Response to Office Action

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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88371342 KOSMOS(Standard Characters, see http://uspto.report/TM/88371342/mark.png) has been amended as follows:

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

The Examining Attorney has refused registration in Class 10 under Section 2(d) because of an alleged likelihood of confusion with U.S. Registration No. 3,723,466 for the mark COSMOS used in connection with “Medical devices, namely, intravascular implants comprised of artificial material.”

The Examining Attorney argues that the goods are sufficiently related because Intravascular Ultrasound (IVUS) is used for sizing and implanting intravascular implants.

“In this case, the attached evidence from Radiology Infor for Patients, AHA Journals, Angioplasty.org, European Heart Journal, and the Journal of Diagnostic Medical Sonography establishes that Applicant’s medical diagnostic equipment is related to registrant’s medical devices not only in that they are used in the treatment of the same conditions, but that in placing devices such as those identified in the registration, doctors rely on goods of the type identified in the application. As a result, the goods of Applicant and Registrant are related for likelihood of confusion purposes.”

Applicant respectfully disagrees and requests reconsideration and withdrawal of the refusal and passing of this application to publication.

Applicant’s mark is KOSMOS while the registered mark is COSMOS.  Because KOSMOS is a Greek word, the initial letter K is used ,where in contrast the C is from the later Middle English usage.  The letter K is clearly different in sight and connotation than the more modern Middle English use of C. More particularly, the use of the letter K semantically connotes an origin rooted in the advancements made in science and technology by the ancient Greeks.  Greek achievements in science, physics, biology, and medicine are well-known and appreciated by modern American culture. This is particularly true today with the emphasis on the STEM curriculum across all grade levels in American education. See http://www.ed.gov/stem. In contrast, the use of the more modern letter C to form the word “cosmos” denotes an astronomy context popularized by Karl Sagan’s Cosmos video series about modern views of the Universe with an emphasis on the macroscopic view of our solar system, its place among the galaxies, and its impact on life on this plant.

Because the K in KOSMOS is the first letter consumers will encounter in the mark, it has prominence over the other letters. When products bearing the KOSMOS mark are in proximity to products bearing the COSMOS mark, consumers will easily detect the visual difference, signaling the products are from different sources.

The products of both parties are marketed to a select consumer base using targeted marketing and advertising techniques. Consumers of both of these products are highly educated professionals. They are discriminating in their purchases and do not make decisions based on impulse.

There are several critical distinctions between the product marketed by COSMOS and the products marketed by the Applicant.   Aside from the obvious distinction that the product of the former is implanted inside the human body while the latter is used on the exterior of the human body, the nature and the purpose of the two products are such that it is very unlikely that the registrant’s consumers would also encounter applicant’s consumers and vice versa.   Applicant’s product is being marketed as a new kind of medical tool with three-signal fusion capabilities (ultrasound, digital auscultation, ECG, and any combination of the foregoing) designed for the assessment of the heart, the lungs, the abdomen, as well as of the musculoskeletal and gynecological systems.  It is designed for the assessment of these specific areas of the body to provide immediate diagnostical information - such as the ejection fraction of the heart - to the care givers at the bed side during the initial physical exam.  In other words, Applicant’s product is neither designed for nor marketed as a generalized ultrasound machine that can be used to guide procedures such implanting intravascular materials.    As a result, the KOSMOS tools will be marketed mainly to those who will never engage in implanting vascular grafts, such as primary physicians and ER doctors, whereas vascular implants are handled solely by vascular surgeons, cardiologists, and interventional radiologists. 

In addition, another key differentiator for the Applicant’s product is the embedded AI algorithms that are designed to teach and guide non-experts (including medical students, nurse practitioners, and physician assistants) in the acquisition and interpretation of the ultrasound images pertaining to these body parts.  By contrast, the ultrasound machines used for intravascular implants will only be useable by physician specialists with high expertise in the acquisition and interpretation of the ultrasound images, and for whom AI driven image guidance system will be entirely useless.  

For the above reasons, the vascular implants of the cited registration are marketed in different channels than the medical imaging apparatus of the present application. While it is possible the two products may find themselves in the same room, this occurs long after the decision to purchase the products has been made. The decision to purchase the respective products is made by a different consumer with different goals for uniquely different purposes long before their actual use.

In view of the foregoing, applicant respectfully submits there is no prima facia case of likelihood of confusion between applicant’s mark and the cited registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Medical diagnostic equipment and software; diagnostic probes; cardiothoracic assessment and diagnostic tools; a tablet with probe and downloadable software; medical evaluation tool that employs ultrasound, EKG, and digital auscultation
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 diagnostic equipment and software; Medical imaging apparatus incorporating medical imaging software; diagnostic probes; diagnostic probes for medical purposes; cardiothoracic assessment and diagnostic tools; medical diagnostic apparatus for assessing the condition of, and detecting and diagnosing abnormalities of, the heart, the lungs, the abdomen, and musculoskeletal and gynecological systems; a tablet with probe and downloadable software; medical apparatus for assessing the condition of, and detecting and diagnosing abnormalities of, the heart, the lungs, the abdomen, and musculoskeletal and gynecological systems, namely, probes employing ultrasound, EKG, or digital auscultation, or any combination thereof, for medical use; medical evaluation tool that employs ultrasound, EKG, and digital auscultation; tablet computers, and downloadable and imbedded software for displaying, recording, and analyzing medical data sold as a unit; medical diagnostic apparatus that employs ultrasound, EKG, or digital auscultation, or any combination thereof, for assessing the condition of, and detecting and diagnosing abnormalities of the heart, the lungs, the abdomen and musculoskeletal and gynecological systems; medical imaging apparatus incorporating medical imaging software having embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of ultrasound images; tablet computer used in conjunction with a medical diagnostic tool and configured to enable viewing of images, analyses and computations generated by the medical diagnostic toolClass 010 for Medical imaging apparatus incorporating medical imaging software; diagnostic probes for medical purposes; medical diagnostic apparatus for assessing the condition of, and detecting and diagnosing abnormalities of, the heart, the lungs, the abdomen, and musculoskeletal and gynecological systems; medical apparatus for assessing the condition of, and detecting and diagnosing abnormalities of, the heart, the lungs, the abdomen, and musculoskeletal and gynecological systems, namely, probes employing ultrasound, EKG, or digital auscultation, or any combination thereof, for medical use; tablet computers, and downloadable and imbedded software for displaying, recording, and analyzing medical data sold as a unit; medical diagnostic apparatus that employs ultrasound, EKG, or digital auscultation, or any combination thereof, for assessing the condition of, and detecting and diagnosing abnormalities of the heart, the lungs, the abdomen and musculoskeletal and gynecological systems ; medical imaging apparatus incorporating medical imaging software having embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of ultrasound images; tablet computer used in conjunction with a medical diagnostic tool and configured to enable viewing of images, analyses and computations generated by the medical diagnostic tool
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 009 for Downloadable and imbedded medical software for displaying, recording, and analyzing medical data for diagnosis; tablet computer used in conjunction with a medical diagnostic tool for purposes of viewing the images, analyses and computations generated by the diagnostic medical tool; downloadable medical software having embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of ultrasound images
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.

Applicant hereby adds the following class of goods/services to the application:
New: Class 042 for Providing on-line downloadable medical software for displaying, recording, storing and analyzing medical data for diagnosis; providing on-line downloadable medical software with embedded AI algorithms that are designed to teach and guide non-experts, medical students, nurse practitioners, and physician assistants in the acquisition and interpretation of the ultrasound images
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: E. Russell Tarleton. E. Russell Tarleton of SEED IP LAW GROUP LLP, is located at

      SUITE 5400
      701 FIFTH AVENUE
      SEATTLE, Washington 98104
      US
The docket/reference number is 290139.207.

The phone number is 206-622-4900.

The fax number is 206-682-6031.

The email address is USTM.docketing@seedip.com

The applicants proposed attorney information: E. Russell Tarleton. Other appointed attorneys are Kevin S. Costanza, Jared M. Barrett, Hayley J. Talbert, Syed Abedi, Duncan Stark, Russell C. Pangborn, Marc C. Levy, Brooke W. Quist, Kevan L. Morgan, Stephen J. Rosenman, Bradley Zentz, and Thomas A. Shewmake. E. Russell Tarleton of SEED IP LAW GROUP LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      SUITE 5400
      701 FIFTH AVENUE
      SEATTLE, Washington 98104
      United States
The docket/reference number is 290139.207.

The phone number is 206-622-4900.

The fax number is 206-682-6031.

The email address is USTM.docketing@seedip.com

E. Russell Tarleton 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: E. RUSSELL TARLETON. E. RUSSELL TARLETON of SEED IP LAW GROUP LLP, is located at

      SUITE 5400
      701 FIFTH AVENUE
      SEATTLE, Washington 98104
      US
The docket/reference number is 290139.207.

The phone number is 206-622-4900.

The fax number is 206-682-6031.

The email address is USTM.docketing@seedip.com

The applicants proposed correspondence information: E. Russell Tarleton. E. Russell Tarleton of SEED IP LAW GROUP LLP, is located at

      SUITE 5400
      701 FIFTH AVENUE
      SEATTLE, Washington 98104
      United States
The docket/reference number is 290139.207.

The phone number is 206-622-4900.

The fax number is 206-682-6031.

The email address is USTM.docketing@seedip.com

FEE(S)
Fee(s) in the amount of $550 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, 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. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /E. Russell Tarleton/      Date: 12/10/2019
Signatory's Name: E. Russell Tarleton
Signatory's Position: Attorney for Applicant, Washington State Bar Member
Signatory's Phone Number: 206-622-4900


Response Signature
Signature: /E. Russell Tarleton/     Date: 12/10/2019
Signatory's Name: E. Russell Tarleton
Signatory's Position: Attorney of Record, Washington State Bar Member

Signatory's Phone Number: 206-622-4900

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:    E. RUSSELL TARLETON
   SEED IP LAW GROUP LLP
   SUITE 5400
   701 FIFTH AVENUE
   SEATTLE, Washington 98104
Mailing Address:    E. Russell Tarleton
   SEED IP LAW GROUP LLP
   SUITE 5400
   701 FIFTH AVENUE
   SEATTLE, Washington 98104
        
RAM Sale Number: 88371342
RAM Accounting Date: 12/10/2019
        
Serial Number: 88371342
Internet Transmission Date: Tue Dec 10 12:20:34 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201912101220349
97944-88371342-7007d34bae9d2926956d0bb55
e61ece656bf3ff4748eb448536939e46cbfceb4-
CC-20324424-20191210120332066712