Response to Office Action

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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

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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 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/30/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88844273 MAGICATH(Standard Characters, see http://uspto.report/TM/88844273/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant respectfully requests reconsideration of the refusal of registration of its mark MAGICATG for robotically navigable catheters. The Office Action cites two distinct sets of marks: (1) Reg. No. 3,752,990 MAGIC3 for Urinary catheters Rochester Medical Corporation and Reg. No. 5,003,908 MAGIC3 GO Medical devices and apparatus, namely, intermittent catheters and parts and fittings therefor owned by Rochester Medical Corporation. (2) Reg. No. 4,076,134 MAGIC TOUCH Medical apparatus and instruments for treating cardiovascular disease (Sirolimus Drug Eluting Balloon). There are 4167 pending applications and issued registrations on marks that contain ?MAGIC?, including 84 in International Class 10. Customers are accustomed to distinguishing among various ?MAGIC? marks, which is illustrated by the fact that two separate groups of marks cited against applicant?s MAGIC mark all co-exist without apparent confusion. Against this background, there is room for applicant?s mark MAGIC, which is different from each of the cited marks, and which is used on goods that are readily distinguished from the good listed in the cited registration. The Marks are Different Applicant?s mark MAGICATH is different from each of the cited marks: MAGIC3 (3,752,990) and MAGIC3 GO (5,003,908); MAGIC TOUCH (4,076,134). MAGICATH is a unique, coined word. The marks are so different that the simply would not be mixed up by anyone, let alone medical professionals, who exercise a high degree of care in selecting the goods and services they use. In particular, the inclusion of TOUCH to the MAGIC TOUCH mark in Reg. No. 4,076,134 dramatically changes commercial impression of the two marks. Compare CLEAN (Reg. No. 5,331,754) with CLEAN TOUCH (Reg. No. 4,743,924) both in Class 1; FIRST (Reg. No. 1,640,145) and FIRST TOUCH (Reg. No. 3,345,099). This is even more the case with MAGICATH and MAGIC TOUCH, because MAGIC TOUCH is a well-known phrase with a meaning distinct from the made-up term MAGICATH. The Goods are Different Applicant?s goods, robotically navigable catheters, are very different from the goods listed in the cited registrations. Applicant?s goods are highly specialized devices adapted to be navigated through a patient?s body using applicant?s robotic navigation system. These goods are essentially useless without applicant?s robotic navigation system. This is apparent from the appearance and packaging making it virtually impossible for them to be confused with the products of the cited registrations. Applicant?s products are not purchased by anyone who does not already have applicant?s proprietary robotic navigation system. Likewise, the products of the cited registrations cannot be used with applicant?s proprietary robotic navigation system, and thus could not possibly be confused with applicant?s products. Applicant?s goods are particularly different the urinary catheters identified by MAGIC3 and MAGIC3 GO. While both are called ?catheters,? that is where the similarity ends. The MAGIC3 and MAGIC3 GO urinary catheters do not do what applicant?s robotically navigated catheters do; they used for entirely different purposes; by entirely different groups of medical practitioners. See, http://www.bardcare.com/consumers/products/view- products/intermittent- catheters/magic3-family/. Magic3 catheters are inserted in the urethra to remove urine from the bladder. They are not navigated through the body robotically or otherwise. Urologists and other medical professionals treating the urinary tract are not interested in, nor would they be confused by a differently named robotically navigable catheter. Applicant?s goods are also different from the MAGIC TOUCH drug eluting balloons. Balloon devices, and in particular drug eluting balloons are used for an entirely different purpose than a robotically navigated catheter, which is not a balloon device, and is not a substitute for such a device. Customers would not necessarily expect that these devices come from the same source, particularly since the marks MAGICATH and MAGIC TOUCH are different. For example Boston Scientific Scimed, Inc. owns Reg. No. 4,202,737 on ULTRA ICE for medical catheters and medical imaging catheters, while Arrow International, Inc. owns Reg. No. 2541455 on ULTRA 8 for intra-aortic balloon catheters. MAGIC TOUCH is used on drug eluting devices. Physicians who chose to use MAGIC TOUCH catheters are selecting them to administer and delivery specific drugs in specific doses to the walls of the patient?s blood vessels. See, http://www.conceptmedical.com/product/magic-touch/. A physician wanting to deliver this kind of therapy would not be confused by applicant?s differently named robotically navigable catheters, which are not drug eluting, and do not include an inflatable balloon. Likewise someone wanting a robotically navigable catheter would know immediately that the MAGIC TOUCH balloon device is not the right device because it is obviously not navigable with applicant?s navigation system. The Channels Of Trade are different The channels of trade are different. Applicant?s MAGICATH robotically navigable catheters are sold exclusively for use with applicant?s robotic navigation system. The only customers for the MAGICATH robotically navigable catheters are owners of applicant?s robotic navigation system. Applicant?s MAGICATH robotically navigable catheters have no other purpose. These are different purchasers that purchaser of either urinary catheters or druge-eluting catheters. CONCLUSION In summary, considering the large numbers of users of MAGIC trademarks generally, and in International Class 10 in particular, their peaceful coexistence evidenced by the fact that there are two separate groups of marks allegedly similar to applicant?s mark (and thus presumably with each other), the differences between applicant?s mark and each of the cited marks, and importantly the differences between applicant?s goods and the goods for the cited marks, are sufficient to ensure that confusion is unlikely. In particular, applicant wants to make clear that while all the products use the term ?catheter,? products associated with the cited registrations are not the same as applicant?s robotically navigated devices, they are not substitutes for, or even competitive with applicant?s robotically navigated devices, and could not be used with applicant?s robotic navigation system. Moreover the products associated with the registrations are selected and used by entirely different groups of physicians, for different types of procedures, in different types of patients. For at least these reasons, the refusal of registration should be withdrawn.
Correspondence Information (current):
      BRYAN K. WHEELOCK
      PRIMARY EMAIL FOR CORRESPONDENCE: bwheelock@hdp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bkwefile@hdp.com

The docket/reference number is 5236-2XXXXX.
Correspondence Information (proposed):
      Bryan K. Wheelock
      PRIMARY EMAIL FOR CORRESPONDENCE: bwheelock@hdp.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): bkwefile@hdp.com

The docket/reference number is 5236-2XXXXX.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Bryan K. Wheelock/     Date: 11/17/2020
Signatory's Name: Bryan K. Wheelock
Signatory's Position: Attorney, Member Missouri Bar

Signatory's Phone Number: 314-726-7505

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    BRYAN K. WHEELOCK
   HARNESS, DICKEY & PIERCE, PLC
   
   7700 BONHOMME, SUITE 400
   ST. LOUIS, Missouri 63105
Mailing Address:    Bryan K. Wheelock
   HARNESS, DICKEY & PIERCE, PLC
   7700 BONHOMME, SUITE 400
   ST. LOUIS, Missouri 63105
        
Serial Number: 88844273
Internet Transmission Date: Tue Nov 17 11:30:43 ET 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-202011171130431
31324-88844273-75054b029fe3b17839df3e60e
f5cda3b9deaa4d946a08b4239233144e220b2-N/
A-N/A-20201117112822835587