Offc Action Outgoing

ODYSSEY

Intelerad Medical Systems, Inc.

U.S. Trademark Application Serial No. 88706702 - ODYSSEY - 6085-19

To: Intelerad Medical Systems, Inc. (sstavish@sheridanross.com)
Subject: U.S. Trademark Application Serial No. 88706702 - ODYSSEY - 6085-19
Sent: March 11, 2020 12:08:27 PM
Sent As: ecom101@uspto.gov
Attachments: Attachment - 1
Attachment - 2

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

U.S. Application Serial No. 88706702

 

Mark:  ODYSSEY

 

 

 

 

Correspondence Address: 

SABRINA C. STAVISH

SHERIDAN ROSS P.C.

1560 BROADWAY SUITE 1200

DENVER, CO 80202

 

 

 

Applicant:  Intelerad Medical Systems, Inc.

 

 

 

Reference/Docket No. 6085-19

 

Correspondence Email Address: 

 sstavish@sheridanross.com

 

 

 

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:  March 11, 2020

 

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.

 

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 No. 4091213.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

                      

The examining attorney has determined that contemporaneous use of the mark ODYSSEY for use on “AUDIOVISUAL MONITORS, COMPUTER HARDWARE, COMPUTER PERIPHERALS, AND SOFTWARE, ALL FOR MONITORING AND CONTROLLING REMOTE MEDICAL PROCEDURES, FOR PROVIDING AND DISPLAYING CONTEXT-SENSITIVE MEDICAL INFORMATION TO MEDICAL PROFESSIONALS, AND FOR SEARCHING MEDICAL-RELATED DATABASES” and in connection with “Web based service featuring software to manage artificial intelligence algorithms for analyzing and tiraging medical data and exams to facilitate automatic escalation and quantification of medical information” would be likely to cause confusion for the following reasons.

                    

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

                                            

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

                                                                            

A.  The Marks

The marks are the same – ODYSSEY.

 

B.  The Goods

Both parties identify software that is used in providing medical information.

 

The applicant is advised that 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 and/or services 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).

 

And finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

C.  Conclusion

For the foregoing reasons, the applicant’s ODYSSEY is refused registration under Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

INFORMALITY

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Identification of Services

The identification of services is indefinite and must be clarified because the nature of the services is unclear.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant may adopt the following identification, if accurate:  “Providing temporary use of a non-downloadable web application that manages artificial intelligence algorithms for analyzing and tiraging medical data and exams to facilitate automatic escalation and quantification of medical information” in Class 42, “Providing a web site featuring temporary use of non-downloadable software that manages artificial intelligence algorithms for analyzing and tiraging medical data and exams to facilitate automatic escalation and quantification of medical information” in Class 42, and/or “Providing temporary use of a web-based software application that manages artificial intelligence algorithms for analyzing and tiraging medical data and exams to facilitate automatic escalation and quantification of medical information” in Class 42.

 

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.

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

/Katherine Stoides/

Examining Attorney

571-272-9230

katherine.stoides@uspto.gov (unofficial use only)

 

 

 

RESPONSE GUIDANCE

  • Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

 

 

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]

U.S. Trademark Application Serial No. 88706702 - ODYSSEY - 6085-19

To: Intelerad Medical Systems, Inc. (sstavish@sheridanross.com)
Subject: U.S. Trademark Application Serial No. 88706702 - ODYSSEY - 6085-19
Sent: March 11, 2020 12:08:28 PM
Sent As: ecom101@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on March 11, 2020 for

U.S. Trademark Application Serial No. 88706702

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Katherine Stoides/

Examining Attorney

571-272-9230

katherine.stoides@uspto.gov (unofficial use only)

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from March 11, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”

 

 

 


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