| PTO- 1960 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88477225 |
| LAW OFFICE ASSIGNED | LAW OFFICE 122 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88477225/mark.png |
| LITERAL ELEMENT | TILCARE |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| ARGUMENT(S) | |
|
This is in response to the Office Action mailed on January 8, 2021. In the January 8, 2021 Office Action, the Examiner maintained the rejection of Applicant’s mark over Registration No. 5,974,615. As noted in the prior response, Applicant does not believe there is a likelihood of confusion over the marks. To confirm that belief, Applicant contacted the Registrant for TILLACARE and confirmed that they too believe there would be no confusion between the marks. Accordingly, pursuant to TMEP 1207.01(d)(viii), the parties entered into a consent agreement, attached hereto. In such agreement the Registrant for TILLACARE agreed as follows: “The parties recognize and acknowledge the differences between their respective marks and their respective goods and services. The parties do not believe that there exists any confusion between them, their marks, and their respective goods and services due to the differences in their respective marks, the differences in their respective goods and services, and the differences in the types of customers they target, if they use their respective marks in accordance with the terms of this Agreement. The parties agree and acknowledge that it is unlikely that the concurrent use of TILLACARE and TILLA CARE for medical devices for the collection of urine in elderly, infirm and incontinent persons, namely, non-invasive catheters, on the one hand, and the TILCARE mark for ear wash devices and portable urinals, on the other, will create confusion among consumers as to the source, origin, or sponsorship of the parties’ respective goods and services”. (Paragraph 3.) In Donnay Int’l, S.A., 31 USPQ2d 1953, 1956 (TTAB 1994), the TTAB stated that “the more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded." Such detailed information is included in the agreement between Applicant and Registrant. For example, the parties have agreed to the following: (a) The marks are different in sight, sound and overall commercial impression; (b) [Applicant] Schweizer’s ear wash devices are very different from Tilla Care’s non-invasive catheters; (c) Tilla Care does not sell ear wash devices. (d) Tilcare’s portable urinals are very different from Tilla Care’s non-invasive catheters; (e) In the case of Schweizer’s portable urinals, such products are primarily marketed to and used by persons who do not have easy access to restroom facilities and need a portable urinal for relief; (f) In contrast, in the case of Tilla Care’s non-invasive catheters, such products are primarily marketed to hospitals, nursing homes, and medical providers for use by bed-ridden patients; (g) Customers of Tilla Care’s non-invasive catheters either provide medical care to bed-ridden patients or are bed-ridden patients themselves and have no need for portable catheters; (h) Customers of Schweitzer’s goods are unlikely to believe that they originate from a provider of non-invasive catheters. (i) Similarly, customers of Tilla Care’s goods are unlikely to believe that they originate from a provider of ear wash devices and portable urinals. In the In re E. I. du Pont de Nemours & Co. decision, the Court of Customs and Patent Appeals stated that “when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.” 476 F.2d at 1363, 177 USPQ at 568. Accordingly, as noted in TMEP 1207.01(d)(viii), “consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.” As the TMEP stated, “When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.” For these reasons, and given the clear, credible and factually detailed and supported consent agreement, Applicant respectfully requests that the rejection be withdrawn, and the mark proceed to allowance. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_17325148210-202102171 52607764734_._Tilcare_Coe xistence_Agreement_dated_ 1_31_2021.pdf |
| CONVERTED PDF FILE(S) (8 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0003.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0004.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0005.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0006.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0007.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0008.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\884\772\88477225\xml6\ RFR0009.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Coexistence Agreement |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Stephen F. Roth |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarkadmin@lernerdavid.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | TILCO.5 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Stephen F. Roth |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarkadmin@lernerdavid.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | TILCO.5 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Stephen F. Roth/ |
| SIGNATORY'S NAME | Stephen F. Roth |
| SIGNATORY'S POSITION | Attorney of Record, NJ Bar Member |
| SIGNATORY'S PHONE NUMBER | 908-654-5000 |
| DATE SIGNED | 02/17/2021 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Sent to third party for signature |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Feb 17 16:15:12 ET 2021 |
| TEAS STAMP | USPTO/RFR-XXX.XXX.XX.XXX- 20210217161512285263-8847 7225-77036bbadb818395d516 d4b1a15ffe3ee58442be1a8a8 3954196b018d9a2493b9c-N/A -N/A-20210217152607764734 |
| PTO- 1960 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
This is in response to the Office Action mailed on January 8, 2021.
In the January 8, 2021 Office Action, the Examiner maintained the rejection of Applicant’s mark over Registration No. 5,974,615.
As noted in the prior response, Applicant does not believe there is a likelihood of confusion over the marks. To confirm that belief, Applicant contacted the Registrant for TILLACARE and confirmed that they too believe there would be no confusion between the marks. Accordingly, pursuant to TMEP 1207.01(d)(viii), the parties entered into a consent agreement, attached hereto. In such agreement the Registrant for TILLACARE agreed as follows:
“The parties recognize and acknowledge the differences between their respective marks and their respective goods and services. The parties do not believe that there exists any confusion between them, their marks, and their respective goods and services due to the differences in their respective marks, the differences in their respective goods and services, and the differences in the types of customers they target, if they use their respective marks in accordance with the terms of this Agreement. The parties agree and acknowledge that it is unlikely that the concurrent use of TILLACARE and TILLA CARE for medical devices for the collection of urine in elderly, infirm and incontinent persons, namely, non-invasive catheters, on the one hand, and the TILCARE mark for ear wash devices and portable urinals, on the other, will create confusion among consumers as to the source, origin, or sponsorship of the parties’ respective goods and services”. (Paragraph 3.)
In Donnay Int’l, S.A., 31 USPQ2d 1953, 1956 (TTAB 1994), the TTAB stated that “the more information that is in the consent agreement as to why the parties believe confusion to be unlikely, and the more evidentiary support for such conclusions in the facts of record or in the way of undertakings by the parties, the more we can assume that the consent is based on a reasoned assessment of the marketplace, and consequently the more weight the consent will be accorded."
Such detailed information is included in the agreement between Applicant and Registrant. For example, the parties have agreed to the following:
(a) The marks are different in sight, sound and overall commercial impression;
(b) [Applicant] Schweizer’s ear wash devices are very different from Tilla Care’s non-invasive catheters;
(c) Tilla Care does not sell ear wash devices.
(d) Tilcare’s portable urinals are very different from Tilla Care’s non-invasive catheters;
(e) In the case of Schweizer’s portable urinals, such products are primarily marketed to and used by persons who do not have easy access to restroom facilities and need a portable urinal for relief;
(f) In contrast, in the case of Tilla Care’s non-invasive catheters, such products are primarily marketed to hospitals, nursing homes, and medical providers for use by bed-ridden patients;
(g) Customers of Tilla Care’s non-invasive catheters either provide medical care to bed-ridden patients or are bed-ridden patients themselves and have no need for portable catheters;
(h) Customers of Schweitzer’s goods are unlikely to believe that they originate from a provider of non-invasive catheters.
(i) Similarly, customers of Tilla Care’s goods are unlikely to believe that they originate from a provider of ear wash devices and portable urinals.
In the In re E. I. du Pont de Nemours & Co. decision, the Court of Customs and Patent Appeals stated that “when those most familiar with use in the marketplace and most interested in precluding confusion enter agreements designed to avoid it, the scales of evidence are clearly tilted. It is at least difficult to maintain a subjective view that confusion will occur when those directly concerned say it won’t. A mere assumption that confusion is likely will rarely prevail against uncontroverted evidence from those on the firing line that it is not.” 476 F.2d at 1363, 177 USPQ at 568.
Accordingly, as noted in TMEP 1207.01(d)(viii), “consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion.” As the TMEP stated, “When an applicant and registrant have entered into a credible consent agreement and, on balance, the other factors do not dictate a finding of likelihood of confusion, an examining attorney should not interpose his or her own judgment that confusion is likely.”
For these reasons, and given the clear, credible and factually detailed and supported consent agreement, Applicant respectfully requests that the rejection be withdrawn, and the mark proceed to allowance.
