To: | Penumbra, Inc. (trademarks@sflaw.com) |
Subject: | U.S. Trademark Application Serial No. 88606417 - LIGHTNING - 06907/005 |
Sent: | December 16, 2019 03:24:14 PM |
Sent As: | ecom123@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 Attachment - 42 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88606417
Mark: LIGHTNING
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Correspondence Address: ONE MARITIME PLAZA, 18TH FLOOR
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Applicant: Penumbra, Inc.
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Reference/Docket No. 06907/005
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 16, 2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is LIGHTNING in standard characters for “Computer hardware and software for use with medical devices; Computer hardware and software, for use with medical devices, to monitor, control, and adjust aspiration pumps, valves, catheters, and pressure sensors” in Class 9, and “Integrated medical device systems, namely, medical devices and computer hardware and software for treatment of vascular disease; medical devices for treatment of vascular disease, namely, aspiration pumps, valves, catheters, and pressure sensors” in Class 10.
Registrant’s mark is LIGHTNING GLOVES in standard characters for “Disposable latex gloves for laboratory use; Disposable plastic gloves for laboratory use; Gloves for protection against accidents; Protective gloves for industrial use; Protective work gloves” in Class 9 and “Gloves for medical use; Gloves for use in hospitals; Latex medical gloves; Surgical gloves” in Class 10.
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.
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)); TMEP §1207.01(b).
In this case, applicant’s mark is LIGHTNING and registrant’s mark is LIGHTNING GLOVES.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). The term LIGHTNING in registrant’s mark is the dominant term for likelihood of confusion purposes for several reasons.
First, registrant’s mark starts with the term LIGHTNING, which is identical to the entirety of applicant’s mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Additionally, disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). In this case, registrant has disclaimed the term GLOVES as being descriptive of its glove products in Classes 9 & 10, and thus, this wording is not as significant in creating a commercial impression as the term LIGHTNING.
Therefore, consumers are likely to see applicant’s mark and registrant’s marks together and focus on this identical term LIGHTNING. This is especially true, considering that while applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Therefore, the marks are confusingly similar.
Comparison of the Goods
In this case, applicant’s goods are “Computer hardware and software for use with medical devices; Computer hardware and software, for use with medical devices, to monitor, control, and adjust aspiration pumps, valves, catheters, and pressure sensors” in Class 9, and “Integrated medical device systems, namely, medical devices and computer hardware and software for treatment of vascular disease; medical devices for treatment of vascular disease, namely, aspiration pumps, valves, catheters, and pressure sensors” in Class 10.
Registrant’s goods are “Disposable latex gloves for laboratory use; Disposable plastic gloves for laboratory use; Gloves for protection against accidents; Protective gloves for industrial use; Protective work gloves” in Class 9 and “Gloves for medical use; Gloves for use in hospitals; Latex medical gloves; Surgical gloves” in Class 10.
- QuickMedical Medical Equipment and Supplies
o Various types of gloves: http://www.quickmedical.com/exam_gloves/index.html#
o Vascular medical devices, including those with related computer hardware and software: http://www.quickmedical.com/search/vascular
- McKesson
o Vascular medical devices, including those with related computer hardware and software: http://mms.mckesson.com/catalog?query=vascular
o Various types of gloves: http://mms.mckesson.com/catalog/category?node=36578
- Boston Scientific
o Vascular medical devices: http://www.bostonscientific.com/content/gwc/en-US/medical-specialties/vascular-surgery/products.html
o Radiation Examination Gloves: http://www.bostonscientific.com/en-US/products/accessories/esp-gloves.html
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).
Considering all of the above, applicant’s mark is refused registration due to a likelihood of confusion with registrant’s mark under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements and take note of the advisory set forth below.
SECTION 2(d) ADVISORY – PRIOR-FILED APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
IDENTIFICATION OF GOODS
The identification of goods contains wording that is overly-broad and indefinite and must be amended. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). The specific issues are set forth below.
Class 9
Class 10
The wording throughout is overly-broad and indefinite, and must be amended. Specifically, applicant has included indefinite identifications in Class 10, such as medical devices in the nature of valves, while also including definite and indefinite identifications that belong in Class 9, such as “computer hardware and software” and medical devices in the nature of “pressure sensors.”
Applicant must clarify the nature of these goods as systems that primarily belong in Class 10, which also comprise of parts included in Class 9, or must remove the Class 9 goods from the Class 10 identification, and clarify only the indefinite identifications within Class 10. The amendments suggested below are to retain the Class 9 goods as comprising a larger Class 10 medical device or medical device system. Should applicant require additional suggestions for removing the Class 9 goods from Class 10, please contact the undersigned trademark examining attorney. The suggested amendments are emphasized below.
The applicant may adopt the following, if accurate:
Class 9: Computer hardware and recorded
software for use with controlling medical devices; Computer hardware and recorded software, for use with medical devices, namely, to monitor, control, and adjust aspiration pumps, valves, catheters, and pressure sensors
Class 10: Integrated medical device systems, namely, medical devices for treatment of vascular disease, and also comprising computer hardware and recorded software for treatment of vascular disease, sold as a unit; medical devices for treatment of vascular disease, namely, medical devices comprising aspiration vacuum pumps for medical purposes, artificial cardiac valves, catheters, and also comprising pressure sensors sold as a unit
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Caile Reid/
Caile Reid
Examining Attorney
Law Office 123
(571) 270-0764
caile.reid@uspto.gov
RESPONSE GUIDANCE