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. 88536883 FAST(Standard Characters, see http://uspto.report/TM/88536883/mark.png) has been amended as follows:

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

Response to Office Action

Boston Scientific Neuromodulation Corporation (“Applicant”), submits this response to the Office Action issued on September 17, 2019, in connection with Applicant’s application serial no. 88/536,883 (the “Application”) for the mark FAST (“Applicant’s Mark”) for use in connection with the amended goods. In sum, the Examining attorney requests for clarification of the goods and additional information about the goods to permit proper examination of the Application. Moreover, the Examining Attorney refused registration of the Application because of a likelihood of confusion under Section 2(d), 15 U.S.C. §1052(d) with the following registrations in the name of ECA Medical Instruments:

• TORQUE-FAST and SECURE-FAST for medical instruments, namely, tools for affixing and or adjusting implantable medical devices, namely, pacemakers, neurostimulators, orthopedic and spinal medical devices, namely, replacement or partial replacement for joints, vertebra, knee, hip, and shoulder in Class 10. Together hereinafter referred to as “Cited Registrations.”

  The examining attorney also advised of a potential likelihood of confusion with the following applications in the name of Essenlix Corporation:

• FAST and FAST PLATE for assays for research purposes; biochemical reagents commonly known as probes, for detecting and analyzing molecules in protein or nucleotide array; biochemical reagents used for non-medical purposes; biochemicals for in vitro and in vivo scientific use; all of the aforesaid not in the nature of reference standards for pharmaceutical development, pharmaceutical quality control, and pharmaceutical quality assurance and not in the nature of diagnostic immunological assay tests used for testing food safety in Class 01; 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 devices for obtaining body fluid samples; medical diagnostic apparatus for testing cells and biomolecules; medical diagnostic instruments for the analysis of body fluids; all of the aforesaid not for reference standards, namely, solutions, reagents and/or preparations for pharmaceutical development, pharmaceutical quality control, and pharmaceutical quality assurance and diagnostic immunological assay tests used for testing food safety in Class 10; medical assistance; medical consultations; medical counseling; medical information; medical services; all of the aforesaid not including surgical assistance services, physical therapy services in movement dysfunction, and laser skin treatment services in Class 44. Together hereinafter referred to as “Cited Applications.”

  Collectively the Cited Registrations and Cited Applications are referred to as “Cited Marks.”

Applicant respectfully requests reconsideration of the likelihood of confusion refusal and potential likelihood of confusion refusal, as detailed below.

Amended Identification

Applicant clarifies the applied-for goods as follows:

Feature or method that may be implemented or enabled by software or an electronic device in providing fast acting sub-perception therapy in field of neurostimulation.

Information

The mark will be used in connection with a method or feature performed by the physician for adjusting the stimulation parameters of implantable neurostimulation systems. Applicant currently does not have facts sheets, instruction manuals, or advertisements to provide to the Examining Attorney. However, please do not hesitate to contact the undersigned if the information provided raises any questions.

No Likelihood of Confusion

In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), sets forth a list of several factors which should be considered when determining a likelihood of confusion under Section 2(d). Those "evidentiary elements are not listed . . . in order of merit.” Rather “[e]ach may from case to case play a dominant role." Id. Based upon an analysis of all of the factors, it appears that there are insufficient grounds upon which to base a determination that there exists a likelihood of confusion. Moreover, likelihood of confusion is synonymous with “probable” confusion – it is not sufficient if confusion is merely “possible.” Brennan's, Inc. v. Brennan's Restaurant, L.L.C., 360 F.3d 125, 135, 69 U.S.P.Q.2d 1939 (2^nd Cir. 2004). Applicant respectfully requests that the Examining Attorney reconsider the likelihood of confusion refusal in view of the analysis set forth below.

1. Comparison of the Marks

Distinctiveness

Applicant requests that the term FAST in the Cited Marks be afforded a narrow scope of protection since it is not a particularly strong term. Upon a review of the United States Patent and Trademark Office (USPTO) database, Applicant notes the Cited Marks coexist with other registered or allowed “FAST” marks in Class 10, for example:

Mark	Reg. No.	Services	Owner
F.A.S.T	4267309	A line of blood flow measurement instruments used in neurosurgery, vascular access and cardiovascular surgery	Transonic Systems, Inc.
F.A.S.T. RX Disclaims RX	480452	PHYSICAL REHABILITATION AND THERAPY APPARATUS, NAMELY, AN ELONGATED ROD HAVING AT LEAST ONE BULBOUS PORTION FOR THE TREATMENT OF MUSCLES AND BODY TISSUES	F.A.S.T. INNOVATIONS, LLC
F.A.S.T. GUIDE F.A.S.T. TABS Disclaims GUIDE, TAB	3644680 3807623	Orthopedic drill guides and drill guide supports; guides, adaptors, auxiliary components and tools for aligning an implantable orthopedic implant to the anatomy, drilling holes in the bone in alignment with holes in the implant, and permanently placing the implant on the anatomy; Surgical instruments for orthopaedic use Implantable orthopedic fixation devices, namely, bone plates; Orthopaedic anatomical plates	ZIMMER GMBH
F.A.S.T. 1	2120144	intraosseous infusion devices	Pyng Medical Corp.
FAST	5163676	Medical hearing aids and parts thereof	Sivantos Pte. Ltd.
FAST-PATCH	1383258	DISPOSABLE DEFIBRILLATION ELECTRODES	PHYSIO-CONTROL, INC.
FAST FX FAST-FIX Disclaims FX	2660086 2599083	External fixation device for use in orthopedic corrective procedures; surgical suture anchor	Smith & Nephew, Inc.
FAST-F.I.C.S.	2463346	medical instruments, namely, a single use surgical instrument cleaning station comprised of a device used to clean the tips of surgical instruments during surgery	SCANLAN INTERNATIONAL, INC.
FAST-PASS	2959782	Component part of medical instruments, namely, a coating for implantable leads to improve lubricity	Pacesetter, Inc. DBA St. Jude Medical Cardiac Rhythm Management Division
FASTLOK	1846640	medical devices for fixing implantable prostheses	Neoligaments, Ltd.
PRO-FAST	88471577	Surgical apparatus and instruments for use in orthopedic and spinal surgery, namely, devices used to target the lateral mass of a vertebra in the cervical spine for screw placement, including paddles and tissue dilators	Spine Wave, Inc.

As demonstrated by the evidence in Exhibit A, the term FAST in the Cited Marks is not particularly strong.

Where a party uses a weaker mark, competitors may come closer to the mark than would be the case with a strong mark without violating a party's rights. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §11:73 (4th ed. 2004); King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 U.S.P.Q. 108 (C.C.P.A. 1974) (confusion is unlikely if it is a weak mark). Since FAST in the Cited Marks is not highly distinctive, the term carries limited trademark significance. Courts have noted that,

"It seems both logical and obvious to us that where a party chooses a trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owner of a strong trademark. Where a party uses a weak mark, his competitors may come closer to his mark than would be the case with a strong mark without violating his rights." Sure-Fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 159 (CCPA 1958).

Since the term FAST in the Cited Marks lacks strong distinctiveness in general, it should be afforded only a narrow scope of protection.

Difference in Sound, Appearance, Meaning, and Commercial Impression

The appearance, sound, meaning, and commercial impression of Applicant’s Mark and the Cited Registrations are markedly different.

While of Applicant’s Mark and the Cited Registrations share the term FAST, the Cited Registrations contains additional elements which sufficiently distinguish the marks in the minds of consumers. Most notably, Applicant’s Mark and the Cited Registrations are clearly not identical in appearance, as shown below:

Applicant’s Mark: FAST

Cited Registrations: TORQUE-FAST

SECURE-FAST

Applicant’s Mark is one term while the Cited Registrations two terms merged together.

In addition, the terms TORQUE and SECURE in the Cited Registrations and PLATE in one of the Cited Applications present a distinguishable sound. Indeed, Applicant’s Mark has a sound of one syllable. In contrast, the Cited Registrations and the Cited Application FAST PLATE present a sound of two or three syllables.

Moreover, the use of FAST with the terms TORQUE and SECURE in the Cited Registrations present a significantly different meaning and commercial impression from that of Applicant’s Mark. That is, the term FAST is used to modify or qualify TORQUE and SECURE to explain or describe the action of the tools associated with the Cited Registrations (e.g., the tool provides a fast twisting force; the tool allows the user to quickly secure the medical device). Neither the meaning nor commercial impression of TORQUE or SECURE are present in Applicant’s Mark.

Applicant acknowledges the similarity of Applicant’s Mark and the Cited Application for the mark FAST. However, like the discussion above regarding the Cited Registrations, PLATE in the Cited Application FAST PLATE presents a significantly different meaning and commercial impression from that of Applicant’s Mark, as shown below:

Applicant’s Mark: FAST

Cited Applications: FAST PLATE

Applicant’s Mark and the Cited Registrations and Cited Application FAST PLATE are clearly not identical, and Applicant believes when viewed in their entireties, each presents a sufficiently distinguishable appearance, sound, meaning and commercial impression. Mr. Hero Sandwich Systems, Inc. v. Roman Meal Company, 781 F.2d 884, 228 U.S.P.Q. 364, 366 (Fed. Cir. 1986) (citing In re National Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985)). While "there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark," the "ultimate conclusion rests on consideration of the marks in their entireties." In re National Data Corp., 753 F.2d at 1058; In re Hearst Corp., 982 F.2d 493, 25 U.S.P.Q.2d 1238 (Fed. Cir. 1992). See also, e.g., 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, based, in part, on findings that the phrase "City Bank" is frequently used in the banking industry and that "CAPITAL" is the dominant element of applicant’s marks, which gives the marks a geographic connotation as well as a look and sound distinct from opposer’s marks); 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 for clothing items (including gloves) and RITZ for various kitchen textiles (including barbeque mitts) is likely to cause confusion, because, inter alia, THE RITZ KIDS creates a different commercial impression); In re Farm Fresh Catfish Co., 231 USPQ 495, 495-96 (TTAB 1986) (holding CATFISH BOBBERS (with "CATFISH" disclaimed) for fish, and BOBBER for restaurant services, not likely to cause confusion, because the word "BOBBER" has different connotation when used in connection with the respective goods and services). When considered, each mark provides differentiation for any consumer that may encounter Applicant’s Mark and the Cited Registrations.

Applicant respectfully submits that the differences in Applicant’s Mark and the Cited Registrations and Cited Application FAST PLATE weigh heavily against finding a likely confusion in this case.

Comparison of the Goods

Even if the marks of the respective parties are deemed to be similar in sound and appearance, the USPTO must consider the commercial relationship between the goods and/or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 U.S.P.Q. 355 (T.T.A.B. 1983); See also In re Triavascular, Inc., Serial No. 77941535 (November 27, 2012) [not precedential] wherein the Board concluded that no likelihood of confusion exists when medical devices are technologically distinct, the processes and methods of manufacturing are different, and such devices cannot substitute for each other or be used together in a single medical procedure.

The specific types of medical goods under the Cited Applications and Applicant’s Mark are wholly unrelated. Indeed, Applicant intends to use Applicant’s Mark in the field of neuromodulation / neurostimulation. As background, neuromodulation works by actively stimulating nerves to produce a natural biological response. Neurostimulation devices involve the application of electrodes to the brain, the spinal cord, or peripheral nerves. See Exhibit B. The goods under Applicant’s Mark are quite different from the goods under the Cited Applications relating to testing in the field of cancer or other tissue-based testing.

Marks with goods and services far more similar to each other than those involved here have been found not to be confusingly similar. In Lenox Inc. v. Ranmaru U.S.A. Corp., 17 U.S.P.Q.2d 1696 (S.D.N.Y. 1990), each party used the term "TUXEDO" on dinner plate designs. After noting that the two marks were identical, the court addressed the similarity between the products:

"The closeness of the products, however, begins and ends with their shared membership in the plate family. . . Plaintiff's "Tuxedo" is part of Lenox's "Presidential Collection" and is among the most elegant china available. Defendant's "Tuxedo" is a casual dinnerware pattern and sells for approximately $235 less than Plaintiff's "Tuxedo." The Court does not find that the products are sufficiently proximate to engender a likelihood of confusion."

In the Lenox case, the marks were identical in appearance and the products could be generally characterized as falling within a related class of goods. Yet, the difference between the goods resulted in a determination that confusion was unlikely. The differences between Applicant’s goods and the goods under the Cited Applications are clearly more distinguishable than the differences between the goods in the Lenox case. This fact strongly weighs against a likelihood of confusion between the Applicant’s Mark and the Cited Applications.

Since the goods are technologically distinct and cannot substitute for each other or be used together in a single medical procedure, the source or sponsorship of the respective goods is not likely to be confused. There are other considerations that also indicate that a likelihood of confusion does not exist, namely, purchaser sophistication and purchasing care and attention.

Trade Channel

Applicant’s goods are specifically for the field of neuromodulation/neurostimulation and are marketed solely and exclusively to hospital accounts wherein neurostimulation procedures are performed and to physicians and medical professionals experienced in the diagnosis and treatment of chronic pain syndromes and who have undergone surgical and device implantation training. The goods under the Cited Applications will likely be marketed to companies whom conduct research or are independent professionals or professionals who work for large corporations such as laboratories, pharmaceutical companies, research institutions. Consequently, the trade channels do not overlap.

Impulse Purchase

The goods under Applicant’s Mark are expensive, and the purchasers are careful, sophisticated “buyers.” Trademark Trial and Appeal Board has held that the circumstances suggesting care in purchasing may tend to minimize the likelihood of confusion. See, e.g., In re N.A.D., Inc., 754 F.2d 996, 999-1000, 224 USPQ 969, 971 (Fed. Cir. 1985) (concluding that, because only sophisticated purchasers exercising great care would purchase the relevant goods, there would be no likelihood of confusion merely because of the similarity between the marks NARCO and NARKOMED); In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380, 1383 (TTAB 2006).

The goods under Applicant’s Mark will never be an impulse purchase, but rather subject to sophisticated sales efforts, possible face-to-face meetings and device training, and careful customer decision making. Likewise, customers purchasing medical instruments under the Cited Registrations and Cited Applications will be subject to the same careful, sophisticated purchasing situation.

Since the parties' goods are obtained with such a significant degree of care, the likelihood of confusion between the marks is even further diminished.

For all of the reasons set forth above, there is no likelihood of confusion between the Applicant’s Mark and the Cited Registrations and Cited Applications.

Conclusion

Applicant respectfully requests withdrawal of the likelihood of confusion and potential likelihood of confusion refusal and approve the Application for publication. Applicant appreciates the examining attorney’s consideration.

EVIDENCE
Evidence in the nature of Exhibit A - Cited Marks - FAST Exhibit B - Neurostimulation Devices has been attached.
Original PDF file:
evi_20415522134-20200220161034582032_._Exhibit_A_-_FAST_-_third_party_FAST_marks.pdf
Converted PDF file(s) ( 21 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7
Evidence-8
Evidence-9
Evidence-10
Evidence-11
Evidence-12
Evidence-13
Evidence-14
Evidence-15
Evidence-16
Evidence-17
Evidence-18
Evidence-19
Evidence-20
Evidence-21
Original PDF file:
evi_20415522134-20200220161034582032_._Exhibit_B_-_FAST_-_Neuromodulation.pdf
Converted PDF file(s) ( 8 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
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Evidence-8

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:
Current: Class 010Feature for use in setting fast acting sub-perception therapy sold as an integral component of medical devices in the nature of a neurostimulation system
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: Feature for use in setting fast acting sub-perception therapy sold as an integral component of medical devices in the nature of a neurostimulation system; Feature or method that may be implemented or enabled by software or an electronic device in providing fast acting sub-perception therapy in field of neurostimulation.
Owner AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: Boston Scientific Neuromodulation Corporation, a corporation of Delaware, having an address of
      25155 Rye Canyon Loop
      Valencia, California 91355
      United States
       Email Address: trademarks@bsci.com
      763-494-1700
Proposed: Boston Scientific Neuromodulation Corporation, a corporation of Delaware, having an address of
      25155 Rye Canyon Loop
      Valencia, California 91355
      United States
       Email Address: michelle.anderson@bsci.com
      763-494-1700

The owner's/holder's current attorney information: Todd Messal. Todd Messal of BOSTON SCIENTIFIC CORPORATION, is located at

      ONE SCIMED PLACE
      MAPLE GROVE, Minnesota 55311
      United States
The docket/reference number is TM-01000US01.

The phone number is 763-494-1700.

The email address is trademarks@bsci.com

The owner's/holder's proposed attorney information: Todd Messal. Other appointed attorneys are Sara J. Citrowske, Robert M. Crist, Matthew S. Jorgenson, Vincent Lai, Denise C. Lane, Lori J. Heinrichs, Todd P. Messal, Benjamin J. Nyquist, Katrina A. Witschen, Erin Martell. Todd Messal of BOSTON SCIENTIFIC CORPORATION, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      ONE SCIMED PLACE
      MAPLE GROVE, Minnesota 55311
      United States
The docket/reference number is TM-01000US01.

The phone number is 763-494-1700.

The email address is trademarks@bsci.com

Todd Messal 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.Correspondence Information (current):
      TODD MESSAL
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@bsci.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): michelle.anderson@bsci.com

The docket/reference number is TM-01000US01.
Correspondence Information (proposed):
      Todd Messal
      PRIMARY EMAIL FOR CORRESPONDENCE: trademarks@bsci.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): michelle.anderson@bsci.com

The docket/reference number is TM-01000US01.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /todd messal/     Date: 02/20/2020
Signatory's Name: Todd Messal
Signatory's Position: Assistant Secretary

Signatory's Phone Number: 763-494-1700

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:    TODD MESSAL
   BOSTON SCIENTIFIC CORPORATION
   
   ONE SCIMED PLACE
   MAPLE GROVE, Minnesota 55311
Mailing Address:    Todd Messal
   BOSTON SCIENTIFIC CORPORATION
   ONE SCIMED PLACE
   MAPLE GROVE, Minnesota 55311
        
Serial Number: 88536883
Internet Transmission Date: Thu Feb 20 16:42:58 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-202002201642587
07406-88536883-710b2a4d01dde1a92e3cd2649
ff3467d9364acbff21ed8be1a4c71c2b734f8bc2
b-N/A-N/A-20200220161034582032