Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 2194 (Rev 03/2012) |
OMB No. 0651-0054 (Exp 12/31/2020) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 88707416 |
LAW OFFICE ASSIGNED | LAW OFFICE 121 |
PETITION | |
PETITION STATEMENT | Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application. |
RESPONSE TO OFFICE ACTION | |
MARK SECTION | |
MARK | mark |
LITERAL ELEMENT | SHUTTLE PIN |
STANDARD CHARACTERS | YES |
USPTO-GENERATED IMAGE | YES |
MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
OWNER SECTION (current) | |
NAME | TriMed, Incorporated |
MAILING ADDRESS | 27533 Avenue Hopkins |
CITY | Santa Clarita |
STATE | California |
ZIP/POSTAL CODE | 91355 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
OWNER SECTION (proposed) | |
NAME | TriMed, Incorporated |
MAILING ADDRESS | 27533 Avenue Hopkins |
CITY | Santa Clarita |
STATE | California |
ZIP/POSTAL CODE | 91355 |
COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
XXXX | |
ARGUMENT(S) | |
The Examining Attorney has refused registration because of an alleged likelihood of confusion between marks (SHUTTLE and SHUTTLE SELECT) in commonly owned registrations and a mark (SUPER SHUTTLE) registered to a second owner. All three cited marks are registered in International Class 10 and relate to medical/surgical devices. The coexistence of these registrations, all including the word “Shuttle” and related to different medical products, highlights that other marks including prefixes or suffixes with “Shuttle” can coexist without a likelihood of confusion in the medical industry. In comparing the mark SHUTTLE with Applicant’s mark, the word “Pin” has significance in distinguishing the two marks, in the same way that “SELECT” and “SUPER”, in combination with “SHUTTLE”, distinguish over the mark SHUTTLE by itself. Respectfully, in its entirety, the Applicant’s mark clearly distinguishes over all three of the marks in the cited registrations adequately that its use, on the goods identified, would not create a likelihood of confusion with respect to any of the other cited marks on their respective goods. The Examining Attorney argues that the word “Shuttle” is the “dominant term” in all of the marks. Were that the case, the concurrent use of the marks SHUTTLE SELECT and SUPER SHUTTLE would create a likelihood of confusion as related to medical devices. This was determined not to be the case by reason of the simultaneous registration. It is respectfully submitted that the word “Pin” is adequately dominant that the Applicant’s mark, viewed in its entirety, is not confusingly similar to any of the cited marks. With respect to the comparison of goods, the Examining Attorney has concluded that “[a]pplicant’s and registrants’ medical devices all function in similar ways and are considered related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.” Applicant respectfully submits that the goods (Applicant’s and those in the cited registrations) are also adequately different to further support registration of Applicant’s mark, for reasons explained below relative to the refusal on the basis of Applicant’s mark being “merely descriptive.” In addressing the descriptiveness issue, it is helpful to consider the same in combination with the information about the goods required by the Examining Attorney. Applicant is submitting herewith drawings from its pending provisional patent application directed to what will be identified by Applicant as its “shuttle pin” system. As seen in Applicant’s patent application, an elongate body with a sharpened tip is utilized to create an opening in tissues, bone, etc. to draw a suture, carried in a slot, therethrough. Based upon the patent application disclosure in response to question A, “shuttle pins” are not a known type of device in the industry. In response to question B, the answer is “no.” The elongate component does not stay implanted. In response to question C, Applicant is not aware that competitors use the term “shuttle” in the medical field to describe structure to draw an elongate element into and through bone, tissue, etc. In response to question D, the Applicant’s goods are not “pins”, within the definition identified by the Examining Attorney -- that being “a device or action used to fasten things together or as a support.” Accordingly, in light of response to question D, the response to question E is likewise “no.” The device utilizes an elongate body but does not have a discrete head common to a “pin” construction as identified by the Examining Attorney. Accordingly, the Applicant’s goods do not perform a typical function of a “pin” so as to be potentially descriptive. Further, in each of the cited marks, the goods are identified as related to a pre-formed passage. SHUTTLE is used on “catheters.” SHUTTLE SELECT is used on “sheaths.” SUPER SHUTTLE is used on instruments for conveying a suture through a “portal or cannula.” Applicant’s goods and those in the cited registrations differ significantly. Further, viewing the term “shuttle pin”, one would not be given more than a suggestion of what Applicant’s goods may be. This is confirmed by the Examining Attorney’s argument that “[t]hus, applicant’s applied-for mark SHUTTLE PIN appears to connote the function and type of the applied-for goods, namely, a pin that is transported through the body.” Respectfully, this interpretation would suggest that the pin is transported through the body to perform a securing or fastening function, which is not the case. Thus, Applicant’s mark in its entirety is at most suggestive, but tends towards being more arbitrary in nature. Accordingly, withdrawal of the refusal to register Applicant’s mark is requested. |
|
EVIDENCE SECTION | |
EVIDENCE FILE NAME(S) | |
ORIGINAL PDF FILE | evi_389813034-20200915165 403521597_._88707416_Draw ings.PDF |
CONVERTED PDF FILE(S) (3 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\887\074\88707416\xml3\ POA0002.JPG |
\\TICRS\EXPORT18\IMAGEOUT 18\887\074\88707416\xml3\ POA0003.JPG | |
\\TICRS\EXPORT18\IMAGEOUT 18\887\074\88707416\xml3\ POA0004.JPG | |
GOODS AND/OR SERVICES SECTION (current) | |
INTERNATIONAL CLASS | 010 |
DESCRIPTION | |
Surgical device, namely, a device for advancing an elongate flexible component through a part of a human body | |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (proposed) | |
INTERNATIONAL CLASS | 010 |
TRACKED TEXT DESCRIPTION | |
FINAL DESCRIPTION | |
Surgical device, namely, a surgical device for advancing an elongated flexible component through a part of a human body | |
FILING BASIS | Section 1(b) |
CORRESPONDENCE INFORMATION (current) | |
NAME | JOHN S. MORTIMER |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | docketing@woodphillips.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
DOCKET/REFERENCE NUMBER | 10718T00090U |
CORRESPONDENCE INFORMATION (proposed) | |
NAME | John S. Mortimer |
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | docketing@woodphillips.com |
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | lbowen@woodphillips.com |
DOCKET/REFERENCE NUMBER | 10718T00090U |
PAYMENT SECTION | |
TOTAL AMOUNT | 100 |
TOTAL FEES DUE | 100 |
SIGNATURE SECTION | |
PETITION SIGNATURE | /John S. Mortimer/ |
SIGNATORY'S NAME | John S. Mortimer |
SIGNATORY'S POSITION | Attorney of record, Illinois bar member |
SIGNATORY'S PHONE NUMBER | 312-876-2113 |
DATE SIGNED | 09/15/2020 |
RESPONSE SIGNATURE | /John S. Mortimer/ |
SIGNATORY'S NAME | John S. Mortimer |
SIGNATORY'S POSITION | Attorney of record, Illinois bar member |
SIGNATORY'S PHONE NUMBER | 312-876-2113 |
DATE SIGNED | 09/15/2020 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Tue Sep 15 17:06:55 ET 2020 |
TEAS STAMP | USPTO/POA-XX.XX.XXX.XX-20 200915170655784353-887074 16-750a9f3c8974b885045986 048947faea8dd84b18fbf9a1f ad23fb4dd927253d25b-DA-06 557726-202009151654035215 97 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 2194 (Rev 03/2012) |
OMB No. 0651-0054 (Exp 12/31/2020) |
The Examining Attorney has refused registration because of an alleged likelihood of confusion between marks (SHUTTLE and SHUTTLE SELECT) in commonly owned registrations and a mark (SUPER SHUTTLE) registered to a second owner.
All three cited marks are registered in International Class 10 and relate to medical/surgical devices. The coexistence of these registrations, all including the word “Shuttle” and related to different medical products, highlights that other marks including prefixes or suffixes with “Shuttle” can coexist without a likelihood of confusion in the medical industry.
In comparing the mark SHUTTLE with Applicant’s mark, the word “Pin” has significance in distinguishing the two marks, in the same way that “SELECT” and “SUPER”, in combination with “SHUTTLE”, distinguish over the mark SHUTTLE by itself.
Respectfully, in its entirety, the Applicant’s mark clearly distinguishes over all three of the marks in the cited registrations adequately that its use, on the goods identified, would not create a likelihood of confusion with respect to any of the other cited marks on their respective goods.
The Examining Attorney argues that the word “Shuttle” is the “dominant term” in all of the marks. Were that the case, the concurrent use of the marks SHUTTLE SELECT and SUPER SHUTTLE would create a likelihood of confusion as related to medical devices. This was determined not to be the case by reason of the simultaneous registration.
It is respectfully submitted that the word “Pin” is adequately dominant that the Applicant’s mark, viewed in its entirety, is not confusingly similar to any of the cited marks.
With respect to the comparison of goods, the Examining Attorney has concluded that “[a]pplicant’s and registrants’ medical devices all function in similar ways and are considered related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.”
Applicant respectfully submits that the goods (Applicant’s and those in the cited registrations) are also adequately different to further support registration of Applicant’s mark, for reasons explained below relative to the refusal on the basis of Applicant’s mark being “merely descriptive.” In addressing the descriptiveness issue, it is helpful to consider the same in combination with the information about the goods required by the Examining Attorney.
Applicant is submitting herewith drawings from its pending provisional patent application directed to what will be identified by Applicant as its “shuttle pin” system.
As seen in Applicant’s patent application, an elongate body with a sharpened tip is utilized to create an opening in tissues, bone, etc. to draw a suture, carried in a slot, therethrough.
Based upon the patent application disclosure in response to question A, “shuttle pins” are not a known type of device in the industry.
In response to question B, the answer is “no.” The elongate component does not stay implanted.
In response to question C, Applicant is not aware that competitors use the term “shuttle” in the medical field to describe structure to draw an elongate element into and through bone, tissue, etc.
In response to question D, the Applicant’s goods are not “pins”, within the definition identified by the Examining Attorney -- that being “a device or action used to fasten things together or as a support.”
Accordingly, in light of response to question D, the response to question E is likewise “no.” The device utilizes an elongate body but does not have a discrete head common to a “pin” construction as identified by the Examining Attorney.
Accordingly, the Applicant’s goods do not perform a typical function of a “pin” so as to be potentially descriptive.
Further, in each of the cited marks, the goods are identified as related to a pre-formed passage. SHUTTLE is used on “catheters.” SHUTTLE SELECT is used on “sheaths.” SUPER SHUTTLE is used on instruments for conveying a suture through a “portal or cannula.” Applicant’s goods and those in the cited registrations differ significantly.
Further, viewing the term “shuttle pin”, one would not be given more than a suggestion of what Applicant’s goods may be. This is confirmed by the Examining Attorney’s argument that “[t]hus, applicant’s applied-for mark SHUTTLE PIN appears to connote the function and type of the applied-for goods, namely, a pin that is transported through the body.”
Respectfully, this interpretation would suggest that the pin is transported through the body to perform a securing or fastening function, which is not the case. Thus, Applicant’s mark in its entirety is at most suggestive, but tends towards being more arbitrary in nature.
Accordingly, withdrawal of the refusal to register Applicant’s mark is requested.