To: | Conmed Corporation (pto@conmed.com) |
Subject: | U.S. Trademark Application Serial No. 88315554 - RELAY - C0568 T - Request for Reconsideration Denied - Return to TTAB |
Sent: | June 11, 2020 06:48:58 PM |
Sent As: | ecom103@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88315554
Mark: RELAY
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Correspondence Address: |
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Applicant: Conmed Corporation
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Reference/Docket No. C0568 T
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: June 11, 2020
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).
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.
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