To: | Specialty Surgical Instrumentation Inc. (tsullivan@hayes-soloway.com) |
Subject: | U.S. Trademark Application Serial No. 88583388 - VERITY - SSI 19.10 US |
Sent: | February 25, 2020 09:07:51 AM |
Sent As: | ecom119@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88583388
Mark: VERITY
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Correspondence Address:
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Applicant: Specialty Surgical Instrumentation Inc.
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Reference/Docket No. SSI 19.10 US
Correspondence Email Address: |
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FINAL OFFICE ACTION
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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: February 25, 2020
This Office Action is in response to applicant’s communication filed on December 19, 2019.
In a previous Office Action dated October 2, 2019, the Trademark Examining Attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal – Likelihood of Confusion. In addition, applicant was required to satisfy the following requirement: Request for Information.
Based on applicant’s response, the Trademark Examining Attorney notes that the following requirement has been satisfied: Request for Information. See TMEP §§713.02, 714.04.
Further, the Trademark Examining Attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2795545 and 2942541. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registrations.
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 and/or services. 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.
In this case, applicant is seeking to register VERITY in standard characters for “Surgical instruments and equipment, namely, irrigating and non-irrigating bipolar forceps, ligature passers, vessel supporters, nerve hooks, elevators, curettes, dissectors, needle holders, forceps, scissors, retractors, and suction tubes” in International Class 010.
Registrant has registered the following two marks:
U.S. Registration No. 2795545 has registered VERITY in standard characters in International Class 010 for “medical instruments, namely cardiac pacing systems and pulse generators for generating heart stimulating pulses.”
U.S. Registration No. 2942541 has registered VERITY ADX in standard characters in International Class 010 for “Implantable cardiac stimulators, implantable cardiac monitors.”
COMPARISON OF THE MARKS
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
U.S. Registration No. 2795545
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is VERITY and registrant’s mark is VERITY. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Applicant’s December 19, 2019 response does not argue to the contrary.
U.S. Registration No. 2942541
Here, applicant’s mark is fully subsumed within registrant’s mark, as applicant has removed “ADX” from registrant’s mark. This does not overcome the otherwise similar nature of the marks.
Applicant’s December 19, 2019 response does not argue to the contrary.
Therefore, based on these considerations, the marks are confusingly similar.
COMPARISON OF THE GOODS
Here, applicant’s goods are general surgical tools used in an operating room. Here, registrant’s goods are “medical instruments, namely cardiac pacing systems and pulse generators for generating heart stimulating pulses” and “Implantable cardiac stimulators [and] implantable cardiac monitors.” The previously attached evidence from Medical Expo, the Mayo Clinic, Pumping Marvellous and the Johns Hopkins showing that these goods are generally surgically implanted, as registrant’s identifications state. See evidence attached to October 2, 2019 Office Action. Therefore, applicant’s goods are used in order to surgically place registrant’s goods into a patient.
In addition to the goods being complementary in nature, the Examining Attorney attaches evidence from Medtronic showing that applicant and registrant’s goods are often sold together under the same mark. See attached. It is therefore reasonable for consumers to expect the goods to be provided utilizing the same mark. 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).
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
Applicant first notes that “none of [registrant’s] goods would be classified as surgical instruments or surgical equipment.” Applicant also observers that registrant has deleted certain goods from the identification in U.S. Registration No. 2942541 in 2010. In applicant’s view, this demonstrates “that the registrant was not using, nor intended to use, the mark in connection with a larger variety of goods than those currently included in the registration.”
As noted above, the issue is that the goods are complementary in nature, not that they are the same. It is therefore immaterial that registrant’s goods are not surgical instruments or equipment. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
The crux of the issue is that applicant’s goods are surgical instruments, which applicant does not deny, and are therefore used in surgical settings and operations. Moreover, even if registrant removed some goods in 2010, registrant is entitled to full protection for the entire scope of goods currently contained in its registration.
Next, applicant specifically states that its goods are not marketed for cardiac surgical use, but rather intends to market them as neurosurgical instruments. Relatedly, applicant argues that its consumers, “highly-educated surgeons” are sophisticated consumers that would exercise great care in the purchase of the relevant goods.
This is unpersuasive for several reasons, first, whether or not applicant chooses to market its goods for cardiac surgery is purely a business decision. Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Second, although surgeons may be more sophisticated purchasers, this does not resolve the issue. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Finally, to the extent there could be perceived differences among the goods, which applicant does not deny are complementary, as noted above, the respective marks are identical as to U.S. Registration No. 2795545 and identical in part as to U.S. Registration No. 2942541. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Based on these considerations, the goods are deemed related for Section 2(d) purposes.
CONCLUSION
Overall, because the marks are identical in whole and in part and the goods are related, a likelihood of confusion arises as to the underlying source of applicant’s goods. Moreover, applicant’s arguments to the contrary are unconvincing. Accordingly, the refusal to register pursuant to Section 2(d) of the Trademark Act is hereby maintained and made FINAL.
IDENTIFICATION OF GOODS REQUIREMENT (ADVISORY ONLY)
In response to the previously-issued Request for Information, applicant has stated that its goods are marketed for neurosurgery or neurological procedures.
Therefore, to obviate the Section 2(d) refusal, applicant is advised that it may adopt the following amended identification, if accurate, changes are shown in bold:
IC 010: Surgical instruments and equipment for use in neurosurgery and neurological surgery, namely, irrigating and non-irrigating bipolar forceps, ligature passers, vessel supporters, nerve hooks, elevators, curettes, dissectors, needle holders, forceps, scissors, retractors, and suction tubes
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
TELEPHONE/E-MAIL RESOLUTION SUGGESTED
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Jared M. Mason/
Trademark Examining Attorney
Law Office 119
(571) 272-4146
Jared.Mason@uspto.gov
RESPONSE GUIDANCE