To: | RIVERPOINT MEDICAL, LLC (tim@intproplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88710581 - SPECTRA - RI4.203.TM |
Sent: | March 03, 2020 11:38:07 AM |
Sent As: | ecom121@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88710581
Mark: SPECTRA
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Correspondence Address: TIMOTHY E. SIEGEL PATENT LAW, PLLC
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Applicant: RIVERPOINT MEDICAL, LLC
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Reference/Docket No. RI4.203.TM
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: March 03, 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.
SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Mark Description Amendment Required
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4033679 and 5625315. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is “SPECTRA” and design, for use with:
Class 10: Surgical headlights
The registered marks (same owner) are as follows:
U.S. Registration No. 5625315 “SPECTRA LEADING EDGE MEDICAL DEVICES” and design, for use with:
Class 10: Needles for medical use, namely, epidural needles, spinal needles, straight and non-coring huber and cannula needles, guide wire introducers for radio frequency needles, custom needles made to customer specification and coated needles, glass and plastic loss of resistance (LOR) syringes; medical and surgical instruments, namely, hypodermic tubing and wire, brass and steel metal fittings for needles; disposable surgical instruments, namely, scalpels, safety scalpels, and blades; surgical instruments for dental use; surgical sponge applicators; biohazard bags for medical waste and surgical plastic rulers in the nature of devices for measuring wounds
U.S. Registration No. 4033679 “SPECTRA MEDICAL DEVICES, INC.”, for use with:
Class 10: Needles for medical use, namely, epidural needles, spinal needles, straight and non-coring huber and cannula needles, guide wire introducers for radio frequency needles, custom needles (made to customer specification) and coated needles, glass and plastic loss of resistance (LOR) syringes; medical and surgical instruments, namely, hypodermic tubing and wire, brass and steel metal fittings for needles; disposable scalpels, blades and safety scalpels; surgical instruments for dental use; surgical sponge applicators; and surgical plastic rulers
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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of 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).
As Compared to Registration No. 5625315
Applicant's mark is “SPECTRA” and design, and the registrant's mark is “SPECTRA LEADING EDGE MEDICAL DEVICES” and design. Note that when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Thus, the word portions of the parties’ marks are more significant than the design elements because consumers will request the parties’ goods by using the wording in the marks.
In this case, the word “SPECTRA” is presented first in the registrant's mark and in large, prominent font. Thus, consumers will be more inclined to focus on this wording in the registrant's mark because it is more likely to be noticed by consumers first. Here, the entirety of the wording in applicant's mark is identical to this prominent, lead wording in the registrant's mark.
Because the dominant portions of applicant's and the registrant's marks are identical, the marks are confusingly similar.
As Compared to Registration No. 4033679
Applicant's mark is “SPECTRA” and design, and the registrant's mark is “SPECTRA MEDICAL DEVICES, INC.” where the wording “MEDICAL DEVICES, INC.” is disclaimed. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). 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). Thus, the wording “SPECTRA” is the dominant portion of the registrant's mark.
As discussed above, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. As such, the word portion of applicant's mark is more significant than the design element because consumers will request the applicant's goods by using the wording in the mark.
Here, the dominant wording in both the applicant's and the registrant's marks is identical, namely the word “SPECTRA”. Because the parties’ marks share identical terms, the marks are confusingly similar.
Comparison of Goods
Applicant's goods are surgical headlights, and the registrant's goods include surgical needles and cannula needles. Applicant's and the registrant's goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from BR Surgical, Integra, and Stille showing surgical headlights, surgical needles, and cannula needles provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
Conclusion
The relatedness of the goods here, coupled with the similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
MARK DESCRIPTION AMENDMENT REQUIRED
To clarify whether color is claimed as a feature of the mark, applicant may satisfy one of the following:
(1) If color is not a feature of the mark, applicant must submit an amended description of the mark that omits any reference of color. See TMEP §§807.07(a)(ii), 808.02. The following is suggested, if accurate:
The mark consists of a design having an overall circular shape that is comprised of columns of smaller shaded circles which extend outwards and decrease in size. Below this circular design is presented the stylized wording “SPECTRA”.
(2) If color is a feature of the mark, applicant must (a) submit a new drawing showing the mark in color, (b) list all the colors that are a feature of the mark, and (c) amend the description, if appropriate, to specify where all the colors appear in the literal and design elements of the mark. 37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a)-(a)(ii). Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
The following color claim and description are suggested, if accurate:
Color claim: “The colors {indicate colors claimed} are claimed as a feature of the mark.”
Description: “The mark consists of a design having an overall circular shape in the colors {indicate specific colors presented} that is comprised of columns of smaller shaded circles which extend outwards and decrease in size. Below this circular design is presented the stylized wording “SPECTRA” in the color {indicate color of font}.”’
Note: If applicant amends the application to claim color, applicant would need to amend its mark drawing to a corresponding color drawing.
For more information about drawings and instructions on how to submit a new drawing and a color claim and/or description online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
RESPONSE GUIDELINES
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.
How to respond. Click to file a response to this nonfinal Office action.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE