| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88507715 |
| LAW OFFICE ASSIGNED | LAW OFFICE 126 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88507715/mark.png |
| LITERAL ELEMENT | FIROX |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Applicant seeks to register FIROX for “veterinary preparations and substances, namely, anti-inflammatories and analgesics” in IC 005. The examining attorney refuses registration in view of Registration 5684807 for the mark FEROX THERAPEUTICS for “pharmaceutical research and development” in IC 042. The examining attorney also identifies a possible 2(d) refusal basis in view of pending application Serial No. 76/720088 for the mark FUROX for “veterinary antimicrobial aerosol powder for topical wound care on horses, dogs and cats” in IC 005. Applicant respectfully disagrees. The Refusal in View of Registration 5684807 The position of the examining attorney specifically, and the Office more generally, reflects an arbitrary and capricious application of the law to Applicant’s mark. The Office has already determined that FEROX THERAPEUTICS, the mark of the ‘807 Registration, does not prevent registration of FUROX, the mark of the ‘088 Application, for “veterinary antimicrobial aerosol powder for topical wound care on horses, dogs and cats” in IC 005. Yet, on the other hand, the FUROX mark is alleged to be so similar to Applicant’s FIROX mark as to possibly support a 2(d) refusal (in case the FUROX mark is registered). Applicant’s FIROX mark for “veterinary preparations and substances, namely, anti-inflammatories and analgesics,” also in IC 005, is no more similar in sound, spelling or appearance to FEROX THERAPEUTICS than is the FUROX mark. Nor are the goods of the instant application any more related to the services of the ‘807 Registration than are the goods (also in IC 005) of the ‘088 Application. While the examining attorney may protest that each case is decided on its own facts, that general observation is dicta and must in any event be unavailing here. For there cannot be articulated any greater relationship between Applicant’s mark and that of the ‘807 Registration than there is with respect to that of the ‘088 Application. Consequently, the instant application should likewise be allowed over the ‘807 Registration or, alternatively, the Office should act in a logically consistent fashion and refuse registration of the FUROX mark over the FEROX THERAPEUTICS mark. The Potential Refusal in View of Application 76/720088 Manifestly, the Office deems the marks FUROX and FEROX THERAPEUTICS to be sufficiently dissimilar in sound and appearance as to render consumer confusion unlikely. Given the weakness of THERAPEUTICS due to its descriptive significance and the corresponding dominance of FEROX in the mark of the ‘807 Registration, the logical conclusion must be that the substitution of “U” for “E” in FUROX creates a distinct commercial impression. Likewise, a logical corollary must be that the difference between FIROX and FUROX is sufficiently distinguishing as to render consumer confusion unlikely. Reinforcing this conclusion that FIROX and FUROX are not confusingly similar is the fact that FUROX is a weak mark owing at least to its being extracted intact from the generic name for the antibiotic compound comprising the goods of the ‘088 Application; namely, cefuroxime. See Exhibit A, attached. The foregoing aside, it is also the case that the goods of the ‘088 Application and those of the instant application are meaningfully different. On the one hand, the ‘088 Application pertains, as mentioned, to an antimicrobial aerosol powder for topical wound care. Applicant’s goods, on the other hand, are anti-inflammatories and analgesics. Considering at least the remarks above, Applicant respectfully submits that the potential 2(d) refusal is unsupportable. Therefore, prompt approval of Applicant’s mark is requested. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_63240135132-20200120201014256147_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\885\077\88507715\xml4\ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\885\077\88507715\xml4\ROA0003.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A to Applicant's written arguments, comprising an extract from the Wikipedia entry for the drug CEFUROXIME, which extract was obtained by Applicant's counsel on January 20, 2020 |
| ATTORNEY SECTION (current) | |
| NAME | Christopher A. Mitchell, Esq. |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | DICKINSON WRIGHT PLLC |
| STREET | 350 S. MAIN STREET |
| CITY | ANN ARBOR |
| STATE | Michigan |
| POSTAL CODE | 48104 |
| COUNTRY | US |
| PHONE | 616-540-3663 |
| cmitchell@dickinsonwright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 139613-107 |
| ATTORNEY SECTION (proposed) | |
| NAME | Christopher A. Mitchell, Esq. |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | DICKINSON WRIGHT PLLC |
| INTERNAL ADDRESS | Suite 300 |
| STREET | 350 S. MAIN STREET |
| CITY | ANN ARBOR |
| STATE | Michigan |
| POSTAL CODE | 48104 |
| COUNTRY | United States |
| PHONE | 616-540-3663 |
| cmitchell@dickinsonwright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 139613-107 |
| CORRESPONDENCE SECTION (current) | |
| NAME | CHRISTOPHER A. MITCHELL, ESQ. |
| FIRM NAME | DICKINSON WRIGHT PLLC |
| STREET | 350 S. MAIN STREET |
| CITY | ANN ARBOR |
| STATE | Michigan |
| POSTAL CODE | 48104 |
| COUNTRY | US |
| PHONE | 616-540-3663 |
| cmitchell@dickinsonwright.com; dwtrademarks@dickinsonwright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 139613-107 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Christopher A. Mitchell, Esq. |
| FIRM NAME | DICKINSON WRIGHT PLLC |
| INTERNAL ADDRESS | Suite 300 |
| STREET | 350 S. MAIN STREET |
| CITY | ANN ARBOR |
| STATE | Michigan |
| POSTAL CODE | 48104 |
| COUNTRY | United States |
| PHONE | 616-540-3663 |
| cmitchell@dickinsonwright.com; dwtrademarks@dickinsonwright.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 139613-107 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Chris Mitchell/ |
| SIGNATORY'S NAME | Christopher A. Mitchell, Esq. |
| SIGNATORY'S POSITION | Attorney of Record (MI Bar member // USPTO Bar member) |
| SIGNATORY'S PHONE NUMBER | 616 336 1058 |
| DATE SIGNED | 01/20/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Jan 20 20:26:42 EST 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20200120202642507150-8850 7715-700934fdc5e165bf2fbd 9df174dbada19874d8f7d7e1f f04783f4b74e4e8f487-N/A-N /A-20200120201014256147 |
| 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) |
Applicant seeks to register FIROX for “veterinary preparations and substances, namely, anti-inflammatories and analgesics” in IC 005.
The examining attorney refuses registration in view of Registration 5684807 for the mark FEROX THERAPEUTICS for “pharmaceutical research and development” in IC 042.
The examining attorney also identifies a possible 2(d) refusal basis in view of pending application Serial No. 76/720088 for the mark FUROX for “veterinary antimicrobial aerosol powder for topical wound care on horses, dogs and cats” in IC 005.
Applicant respectfully disagrees.
The Refusal in View of Registration 5684807
The position of the examining attorney specifically, and the Office more generally, reflects an arbitrary and capricious application of the law to Applicant’s mark.
The Office has already determined that FEROX THERAPEUTICS, the mark of the ‘807 Registration, does not prevent registration of FUROX, the mark of the ‘088 Application, for “veterinary antimicrobial aerosol powder for topical wound care on horses, dogs and cats” in IC 005.
Yet, on the other hand, the FUROX mark is alleged to be so similar to Applicant’s FIROX mark as to possibly support a 2(d) refusal (in case the FUROX mark is registered).
Applicant’s FIROX mark for “veterinary preparations and substances, namely, anti-inflammatories and analgesics,” also in IC 005, is no more similar in sound, spelling or appearance to FEROX THERAPEUTICS than is the FUROX mark. Nor are the goods of the instant application any more related to the services of the ‘807 Registration than are the goods (also in IC 005) of the ‘088 Application.
While the examining attorney may protest that each case is decided on its own facts, that general observation is dicta and must in any event be unavailing here. For there cannot be articulated any greater relationship between Applicant’s mark and that of the ‘807 Registration than there is with respect to that of the ‘088 Application. Consequently, the instant application should likewise be allowed over the ‘807 Registration or, alternatively, the Office should act in a logically consistent fashion and refuse registration of the FUROX mark over the FEROX THERAPEUTICS mark.
The Potential Refusal in View of Application 76/720088
Manifestly, the Office deems the marks FUROX and FEROX THERAPEUTICS to be sufficiently dissimilar in sound and appearance as to render consumer confusion unlikely. Given the weakness of THERAPEUTICS due to its descriptive significance and the corresponding dominance of FEROX in the mark of the ‘807 Registration, the logical conclusion must be that the substitution of “U” for “E” in FUROX creates a distinct commercial impression. Likewise, a logical corollary must be that the difference between FIROX and FUROX is sufficiently distinguishing as to render consumer confusion unlikely.
Reinforcing this conclusion that FIROX and FUROX are not confusingly similar is the fact that FUROX is a weak mark owing at least to its being extracted intact from the generic name for the antibiotic compound comprising the goods of the ‘088 Application; namely, cefuroxime. See Exhibit A, attached.
The foregoing aside, it is also the case that the goods of the ‘088 Application and those of the instant application are meaningfully different. On the one hand, the ‘088 Application pertains, as mentioned, to an antimicrobial aerosol powder for topical wound care. Applicant’s goods, on the other hand, are anti-inflammatories and analgesics.
Considering at least the remarks above, Applicant respectfully submits that the potential 2(d) refusal is unsupportable. Therefore, prompt approval of Applicant’s mark is requested.
