To: | PACT Pharma, Inc. (trademark.docket@butlersnow.com) |
Subject: | U.S. Trademark Application Serial No. 88686146 - PACT - 50180.202084 |
Sent: | February 20, 2020 06:41:08 PM |
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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88686146
Mark: PACT
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Correspondence Address:
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Applicant: PACT Pharma, Inc.
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Reference/Docket No. 50180.202084
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: February 20, 2020
DATABASE SEARCH:
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issue(s) 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. 2210152 and 5662537. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
STANDARD OF REVIEW
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 and/or services 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 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.
COMPARISON OF MARKS
Applicant’s mark consists of “PACT” in standard characters. The registered marks consist of “PACT” also in typed / standard character.
In the present case, applicant’s mark and both cited 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 and/or services. Id.
Therefore, the marks are confusingly similar.
COMPARISON OF GOODS AND SERVICES
Applicant offers a variety of pharmaceutical preparations for the treatment of genetic diseases, immunological diseases, cancer, and oncological diseases.
The services in the cited registrations consist of “scientific research and development” (Registration No. 5662537) and “providing cancer therapy information by telephone” (Registration No. 2210152).
There is plainly an overlap in the trade channels / fields of use with respect to Registration No. 2210152 in that the goods and services offered all deal with the subject of cancer.
As to Registration No. 5662537, The attached Internet evidence, consisting of screenshots from PFIZER, JOHNSON AND JOHNSON, and MERCK, offering a variety of pharmaceutical preparations including cancer treatments along with scientific research and development services, , establishes that the same entity commonly manufactures, produces, or provides the relevant goods and/or services and markets the goods and/or services under the same mark and that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s and registrant’s goods and/or services 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).
Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may present arguments and evidence in support of registration. However, applicant must address the issue(s) below.
IDENTIFICATION REQUIRES AMENDMENT
Pharmaceutical preparations and substances for the treatment of genetic diseases, immunological diseases and cancer; personalized cell therapies for medical use for the treatment of {specify condition}; biological preparations for medical purposes, namely, in the field of personalized cell therapies for the treatment of {specify condition}; pharmaceutical preparations for the treatment of cancer; anti-cancer preparations; pharmaceuticals, namely, immunotherapies for the treatment of {specify condition}; oncological preparations, namely, pharmaceutical products for the detection and treatment of cancer; biological preparations for the treatment of cancer and oncological conditions; pharmaceutical products for the treatment of cancer and oncological conditions
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.
How to respond. Click to file a response to this nonfinal Office action.
/Siddharth Jagannathan/
Siddharth Jagannathan
Trademark Examining Attorney
USPTO, Law Office 114
571-272-6563 (phone)
Siddharth.Jagannathan@uspto.gov
RESPONSE GUIDANCE