To: | SeaSpine Orthopedics Corporation (jdages@middletonlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88806808 - EXPLORER - ZT842-20126 |
Sent: | April 29, 2020 03:18:02 PM |
Sent As: | ecom117@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88806808
Mark: EXPLORER
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Correspondence Address: |
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Applicant: SeaSpine Orthopedics Corporation
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Reference/Docket No. ZT842-20126
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: April 29, 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
· “EXPLORER CASES” in U.S. Registration No. 4381787
· “EXPLORER AIR” in U.S. Registration No. 5706306
· “EXPLORER” in U.S. Registration No. 2958696
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration(s).
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
The marks are confusingly similar because they all begin with and feature the term “EXPLORER”.
Applicant’s mark is “EXPLORER” and registrants’ marks will be considered in turn.
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).
“EXPLORER CASES” & “EXPLORER AIR” in Reg. Nos. 4381787 & 5706306
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
All of the marks considered hereunder begin with and feature the shared term “EXPLORER.” The registered marks had added onto the end of the applied-for mark additional terms, such as “CASES” or “AIR”. However, these terms hold less weight for several reasons.
Further, in regard to the term “CASES”, the term is merely descriptive of registrant’s goods, and is explicitly disclaimed form the registration as such. 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).
Simply, there is a likelihood consumers would consider registrant’s marks as brand names for additional products under applicant’s “EXPLORER” product line. For example, “EXPLORER CASES” are likely to be perceived as cases made by “EXPLORER” for “EXPLORER” surgical instruments. Further, consumers are often known to use shortened forms of names, and it is highly likely that registrant and its mark would be referred to as “EXPLORER”. Cf. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring: “the users of language have a universal habit of shortening full names – from haste or laziness or just economy of words”).
The registered marks do contain design elements. However, this fails to obviate this refusal because 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)).
Since the marks begin with and feature the term “EXPLORER”, they are confusingly similar.
“EXPLORER” in U.S. Registration No. 2958696
In the present case, applicant’s mark is “EXPLORER” and registrant’s mark is “EXPLORER”. These 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. Id.
Therefore, the marks are confusingly similar.
Comparison of the Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Applicant’s goods are “Spinal implants composed of artificial material; Surgical implants for use in spinal surgery; Spinal devices, namely, interbody cages; Spinal devices, namely, interbody fusion devices; Implantable spinal devices, namely, interbody cages; Implantable spinal devices, namely, interbody fusion devices.”
The registrations will be considered in turn.
“EXPLORER CASES” in U.S. Registration No. 4381787
Registrant’s goods are, in relevant part, “Cases fitted for use by surgeons and doctors; Bags adapted for and sold with medical instruments” and “accessorized travelling cases fitted for surgical instruments.”
These cases are designed to hold surgical devices such as applicant’s "spinal implants” and “spinal devices” and are even “sold with” such medical instruments, as described in registrant’s identification of goods. Registrant’s cases are “fitted for use by surgeons and doctors,” that is, the very consumers who will purchase and use applicant’s surgical devices, and further, are designed for carrying such goods, and is often sold with such goods inside. The attached evidence from registrant’s site demonstrates that registrant makes cases for medical devices broadly, that is, for all types of medical devices, presumably those of applicant. See attached. As such, registrant’s cases are complementary with applicant’s surgical devices.
This is important because where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).
“EXPLORER AIR” in U.S. Registration No. 5706306
Registrant’s goods are “Medical apparatus and instruments for the visual assessment of fluorescence in human tissues during surgical procedures.”
The parties’ goods are related because they both help assist with spinal surgeries.
The attached evidence from Medgadget, NCBI, and SpringerLink demonstrate that registrant’s goods are designed to detect tumors before surgery, and the attached evidence from American Association of Neurological Surgeons demonstrates that tumors can and do appear on spines and are removed through spinal surgery. See attached. Thus, registrant’s goods are the type of goods used to prepare for spinal surgeries – surgeries that will use the surgical devices of applicant. These goods are in the same medical industry, in particular, that for surgery, and thus, will be purchased by the same class of consumers in the same channels of trade.
“EXPLORER” in U.S. Registration No. 2958696
The goods are closely related since they are both used during, and for, spinal surgeries.
Registrant’s goods are “disposable medical and surgical examination gloves” which can and will presumably be used when implanting applicant’s surgical spinal implants. The attached evidence from Spinal News and Ingentia both relate how spinal surgeons often wear two pairs of surgical gloves, one over the other, and how they are better able to handle surgical instruments of they take of the second pair of gloves. See attached. The attached evidence from Research Gate illustrates how important it is for spinal surgeons to wear gloves, since even one pair of gloves can get perforated, so, the attached article explains, “we would like to recommend double gloving and regular glove changing in these high-risk surgeries.”
All of this evidence demonstrates that spinal surgeons (such as those using applicant’s spinal implants and spinal devices) should and do use surgical gloves when conducting surgery, and even use two pairs of such gloves, layered on each other. Since both goods are purchased for the same consumers, to be used at the same time, for the same purpose of spinal surgery, the goods are closely related.
Conclusion
For these reasons, consumers are likely to encounter the parties’ goods in the same market channels. Given the strong similarities between the key elements of the parties’ marks, consumers encountering the marks in the same commercial contexts are likely to confuse the marks and mistake the underlying sources of related goods provided under the marks. Registration is refused to prevent such confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant should also note the following requirement.
IDENTIFICATION REQUIRES AMENDMENT
Some of the wording used to describe portions of applicant’s goods in the identification is indefinite and too broad and could include goods in other international classes. This wording must be clarified for the reasons listed below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “spinal implants” is indefinite, because spinal implants are classified according to their material composition: if they are made from artificial material they belong in class 10, but if they are comprised of living tissue, they belong in class 5. Applicant must specify the material composition, and make sure these goods are properly classified.
Applicant may substitute and/or select from the following wording, if accurate:
Scope Advisory. Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 may not later be reinserted. See TMEP §1402.07(e).
ID Manual. 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.
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
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.
Becker, Joseph (Trademark)
/Joseph Becker/
Trademark Examining Attorney, Law Office 117
United States PTO
(571) 270-5493
Joseph.Becker1@uspto.gov
RESPONSE GUIDANCE