To: | Ongoing Care Solutions, Inc. (tmdocket@larsonpatentlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88576273 - AIRPRO - 1440.69 |
Sent: | November 19, 2019 05:57:47 AM |
Sent As: | ecom114@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88576273
Mark: AIRPRO
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Correspondence Address:
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Applicant: Ongoing Care Solutions, Inc.
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Reference/Docket No. 1440.69
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: November 19, 2019
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant has applied to register the mark AIRPRO for orthotics for wrist, hand, knee and elbow.
The registered mark is AIRPRO for aerosol dispensers for medical use; aerosol dispensers for medical purposes; aerosol masks for medical use; air filters for medical ventilators; alcohol breath testing units; apparatus for dispensing non-medical oxygen and aromatherapy that also utilizes light, sound, and vibration for relaxation therapy; blood glucose meter; body rehabilitation apparatus for medical purposes; breath gas analyzers for medical diagnostics; electromedical rehabilitative and pain management products for clinical and home use, namely, electrical nerve and muscle stimulators, ultrasonic stimulators, magnet therapy stimulators and laser therapy stimulators; inhalers for medical purposes; medical devices and apparatus, namely, ultrasound imaging apparatus, scanners and needle guides, and parts and fittings therefor; medical ultrasound apparatus; medical ultrasound apparatus to assist in the placement of central line catheters; nebulizer for administering medication in the form of a mist inhaled into the lungs, for treatment of respiratory diseases; nebulizers for respiration therapy; portable medical devices used for breathing exercises, namely, portable devices used for endogenous breathing exercises and for respiratory muscle training; sterile disposable oxygen humidifiers and nebulizers for respiratory therapy sold pre-filled with water; surgical apparatus for use in ophthalmic surgery; ultrasonic therapy machines and apparatus.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
In the present case, applicant’s proposed mark AIRPRO is similar to the registered mark AIRPRO When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this instance, the respective marks create the same general overall commercial impression because the marks share the same sound, appearance, and connotation created by the shared legally identical wording AIRPRO. A mark in typed or standard characters, like the applicant’s proposed mark, may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Thus, upon encountering applicant’s proposed mark AIRPRO for orthotics for wrist, hand, knee and elbow and registrant’s mark AIRPRO for aerosol dispensers for medical use; aerosol dispensers for medical purposes; aerosol masks for medical use; air filters for medical ventilators; alcohol breath testing units; apparatus for dispensing non-medical oxygen and aromatherapy that also utilizes light, sound, and vibration for relaxation therapy; blood glucose meter; body rehabilitation apparatus for medical purposes; breath gas analyzers for medical diagnostics; electromedical rehabilitative and pain management products for clinical and home use, namely, electrical nerve and muscle stimulators, ultrasonic stimulators, magnet therapy stimulators and laser therapy stimulators; inhalers for medical purposes; medical devices and apparatus, namely, ultrasound imaging apparatus, scanners and needle guides, and parts and fittings therefor; medical ultrasound apparatus; medical ultrasound apparatus to assist in the placement of central line catheters; nebulizer for administering medication in the form of a mist inhaled into the lungs, for treatment of respiratory diseases; nebulizers for respiration therapy; portable medical devices used for breathing exercises, namely, portable devices used for endogenous breathing exercises and for respiratory muscle training; sterile disposable oxygen humidifiers and nebulizers for respiratory therapy sold pre-filled with water; surgical apparatus for use in ophthalmic surgery; ultrasonic therapy machines and apparatus, consumers are likely to be confused and mistakenly believe that the respective closely related goods emanate from a common source.
Relatedness of the Goods
The applicant’s orthotics for wrist, hand, knee and elbow are closely related to the registrant’s aerosol dispensers for medical use; aerosol dispensers for medical purposes; aerosol masks for medical use; air filters for medical ventilators; alcohol breath testing units; apparatus for dispensing non-medical oxygen and aromatherapy that also utilizes light, sound, and vibration for relaxation therapy; blood glucose meter; body rehabilitation apparatus for medical purposes; breath gas analyzers for medical diagnostics; electromedical rehabilitative and pain management products for clinical and home use, namely, electrical nerve and muscle stimulators, ultrasonic stimulators, magnet therapy stimulators and laser therapy stimulators; inhalers for medical purposes; medical devices and apparatus, namely, ultrasound imaging apparatus, scanners and needle guides, and parts and fittings therefor; medical ultrasound apparatus; medical ultrasound apparatus to assist in the placement of central line catheters; nebulizer for administering medication in the form of a mist inhaled into the lungs, for treatment of respiratory diseases; nebulizers for respiration therapy; portable medical devices used for breathing exercises, namely, portable devices used for endogenous breathing exercises and for respiratory muscle training; sterile disposable oxygen humidifiers and nebulizers for respiratory therapy sold pre-filled with water; surgical apparatus for use in ophthalmic surgery; ultrasonic therapy machines and apparatus because the respective goods are marketed to the same type of customers in the same channels of trade. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
The attached internet evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, because the marks are legally identical and the goods are closely related, there is a likelihood of confusion as to the source of applicant’s goods. Consequently, the applicant’s mark is not entitled to registration.
INFORMATION ABOUT GOODS REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
The applicant must directly answer the following question(s) and/or provide the information requested:
1. Does AIRPRO or AIR PRO have any significance as applied to the goods other than trademark significance?
2. Does AIRPRO or AIR PRO have any significance in the relevant trade or industry other than trademark significance?
3. If available, the applicant will provide a website address at which the goods are offered and/or the mark is used. If no website is available, then the applicant will state this fact for the record.
4. Does the applicant manufacture or offer any of the goods that appear in the registrant’s identification of goods?
5. Is the applicant aware of any other company and/or person(s) that provides both the goods, in whole or in part, listed in both the applicant’s identification and the registrant’s identification? If so, the applicant must provide the name of the company and/or person(s) and any available website address for the same. The applicant need not provide more than five references per each cited registration.
QUESTIONS ABOUT THIS ACTION
If the applicant has technical questions about the TEAS response to Office action form, the applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and send technical questions to the TEAS Support Team at TEAS@uspto.gov via e-mail. Please include your name, telephone number, serial number and/or registration number, a description of the issue, including the name of the TEAS form you are having problems with (e.g., “Response to Office Action Form,” “Request for Extension of Time to File a Statement of Use,” etc.), and a screen shot of any error message that you are receiving. You should receive a response within two (2) hours if the e-mail message is submitted during normal business hours.
For status inquiries or copies of documents, an applicant may check the status of or view documents filed in the trademark and/or service mark application or registration twenty-four (24) hours a day, seven (7) days a week, using the Trademark Status and Document Retrieval (TSDR) database on the USPTO website at http://tsdr.gov.uspto.report/. To obtain this status or view these documents, enter the application serial number or registration number and click on “Status” or “Documents.” Do not attempt to check status until approximately four to five (4-5) days after submission of a filing, to allow sufficient time for all USPTO databases to be updated.
For all other non-legal matters, including petitions to revive or reinstate an application, please contact the Trademark Assistance Center (TAC). TAC may be reached by e-mail at TrademarkAssistanceCenter@uspto.gov or by telephone at (800) 786-9199. For non-technical matters, TAC is open from 8:30 a.m. to 8:00 p.m. Eastern Standard Time (EST), Monday through Friday, except on federal government holidays. A list of federal government holidays is available at the following website: http://www.opm.gov/policy-data-oversight/snow-dismissal-procedures/federal-holidays/.
If applicant has questions regarding the legal issues in this Office action, please call the assigned trademark examining attorney.
How to respond. Click to file a response to this nonfinal Office action
/Brian Pino/
Examining Attorney
Law Office 114
571.272.9209 Telephone
Brian.Pino2@uspto.gov
RESPONSE GUIDANCE