To: | Life Spine, Inc. (bruce@im-iplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88836437 - TRULIFT - LSP169 |
Sent: | June 12, 2020 10:43:41 AM |
Sent As: | ecom110@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. 88836437
Mark: TRULIFT
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Correspondence Address: |
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Applicant: Life Spine, Inc.
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Reference/Docket No. LSP169
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: June 12, 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:
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Comparison of Marks
Applicant seeks to register TRULIFT (standard characters), while the registrant owns and uses the mark TRULIF (standard characters).
In the present case, applicant’s mark is TRULIFT and registrant’s mark is TRULIF (without the “T”). 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 the registrant’s respective goods. Id.
Therefore, the marks are confusingly similar and likelihood of confusion is extremely high.
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Comparison of Goods & Services
In addition, the compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Here, applicant seeks to register its mark for “Spine implants, namely, spinal interbody cages and vertebral body replacement cages,” while the registrant uses its mark on “Spinal surgery services.”
Consumers may mistakenly believe that the registrant is using its own spinal goods in its surgical practice.
In sum, since the marks are identical and the goods and services related, there is a substantial likelihood that purchasers would be confused as to the source of the goods and services. As such, the mark is refused under Section 2(d) of the Trademark Act.
If applicant chooses to respond to the refusal to register, applicant must also respond to the following requirement(s).
REQUIREMENT(S)
IDENTIFICATION OF GOODS UNACCEPTABLE
Applicant must specify the common commercial or generic name for the goods and/or services. See TMEP §1402.01. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses and/or describe the nature of the services as well as their main purpose, channels or trade, and the intended consumer(s). See id.
Applicant may adopt the following wording, if accurate:
Class 010:
Spinal implants composed of artificial materials in the nature of spinal interbody cages and vertebral body replacement cages.
Again, 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.
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.
/Tricia Sonneborn/
Examining Attorney – Law Office 110
United States Patent & Trademark Office
(571) 272-9225
tricia.sonneborn@uspto.gov
RESPONSE GUIDANCE
· If needed, find contact information for the supervisor of the office or unit listed in the signature block.