surgical apparatus and instruments; electric dental apparatus, namely, dental drills; mirrors for dentists; dentists' armchairs; dentures; orthodontic appliances; pins for artificial teeth; sprayers for medical purposes; tongue scrapers; strait jackets” in International Class 010 and TESLA DUO in U.S. Registration No. 4792730 (in stylized form) for multiple classes, with the relevant class being International Class 010 – “surgical instruments and apparatus, especially used for analysis of vital parameters; medical devices, namely, pulse oximeters; medical instruments to measure blood pressure, cardiac output and other physiological and cardiovascular parameters; surgical instruments and apparatus” in International Class 010.

 

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.

 

Comparison 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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

1. CLICKLINE DUO in U.S. Registration No. 4929587

 

In this case, applicant’s mark, DUO, is highly similar in sound, appearance, meaning and overall commercial impression to registrant’s mark, CLICKLINE DUO. Both marks contain the identical wording DUO. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

2. TESLA DUO in U.S. Registration No. 4792730

 

In this case, applicant’s mark, DUO, is highly similar in sound, appearance, meaning and overall commercial impression to registrant’s mark, TESLA DUO. Both marks contain the identical wording DUO. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.

 

Comparison of the Goods and/or Services

 

The applicant’s goods and/or services are identified as “Stethoscopes; digital stethoscopes; EKG machines; non-invasive medical apparatus and instruments for auscultation; non-invasive medical apparatus and instruments for monitoring, recording, reproducing and electronically transmitting information indicative of heart rate, heart sounds, cardiac electrical signals and heart function; non-invasive medical apparatus and instruments for recording and electronically transmitting cardiac measurements to remote computing devices for cardiac analysis, namely, application of machine learning-based diagnostic and classification techniques; non-invasive heart monitors” in International Class 010.

 

1. CLICKLINE DUO in U.S. Registration No. 4929587

 

The registrant’s goods and/or services are identified as “Aerosol dispensers for medical purposes; acupuncture needles; medical apparatus for analyzing the results of endoscopic examinations; apparatus for artificial respiration; apparatus and installations for the production of X-rays, for medical purposes; nursing appliances, namely, intubation blades; medical apparatus for the treatment of deafness; body rehabilitation apparatus for medical purposes; microdermabrasion apparatus; instrument cases fitted for medical instruments and for use by doctors; respirators for artificial respiration; babies' bottles; basins for medical purposes; receptacles for applying medicines, namely medical fluid injectors and infusers; teething rings; blood testing apparatus; bougies; hernia bandages; artificial breasts; incubators for medical purposes; incubators for babies; surgical apparatus and instruments for use in general and endoscopic surgery; thread, surgical; surgical implants comprising artificial material; surgical cutlery; suture needles; surgical sponges; mirrors for surgeons; suture materials; defibrillators; MRI and medical imaging diagnostic apparatus; dialyzers; drainage tubes for medical purposes; insufflators for medical purposes; ice bags for medical purposes; bandages, elastic; electric acupuncture instruments; electrodes for medical use; electrocardiographs; tips for crutches for invalids; finger guards for medical purposes; feeding bottle teats; dental burs; galvanic belts for medical purposes; galvanic therapeutic appliances; gastroscopes; uterine syringes; obstetric apparatus for cattle; obstetric surgical instruments and apparatus; surgical forceps; hearing protectors, namely, ear plugs for medical use; physiotherapy apparatus, namely, manually operated exercise equipment for physical therapy purposes; appliances for washing body cavities; plaster bandages for orthopaedic purposes; belts for medical purposes; orthopaedic belts; hair prostheses; hematimeters; gloves for medical purposes; urinals; urethral probes; urethral probe syringes; invalids' hoists; hot air vibrators for medical purposes; blankets, electric, for medical purposes; heating cushions, electric, for medical purposes; heart pacemakers; hearing aids for the deaf; ear trumpets being hearing aids; corsets for medical purposes; corn knives, namely, in the nature of surgical blades; syringes for injections; inhalers; injectors for medical purposes; douche bags; enema apparatus for medical purposes; cannulae; castrating pincers; surgical catgut; catheters; orthopedic cushions for medical purposes; pads for preventing pressure sores on patient bodies; surgical compressors; soporific pillows for insomnia; stockings for varices for medical purposes; ambulance stretchers; draw-sheets for sick beds; crutches; artificial eyes; artificial limbs; artificial skin for surgical purposes; artificial jaws; lenses for surgical implantation; artificial teeth; lamps for medical purposes, namely, surgical operating lamps; lancets; lasers for medical purposes; abdominal belts; abdominal corsets; spoons for administering medicine; air pillows for medical purposes; air cushions for medical purposes; air mattresses, for medical purposes; masks for use by medical personnel; massage apparatus; esthetic massage apparatus; gloves for massage; childbirth mattresses; medical apparatus and instruments for use in minimally invasive surgery; medical guidewires; physical exercise apparatus, for medical purposes; knives for surgical purposes; breast pumps; umbilical belts; commode chairs; needles for medical purposes; anaesthetic delivery apparatus; anaesthetic masks; contraceptives, non-chemical, namely, intra-uterine contraceptive devices; ear picks; ear plugs for medical purposes; clothing especially for operating rooms, namely, medical wearing apparel in the nature of scrub tops and pants; operating tables; surgical drapes; ophthalmometers; ophthalmoscopes; orthopedic articles, namely, implants of artificial material; supportive bandages; knee bandages, orthopedic; orthopedic footwear; orthopaedic soles; pessaries; balling guns for theraputic purposes; condoms; pulse meters; pumps for medical purposes, namely infusion pumps for delivering measured amounts of solutions into the blood stream over time; quartz lamps for medical purposes; radiological apparatus for medical purposes; fumigation apparatus for medical purposes; X-ray apparatus for medical purposes; X-ray photographs for medical purposes; X-ray tubes for medical purposes; radiology screens for medical purposes; radium tubes for medical purposes; saws for surgical purposes; feeding bottles; feeding bottle valves; scissors for surgery; splints, surgical; slings; babies' pacifiers; cupping glasses; arch supports for boots or shoes for the purpose of correcting flat feet; protection devices against X-rays, for medical purposes namely, radiation shields for protecting patients undergoing radiation procedures; maternity support belts for medical purposes; armchairs for medical or dental purposes; love dolls; scalpels; probes for medical purposes; containers especially made for medical waste; hydrostatic beds, specially made for medical purposes; cases fitted for medical instruments; furniture especially made for medical purposes; spirometers; syringes for medical purposes; spittoons for medical purposes; hygienic basins for medical purposes; stents; sterile sheets, surgical; stethoscopes; boots for medical purposes; hot air therapeutic apparatus; thermo-electric compresses; thermal packs for first aid purposes; thermometers for medical purposes; stretchers, wheeled; trocars; droppers for medical purposes, sold empty; dropper bottles for medical purposes, sold empty; filters for ultraviolet rays, for medical purposes; ultraviolet ray lamps for medical purposes; incontinence sheets; hypogastric belts; abdominal pads; urological apparatus and instruments, namely, urological imaging systems and urological surgical instruments; vaginal syringes; vaporizers for medical purposes; veterinary apparatus and instruments, namely, instruments for veterinary surgery; bed vibrators; vibromassage apparatus; hydrostatic beds for medical purposes; water bags for medical purposes; resuscitation apparatus; brushes for cleaning body cavities; clips, surgical; dental surgical apparatus and instruments; electric dental apparatus, namely, dental drills; mirrors for dentists; dentists' armchairs; dentures; orthodontic appliances; pins for artificial teeth; sprayers for medical purposes; tongue scrapers; strait jackets” in International Class 010.

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

In this case, both applicant and registrant provide stethoscopes. 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(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)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

2. TESLA DUO in U.S. Registration No. 4792730

 

The registrant’s goods and/or services are identified as “surgical instruments and apparatus, especially used for analysis of vital parameters; medical devices, namely, pulse oximeters; medical instruments to measure blood pressure, cardiac output and other physiological and cardiovascular parameters; surgical instruments and apparatus” in International Class 010.

 

Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registration uses broad wording to describe medical instruments to measure cardiac output and other cardiovascular parameters, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow non-invasive medical apparatus and instruments for monitoring, recording, reproducing and electronically transmitting information indicative of heart rate, heart sounds, cardiac electrical signals and heart function, non-invasive medical apparatus and instruments for recording and electronically transmitting cardiac measurements to remote computing devices for cardiac analysis, and non-invasive heart monitors.  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 goods and/or services are related.

 

The marks are similar in sound, appearance, meaning and overall commercial impression and the goods and/or services are closely related. It is likely that consumers will mistakenly believe the goods and/or services emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION OF GOODS AND/OR SERVICES

 

The identification of goods and/or services is indefinite and must be clarified because it could include goods and/or services in other international classes.  See TMEP §1402.01.  In addition, it appears that some of the goods and/or services are misclassified. Notations concerning unacceptable wording are specified in the suggestion below.

 

For example, applicant must amend the identification to specify the common commercial or generic name of the goods and/or services. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose and its intended uses. See id.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language. See id.

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Applicant should note that any wording in bold, in italics, underlined and/or in ALL CAPS below offers guidance and/or shows the changes being proposed for the identification of goods and/or services. If there is wording in the applicant’s version of the identification of goods and/or services which should be removed, it will be shown with a line through it such as this: strikethrough. When making its amendments, applicant should enter them in standard font, not in bold, in italics, underlined and/or in ALL CAPS.

 

Applicant may adopt the following wording, if accurate:  

 

International Class 010: Stethoscopes; digital stethoscopes; EKG machines; non-invasive medical apparatus and instruments, NAMELY, ________{specify type, e.g., stethoscopes} for auscultation; non-invasive medical apparatus and instruments, NAMELY, ________{specify type, e.g., digital stethoscopes} for monitoring, recording, reproducing and electronically transmitting information indicative of heart rate, heart sounds, cardiac electrical signals and heart function; non-invasive medical apparatus and instruments, NAMELY, ________{specify type, e.g., digital stethoscopes}  for recording and electronically transmitting cardiac measurements to remote computing devices for cardiac analysis USING, namely application of machine learning-based diagnostic and classification techniques; non-invasive heart monitors

 

Additions Not Allowed: Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

On-line Acceptable Identification of Goods and Services Manual Information: 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.  

 

RESPONSE GUIDELINES

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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. 

 

/Alison F. Pollack/

Alison F. Pollack

Trademark Examining Attorney

Law Office 106

571-272-4592

alison.pollack@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 4/9/2019 FOR U.S. APPLICATION SERIAL NO. 88276906

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 4/9/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.