Reconsideration Letter

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

 

 

Issue date:  June 11, 2020

 

 

Applicant’s request for reconsideration is denied.  See 37 C.F.R. §2.63(b)(3).  The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not:  (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue(s).  TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

Registration of the applied-for mark was refused pursuant to Trademark Act Section 2(d) for a likelihood of confusion with the mark in U.S. Registration No. 3056357; this refusal was made final in an Office action dated November 13, 2019.

 

Applicant seeks to register RELAY, for, as amended, “medical devices for use in arthroscopic hip procedures, namely, suture passers and excluding stents, vascular prostheses and thoracic stent grafts.”

 

The mark in cited registration is RELAY, for, “Medical devices, namely, stents, vascular prostheses and thoracic stent grafts.”

 

Specifically, applicant reiterates its arguments that the goods of the parties are dissimilar and travel in different trade channels, and that the relevant consumers are highly sophisticated.

 

In regards to applicant’s argument that the goods are dissimilar, applicant argues that its goods, as amended, “include a specialized suture passer for hip arthroscopy, while [r]egistrant’s goods include instruments for cardiac surgery,” and that applicant’s identification “[excludes] stents, vascular prostheses and thoracic stent grafts to further distinguish the [parties’ goods].”  Applicant further states that “[a]rthroscopic hip surgery and cardiac surgery are two very separate and specialized surgical fields,” that “[s]urgeons specializing in hip surgery do not conduct cardiac surgeries and vice versa,” and that “the instruments used in cardiac surgery are specific to the anatomy of the heart and surrounding vessels and instruments used in arthroscopic surgeries of  the hip are specific to the anatomy of the hip.”  Applicant provides no evidence to support these assertions.  Further, the examining attorney notes that the fact that the goods of the parties differ is not controlling in determining likelihood of confusion.  The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods.  In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.  The attached Internet evidence, consisting of excerpts of third-party webpages, shows that the goods of the applicant and registrant are made by the same entities under the same marks, and are sold through the same trade channels available to the same consumers.  See attached evidence from http://www.stryker.com, and http://www.bostonscientific.com.  Therefore, applicant’s and registrant’s goods are closely related for the purposes of determining a likelihood of confusion.  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).

 

Moreover, where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).  Therefore, applicant’s argument that the goods are sufficiently different so as to avoid a likelihood of confusion is unpersuasive.

 

In regards to applicant’s argument that the trade channels differ, applicant specifically argues that the trade channels different because the parties “both rely on sales representatives to make sales to consumers,” that each of the parties has its own sales representatives that “showcase its instruments” for its respective orthopedic or surgical procedures, and that because “it is typical for orthopedic doctors and surgeons (potential consumers) to focus their practice on one of the knee, hip, shoulder, or extremities, and never practice in another specialized field, such as cardiac surgery,” that “two separate trade channels exist for two distinct types of goods through [a]pplicant’s sales representatives and [r]egistrant’s sales representatives.”  The examining attorney notes that applicant has not provided any evidence to support these assertions.  Additionally, applicant has only accounted for one type of sales, that is, sales by in person sales representatives directly to medical practices.  However, additional trade channels, such as medical supply companies, sell both suture passers and stents.  See attached evidence from http://mms.mckesson.com/catalog?query=suture+passers, http://mms.mckesson.com/catalog?query=stents, http://www.amdnext.com/catalogsearch/result/?cat=0&q=suture+passers, and http://www.amdnext.com/catalogsearch/result/?cat=0&q=stents. Further, the examining attorney notes that neither the application nor the registration are restricted in terms of their trade channels.  The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration.  15 U.S.C. §1057(b).  In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).  Therefore, applicants argument that the trade channels are sufficiently distinct to avoid a finding of a likelihood of confusion is unpersuasive.

 

In regards to applicant’s argument that the relevant consumers are highly sophisticated, even if consumers of the compared goods and/or services could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the goods and/or services “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014).  Because the marks are identical, and because the goods are closely related and the trade channels are, at minimum, overlapping, the relative sophistication of the relevant consumers does not outweigh the other relevant factors in determining a likelihood of confusion.

 

Accordingly, the Section 2(d) refusal for a likelihood of confusion with U.S. Registration No. 3056357 made final in the Office action dated November 13, 2019 is maintained and continued. 

 

See TMEP §§715.03(a)(ii)(B), 715.04(a). 

 

If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal.  See TMEP §715.04(a).

 

If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board.  TMEP §715.03(a)(ii)(B).  Filing a request for reconsideration does not stay or extend the time for filing an appeal.  37 C.F.R. §2.63(b)(3); see TMEP §715.03(c). 

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@uspto.gov

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on June 11, 2020 for

U.S. Trademark Application Serial No. 88315554

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Michael FitzSimons/

Michael FitzSimons

Trademark Examining Attorney

Law Office 103

(571) 272-0619

michael.fitzsimons@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from June 11, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”