TEAS Petition to Revive Abandon Applic

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88366498 SIROS(Standard Characters, see http://uspto.report/TM/88366498/mark.png) has been amended as follows: PETITION Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Madam: In response to the above referenced application to the First Office Action of the Patent and Trademark Office (the ?PTO?) dated June 23, 2019, please consider the following remarks. The Examiner has indicated that she believes that there may be a likelihood of confusion between the Applicant?s mark and the marks shown in Registration Nos. 5027374 and 5402972. Reconsideration of this position is respectfully requested. In the Office Action, the Examiner states that not all of the Du Pont factors need be relevant and that she relies on two key considerations, similarity of the marks and similarity or relatedness of the 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. Applicant relies on In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016)(citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP ?1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP ?1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int?l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP ?1207.01, (a)(vi). Applicant agrees that the words have only one letter difference, but disagrees that the terms are pronounced the same. Applicant?s trademark is pronounced S EH R OH S while the Registrant?s trademark is pronounced S EYE ROSE. The Examiner further points out that ?they need only be ?related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.? Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP ?1207.01(a)(i).? Applicant appreciates the Examiner?s views, but disagrees with the application. I. Similarity of the Mark: 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 or services of the applicant and registrant.? See 15 U.S.C points out that ?the issue is whether the marks create the same overall impression. Visual information Institute v. Vicon Industries, Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general, rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). It is Applicant?s contention that there is sufficient difference between the marks so that confusion is not likely. Applicant?s mark has a commercial impression that is distinctive from the cited registered mark. The fact that the Applicant?s mark is a different word, with different spellings and the fact that there is a logo associated with Registrant?s mark cannot be dismissed as being merely commercially non-relevant added to Applicant?s mark. See ConAgra, Inc. v. Saavedra, 4 U.S.P.Q.2d 1245 (TTAB 1987) (stating that PATIO for Mexican foods does not create the same commercial impression asTAPATIO for sauce). Indeed, the marks must be analyzed in their entirety before a determination is made that the two marks could be confusingly similar. Opryland U.S.A Inc. v. Great American Music Show, Inc., 970 F.2d 847, 851, 23 U.S.P.Q.2d 1471 (Fed. Cir. 1992); In re Bed & Breakfast Registry, 791 F.2d 157, 159, 229 U.S.P.Q.2d. 1471 (Fed. Cir. 1992); In re Broadway Chicken, Inc., 38 U.S.P.Q.2d 1559 (TTAB 1996). The courts and the Trademark Trial and Appeal Board (the ?TTAB?) have found consistently that where the common portion of the mark is not particularly distinct, overall differences between the mark are sufficient to distinguish the marks in the minds of consumers. See, e.g., Malaro v. Pfizer, Inc., 214 U.S.P.Q. 645, 648 (TTAB 1982) (finding marks SILK and SILKSTICK, both for cosmetic, beauty care and related products, distinguishable); Standard Barnds, Inc. v. Peters, 191 U.S.P.Q 168, 172 (finding marks CORN-ROYAL and ROYAL, both for butter and margarine, distinguishable); Industrial Adhesive Co. v. Borden, Inc., 218 U.S.P.Q. 945, 951-52 (TTAB 1983) (finding marks BOND-PLUS and WONDER BOND PLUS, both for adhesives, distinguishable); Alpha Industries v. Alpha Steel Tubes and Shapes, Inc., 616 F.2d. 440, 205 U.S.P.Q. 981 (9th Cir. 1980) (finding marks ALPHA for steel tube making and cutting equipment, and ALPHA STEEL or ALPHA STEEL TUBE, for steel tubes and shapes, distinguishable); Plus Prods. v. Star-Kist foods, Inc., 220 U.S.P.Q. 541, 544 (TTAB 1983) (finding marks PLUS, for dietary supplements, and MEAT PLUS for animal dietary supplements, distinguishable); Basic Vegetable Prods., Inc. v. General Foods Corp., 165 U.S.P.Q. 781, 784 (TTAB 1970) (finding marks MAGIC and SOUR MAGIC, both for food products, distinguishable); and Murray Corp. of America v. Red Spot Paint and Varnish Co., 280 F.2d 158, 126 U.S.P.Q. 390 (CCPA 1960) (finding marks EASY and EASYTINT, both for paint, distinguishable). In her Office Action, the Examiner points out that the marks are similar because ?the marks are comprised of a single term. There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP ?1207.01(b)(iv). The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof?ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP ?1207.01(b)(iv). The marks also share a similar meaning and overall commercial impression; the slight differences in spelling are not sufficient to distinguish the marks.? Applicant disagrees. It is the Examiner?s opinion that they both look similar because they both begin include S _ ROS with the only difference being the Y in Registrant?s mark and the I in Applicant?s mark. In fact, the fact that the Applicant?s mark is spelled SIROS (without the i) creates a distinct commercial impression from the cited mark SYROS (stylized) (which has a y, does not look the same as SIROS. Furthermore, the long standing practice of the PTO has been to permit the co-existence of similar marks for similar goods or services ?where the remaining portions of the marks are sufficient to distinguish between the mark. See In re Hamilton Bank, 222 U.S.P.Q. 174, 177 (TTAB 1984). In the instant case, the addition of the logo in one of the cited trademarks, and the fact that the words are spelled and pronounced differently makes the marks so distinctive from one another so that there is no likelihood of confusion. II. Description of Services. In this response, the Applicant has further limited the goods to medical devices to treat liver cancer. Registrant?s services are not medical devices, but rather pharmaceuticals. Although both include medically related goods, there is no other way in which they are similar. Registrant provides pharmaceuticals. Applicant provides medical devices. There is absolutely no chance of confusion. Applicant has amended the description of services to ensure that the line of distinction is clearer. III. Channels of Trade. Dupont provided seven elements to review when determining confusion. The Examiner only reviewed 2, and of those 2, relied heavily on only 1. If the Examiner delved further, to examine the channels of trade, she would see that a consumer of Registrant?s services would be seeking medicine and not a device. The Registrant?s customers would be doctors and other medical services providers who are seeking medication to assist their patients with certain ailments. Conversely, although Applicant?s customers will be medical professionals, they would not be seeking medications. Rather, they would already understand the medications, and would be seeking to purchase a device to deliver the medication to the patient. These are not inexpensive products and the consumers ould not be easily confused as they seek to purchase both from the Applicant and the Registrant. This leads me to the next element, the sophistication of the consumer. IV. Consumer Sophistication. As discussed above, potential clients of both Registrant and Applicant are sophisticated in that they will conduct significant research before purchasing services from either company. A client seeking Registrant?s medications would immediate realize that Applicant is not providing pharmaceuticals. Applicant?s medical devices will not be mistakenly purchased, thinking that pharmaceuticals were purchased. The same holds true with Applicant?s clients. Applicant?s clients will not mistakenly purchase a device, thinking they purchased medication. In the end, the issue is whether there?s a likelihood of confusion between the two marks. Given that the marks are visually different, cover different goods/services and travel in separate channels of trade, combined with the fact that the clients are sophisticated, indicates that there is no likelihood of confusion and therefore, both marks should be able to co-exist on the register. Reconsideration of the application is respectfully requested. In light of the foregoing, it is submitted that this application is in condition for publication and such action is requested. Respectfully submitted.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical devices for use in treating or diagnosing Cancer and Acute and Chronic Devastating Diseases and Conditions beyond Cancer; Medical devices for use in treating Cancer and Acute and Chronic Devastating Diseases and Conditions beyond Cancer; Medical devices, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time; Medical devices, namely, radiation devices in the nature of ultraviolet, visible, or infra-red light boxes for counteracting the effects of viruses, bacteria and pathogens in the blood and blood components; Medical apparatus and units for dosage, measuring and monitoring, namely, drug delivery devices and systems; Medical apparatus, namely, infusion and injection devices for administering drugs; Diagnostic apparatus for the detection of cancer; Implantable radiation therapy devices consisting of delivery agents consisting of compounds that facilitate delivery of a wide range of pharmaceuticals; Implantable radiation therapy devices consisting of radioactive seeds with or without a bioabsorbable carrier assembly; Injection device for pharmaceuticals; Medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing; Medical apparatus for detecting cancer; Medical apparatus for introducing pharmaceutical preparations into the human body; Medical device for detecting cancer; Medical device for treating cancer; Medical diagnostic apparatus for detecting cancer; Medical diagnostic apparatus for testing Cancer and Acute and Chronic Devastating Diseases and Conditions beyond Cancer
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Medical devices for use in treating or diagnosing Cancer and Acute and Chronic Devastating Diseases and Conditions beyond Cancer; Medical devices for use in treating or diagnosing liver cancer; Medical devices for use in treating Cancer and Acute and Chronic Devastating Diseases and Conditions beyond Cancer; Medical devices for use in treating liver cancer; Medical devices, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time; Medical devices, namely, radiation devices in the nature of ultraviolet, visible, or infra-red light boxes for counteracting the effects of viruses, bacteria and pathogens in the blood and blood components; Medical apparatus and units for dosage, measuring and monitoring, namely, drug delivery devices and systems; Medical apparatus, namely, infusion and injection devices for administering drugs; Diagnostic apparatus for the detection of cancer; Diagnostic apparatus for the detection of liver cancer; Implantable radiation therapy devices consisting of delivery agents consisting of compounds that facilitate delivery of a wide range of pharmaceuticals; Implantable radiation therapy devices consisting of delivery agents consisting of compounds that facilitate delivery of liver cancer fighting pharmaceuticals; Implantable radiation therapy devices consisting of radioactive seeds with or without a bioabsorbable carrier assembly; Injection device for pharmaceuticals; Medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing; Medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the field of liver cancer; Medical apparatus for detecting cancer; Medical apparatus for introducing pharmaceutical preparations into the human body; Medical device for detecting cancer; Medical device for treating cancer; Medical diagnostic apparatus for detecting cancer; Medical diagnostic apparatus for detecting cancer.; Medical diagnostic apparatus for testing Cancer and Acute and Chronic Devastating Diseases and Conditions beyond CancerClass 010 for Medical devices for use in treating or diagnosing liver cancer; Medical devices for use in treating liver cancer; Medical devices, namely, infusion pumps for delivering measured amounts of solutions into the bloodstream over time; Medical devices, namely, radiation devices in the nature of ultraviolet, visible, or infra-red light boxes for counteracting the effects of viruses, bacteria and pathogens in the blood and blood components; Medical apparatus and units for dosage, measuring and monitoring, namely, drug delivery devices and systems; Medical apparatus, namely, infusion and injection devices for administering drugs; Diagnostic apparatus for the detection of liver cancer; Implantable radiation therapy devices consisting of delivery agents consisting of compounds that facilitate delivery of liver cancer fighting pharmaceuticals; Implantable radiation therapy devices consisting of radioactive seeds with or without a bioabsorbable carrier assembly; Injection device for pharmaceuticals; Medical apparatus and instrument for diagnostic use, namely, apparatus for medical diagnostic testing in the field of liver cancer; Medical apparatus for detecting cancer; Medical apparatus for introducing pharmaceutical preparations into the human body; Medical device for detecting cancer; Medical device for treating cancer; Medical diagnostic apparatus for detecting cancer.
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Gwenn Roos. Gwenn Roos of ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS, is located at

      26 BROOKDALE AVENUE
      WELLESLEY, Massachusetts 02482
      US

The phone number is 781-888-0424.

The email address is gwenn@onsidecounsel.com

The applicants proposed attorney information: Gwenn Roos. Gwenn Roos of ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      26 BROOKDALE AVENUE
      WELLESLEY, Massachusetts 02482
      United States

The phone number is 781-888-0424.

The email address is gwenn@onsidecounsel.com

Gwenn Roos submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: GWENN ROOS. GWENN ROOS of ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS, is located at

      26 BROOKDALE AVENUE
      WELLESLEY, Massachusetts 02482
      US

The phone number is 781-888-0424.

The email address is gwenn@onsidecounsel.com

The applicants proposed correspondence information: Gwenn Roos. Gwenn Roos of ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS, is located at

      26 BROOKDALE AVENUE
      WELLESLEY, Massachusetts 02482
      United States

The phone number is 781-888-0424.

The email address is gwenn@onsidecounsel.com

FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /geroos/      Date: 01/18/2020
Signatory's Name: Gwenn Roos
Signatory's Position: Attorney Of Record (MA)
Signatory's Phone Number: 7818880424


Response Signature
Signature: /geroos/     Date: 01/18/2020
Signatory's Name: Gwenn Roos
Signatory's Position: Attorney of Record (MA)

Signatory's Phone Number: 7818880424

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    GWENN ROOS
   ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS
   
   26 BROOKDALE AVENUE
   WELLESLEY, Massachusetts 02482
Mailing Address:    Gwenn Roos
   ONSIDECOUNSEL/LAW OFFICE OF GWENN ROOS
   26 BROOKDALE AVENUE
   WELLESLEY, Massachusetts 02482
        
RAM Sale Number: 88366498
RAM Accounting Date: 01/21/2020
        
Serial Number: 88366498
Internet Transmission Date: Sat Jan 18 14:39:44 EST 2020
TEAS Stamp: USPTO/POA-XXX.XX.XXX.XX-2020011814394442
7373-88366498-700471fd4aaea733a5ecd458d3
1c23e88616ee12a0786a7121aa4abcfbacc38c8-
CC-39425326-20200118143143706137