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. 88444348 SPARC (Stylized and/or with Design, see http://uspto.report/TM/88444348/mark.png) has been amended as follows:

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

Thank you for your letter in connection with the above application. We write in response and to request reconsideration of the refusal to register and to address an identification and classification issue and offer the following arguments in support of registration. The Examining Attorney refused registration of the mark SPARC (serial no.: 88/444,348) for, "printed matters and publications consisting of information about pharmaceutical, cosmetic, dietary, scientific, surgical and medical products and information about scientific and technological research and development" (the "Applicant's Mark"), in International Class 016 on the basis that Applicant's Mark is likely to be confused with: - U.S. Registration No.: 4,489,844 (SPARC MICROENVIRONMENT SIGNATURE (SMS)) for "Providing medical diagnostic testing and analysis to determine appropriate therapy; Medical and pharmaceutical information services in the field of cancer; Medical and pharmaceutical consultation services in the field of cancer; Medical information and medical consultation" in Class 044. For the reasons that follow, Sun Pharma Advanced Research Company Ltd. ("Applicant"), respectfully submits that the Applicant's Mark is not likely to be confused with the Cited Mark because: (1) the Applicant's Mark is distinct; (2) and, customers of the goods and services are sophisticated. THE APPLICANT'S MARK IS DISTINCT In determining whether a mark is dissimilar in its entirety as to appearance, sound, connotation and commercial impression, the proper test is "whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties." Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). The proper test avoids a ?dissection? of the marks and instead "consider[s] the marks at issue in their entireties..." In re Colorbar Cosmetics Private Ltd., 2015 WL 7772721, Serial No. 86/323,815, at *6 (TTAB Nov. 20, 2015). The preliminary determination that SPARC is confusingly similar to the Cited Mark is based on a dissection of the Applicant's Mark. To that end, it is well established that "a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion." Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340 (Fed. Cir. 2015); TMEP 1207.01(b)(iv). Applicant submits that the Applicant's Mark was improperly dissected when the Examining Attorney concluded that: The marks are similar because the dominant elements of both marks is the shared term "SPARC." While the Cited Mark and the Applicant's Mark contain the letters "SPARC," the Cited Mark includes not only the phrase "MICROENVIRONMENT SIGNATURE" but also "(SMS)," both which are not featured in the Applicant's Mark. Thus, "SPARC" should not be dissected from the Cited Mark in assessing any similarity between the Applicant's Mark and the Cited Mark. A comparison of the Applicant's Mark and the Cited Mark demonstrates that the Applicant's Mark even in just the word form is visually distinct, phonetically distinct, and creates a distinct commercial impression, from the Cited Mark; and the actual mark as sought registration is even more visually distinct from the Cited Mark: Applicant's Mark In Word Form and As Applied Cited Mark SPARC SPARC MICROENVIRONMENT SIGNATURE (SMS) Specifically, while the Applicant's Mark and the Cited Mark include letters, "SPARC," both Applicant's Mark and the Cited Mark contain other unique distinguishing features. The unique distinguishing features are (for Applicant's Mark, the graphic) and for the Cited Mark, the addition of "MICROENVIRONMENT SIGNATURE" and "(SMS)." These unique distinguishing features affect "the appearance and sound of the marks." In re Colorbar Cosmetics, 2015 WL 7772721, at*6 (reversing refusal to register and noting the distinguishing feature of "USA" in COLORBAR USA to "The" in THE COLOR BAR). These unique distinguishing features demonstrate that the Cited Mark is visually dissimilar from the Applicant's Mark, making consumer confusion highly unlikely. Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011) (affirming TTAB's holding that contemporaneous use of applicant's CAPITAL CITY BANK marks for banking and financial services, and opposer's CITIBANK marks for banking and financial services, is not likely cause confusion); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed. Cir. 2004) (reversing TTAB's holding that contemporaneous use of THE RITZ KIDS and RITZ is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression). Further underscoring the distinct commercial impression created by the Applicant's Mark on the one hand and the Cited Mark on the other is the prominent phonetic differences between the marks when reviewed as a whole. Due to this lack of aural similarity, there is no likelihood of confusion among consumers who speak or hear the Cited Mark and the Applicant's Mark. The Examining Attorney also supports the likelihood of confusion determination by claiming that "SPARC" and "SPARC MICROENVIRONMENT SIGNATURE (SMS)" share a "common term that is purely arbitrary." But all of the cases cited in support regard two single-word marks. See, e.g., Crocker Nat'l Bank v. Canadian Imperial Bank of Commerce, 228 U.S.P.Q. 689 (TTAB 1986) (COMMCASH and COMMUNICASH), aff'd sub nom, Canadian Imperial Bank of Commerce v. Well Fargo Bank, Nat'l Ass'n, 811 F.2d 1490 (Fed. Cir. 1987); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS). Here, Applicant's Mark is a design element and single word, SPARC, while the Cited Mark includes three words plus three letters, SPARC MICROENVIRONMENT SIGNATURE (SMS). Thus, like the Ritz case, the contemporaneous use of SPARC in both marks is not likely to cause confusion because SPARC creates a different commercial impression than does SPARC MICROENVIRONMENT SIGNATURE (SMS). See Ritz Hotel, 393 F.3d at 1245. Moreover, both marks here evoke different acronyms. For instance the Applicant's Mark, SPARC, reflects Applicant's company name, Sun Pharma Advanced Research Company, while the Cited Mark uses its acronym within its mark, e.g., SPARC MICROENVIRONMENT SIGNATURE (SMS), the latter is seemingly for Sparc Microenvironment Signature. These marks plainly do not convey a shared source. Further, Applicant's marketing and advertising, which highlights the reflection of an acronym in its mark, SPARC, demonstrates that consumers would be familiar with Applicant's wording for which SPARC is an acronym. (See Exhibit 1, page from Applicant's website, located at: http://www.sparc.life/who-we-are). THE MARKET IS HIGHLY SOPHISTICATED The market for the Applicant's goods and services is not the general consuming public, as the Examining Attorney suggests. To be clear, "consumers" of Applicant's goods and services under the mark SPARC primarily are not members of the general public. To the contrary, Applicant primarily licenses and/or sells its goods and services under the mark, SPARC, to corporate entities as potential partners for commercialization. (See Exhibit 2, Declaration of Craig Kuchii, Esq.). Thus, customers of Applicant's goods and services are highly sophisticated purchasers, making it "highly unlikely that the respective goods would be encountered by the same purchasers under circumstances which could give rise to the mistaken belief that such goods originate from a common source ..." See In re NeoPhotonics Corp., 2008 WL 4572604, at *6 (TTAB Oct. 10, 2008). To be sure, there is "always less likelihood of confusion where goods are" more costly and purchased by sophisticated consumers. See Astra Pharmaceutical Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1205 (1st Cir. 1983). In fact, the TTAB has regularly found no likelihood of confusion where the market is highly sophisticated such as it is here. For example, in a case where the marks were VIGILANZ for computer monitoring systems that detect possible adverse drug events and VIGILANCE for heart monitors, the TTAB found both were used "in hospitals to monitor some aspect of patient care," but no likelihood of confusion, in part on the basis that the goods are purchased by sophisticated purchasers as opposed to the general public. See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399 (TTAB 2010); see also In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998) (finding no likelihood of confusion regarding DIGIRAD and DIGIRAY where both products are "in the general category of medical diagnostic equipment and are used to diagnose diseases and abnormalities in the human body..."); see In re Invivo Corp., 2007 WL 2698307, at *6 (TTAB Sept. 5, 2007) (refusal to register reversed for TELEPAK where other mark was TELEPAC and stating, "given the knowledge, care and deliberation required of doctors, hospitals and other medical institutions in making the purchasing decisions with respect to applicant and registrant's goods, it is unlikely that they would be confused") (citing 3 McCarthy on Trademarks and Unfair Competition sections 23:95, 23:101 (4th ed. 1998) ("[w]here the relevant buyer class is composed solely of professional, or commercial purchasers, it is reasonable to set a higher standard of care than for consumers"). Accordingly, the Examining Attorney's comments regarding consumers' general inclinations with respect to focus on a mark are not applicable here because they are not Applicant's customers. Plus, the Examiner notes that the Cited Mark includes "medical diagnostic services," which is not identified in Applicant's Mark at all. For the foregoing reasons, Applicant respectfully requests that the Examining Attorney reconsider the refusal to register as outlined in the office action and thanks the Examining Attorney for consideration of the foregoing. REQUIREMENT - IDENTIFICATION AND CLASSIFICATION The Examining Attorney has suggested an amendment to the Applicant's identification and additional classifications. The current identification is: International Class 016: printed matters and publications consisting of information about pharmaceutical, cosmetic, dietary, scientific, surgical and medical products and information about scientific and technological research and development. The Examining Attorney has recommended the following Suggested Amendment to Identification and additional Classifications: International Class 016: printed matters, namely, brochures, publications, and pamphlets in the field of pharmaceuticals, cosmetics, dietary supplements, science, surgical and medical products and scientific and technological research and development. International Class 040: Technical information in the field of pharmaceutical manufacturing. International Class 042: Providing medical and scientific research information in the field of pharmaceuticals and clinical trials. International Class 044: Providing information relating to the therapeutic properties of pharmaceuticals. Applicant appreciates the Examining Attorneys suggestions and accepts and agrees to the Examining Attorney's suggested amendment to the identification for International Class 016, except Applicant seeks to further narrow that identification by deleting "cosmetics, dietary supplements." Thus, Applicant suggests the following amendment to the identification in International Class 016: International Class 016: printed matters, namely, brochures, publications, and pamphlets in the field of pharmaceuticals, science, surgical and medical products and scientific and technological research and development. Applicant appreciates the Examining Attorneys suggestions as to additional classes, but agrees not to proceed with additional classes. However, in light of the fact that Applicant has agreed to delete the related references that previously were included in its International Class 016 identification as shown by the agreed upon amendment, above, its decision not to accept the suggested additional classes further narrows, and does not broaden, its application. Please do not hesitate to contact me if you require any additional information or documentation to assist in your review. Exhibit 1: http://www.sparc.life/who-we-are Exhibit 2: DECLARATION OF CRAIG KUCHII, ESQ. Trademark Application Serial No.: 88/444,348 (SPARC) I, Craig Kuchii, Esq., make this Declaration under penalty of perjury as follows: 1. I am over the age of eighteen and competent to make this Declaration. The information contained in this Declaration is based upon my investigation and discussions with persons with knowledge at Sun Pharma Advanced Research Company Ltd. ("Sparc"). 2. I serve as the Associate Vice President, Intellectual Property, at Sparc, the applicant of record for trademark application serial no.: 88/444,348 for the trademark, SP ARC. 3. I make this Declaration in support of Sparc's response to the Office Action dated June 14, 2019. 4. Sparc is a company focused on research and development to develop drugs for unmet needs through innovations in therapeutics and in delivery. 5. Sparc primarily licenses and/or sells its goods and services under the mark, SPARC, to corporate entities as potential partners for commercialization. The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. section 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his own knowledge are true; and all statements made on information and belief are believed to be true. /craig kuchii/

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 016 for printed matters and publications consisting of information about pharmaceutical, cosmetic, dietary, scientific, surgical and medical products and information about scientific and technological research and development
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: printed matters and publications consisting of information about pharmaceutical, cosmetic, dietary, scientific, surgical and medical products and information about scientific and technological research and development; printed matters, namely, brochures, publications, and pamphlets in the field of pharmaceuticals, science, surgical and medical products and scientific and technological research and development.Class 016 for printed matters, namely, brochures, publications, and pamphlets in the field of pharmaceuticals, science, surgical and medical products and scientific and technological research and development.
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: Craig Kuchii, Esq.. Craig Kuchii, Esq. of SUN PHARMACEUTICAL INDUSTRIES, INC., is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      US
The docket/reference number is SPTM-041US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com

The applicants proposed attorney information: Craig Kuchii, Esq.. Craig Kuchii, Esq. of SUN PHARMACEUTICAL INDUSTRIES, INC., is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      United States
The docket/reference number is SPTM-041US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com

Craig Kuchii, Esq. 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: CRAIG KUCHII, ESQ.. CRAIG KUCHII, ESQ. of SUN PHARMACEUTICAL INDUSTRIES, INC., is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      US
The docket/reference number is SPTM-041US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com; brandprotection@sunpharma.com

The applicants proposed correspondence information: Craig Kuchii, Esq.. Craig Kuchii, Esq. of SUN PHARMACEUTICAL INDUSTRIES, INC., is located at

      INTELLECTUAL PROPERTY DEPT.
      2 INDEPENDENCE WAY
      PRINCETON, New Jersey 08540
      United States
The docket/reference number is SPTM-041US.

The phone number is 609-720-5394.

The email address is general.ip.mailbox@sunpharma.com; brandprotection@sunpharma.com

SIGNATURE(S)
Response Signature
Signature: /craig kuchii/     Date: 12/16/2019
Signatory's Name: Craig Kuchii
Signatory's Position: Associate VP, Intellectual Property

Signatory's Phone Number: 609-720-5394

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:    CRAIG KUCHII, ESQ.
   SUN PHARMACEUTICAL INDUSTRIES, INC.
   INTELLECTUAL PROPERTY DEPT.
   2 INDEPENDENCE WAY
   PRINCETON, New Jersey 08540
Mailing Address:    Craig Kuchii, Esq.
   SUN PHARMACEUTICAL INDUSTRIES, INC.
   INTELLECTUAL PROPERTY DEPT.
   2 INDEPENDENCE WAY
   PRINCETON, New Jersey 08540
        
Serial Number: 88444348
Internet Transmission Date: Mon Dec 16 21:54:07 EST 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20191216215407932
118-88444348-7009c78452bafefddbcbd77fc21
e1a551a9fc1f18493851678662c1d4479817e7-N
/A-N/A-20191216212216631665