To: | ANKON MEDICAL TECHNOLOGIES (SHANGHAI) CO ETC. (tm-uspto@pearlcohen.com) |
Subject: | U.S. Trademark Application Serial No. 88945659 - INTRAMARX - T-596773-US |
Sent: | September 08, 2020 10:40:47 AM |
Sent As: | ecom107@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88945659
Mark: INTRAMARX
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Correspondence Address: PEARL COHEN ZEDEK LATZER BARATZ LLP
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Applicant: ANKON MEDICAL TECHNOLOGIES (SHANGHAI) CO ETC.
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Reference/Docket No. T-596773-US
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: September 08, 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
· Section 2(d) Refusal – Likelihood of Confusion
· Identification of Goods Requires Amendment
· Entity Unclear
· Foreign Registration Required
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3239601 and 5043321. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 and/or services. 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.
Applicant has applied to register the mark “INTRAMARX” in standard characters for use in connection with “diagnostic preparations for veterinary purposes; diagnostic preparations for medical purposes; biological preparations for medical purposes; medical radiation imaging material; medicines for human purposes; drugs for medical purposes; Sports bra; dietetic foods adapted for medical purposes; vitamin preparations; chemical preparations for pharmaceutical purposes” in International Class 5 and “veterinary apparatus and instruments; Special truck; physiotherapy apparatus; endoscopy cameras for medical purposes; brushes for cleaning body cavities; medical apparatus and instruments; gastroscopes; testing apparatus for medical purposes / apparatus for use in medical analysis; diagnostic apparatus for medical purposes; nursing appliances” in International Class 10.
The mark in U.S. Registration No. 3239601 is “INTRAMAX” in standard characters for use in connection with “nutritional supplement” in International Class 5.
The mark in U.S. Registration No. 5043321 is “ENTRA” in standard characters for use in connection with “Medical imaging apparatus” in International Class 10.
Comparison of the 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).
In this case, applicant’s mark is “INTRAMARX” and the registrants mark are “INTRAMAX” and “ENTRA” respectively.
Additionally, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). With respect to the mark in U.S. Registration No. 3239601, the marks are highly similar. Both marks begin with the identical dominant prefix “INTRA,” with the only difference between the marks being the inclusion of the letter “R” by the applicant.
With respect to the mark in U.S. Registration No. 3239601, slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012). Additionally, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part. The applicant has merely added the wording “MARX” to the phonetic equivalent of registrant’s “ENTRA.”
Because the marks in this case look and sound similar and create the same commercial impression, the marks are considered similar for likelihood of confusion purposes.
Comparison of the Goods
The applicant’s relevant goods include “diagnostic preparations for veterinary purposes; diagnostic preparations for medical purposes; biological preparations for medical purposes; medical radiation imaging material; medicines for human purposes; drugs for medical purposes; Sports bra; dietetic foods adapted for medical purposes; vitamin preparations; chemical preparations for pharmaceutical purposes” in International Class 5 and “veterinary apparatus and instruments; Special truck; physiotherapy apparatus; endoscopy cameras for medical purposes; brushes for cleaning body cavities; medical apparatus and instruments; gastroscopes; testing apparatus for medical purposes / apparatus for use in medical analysis; diagnostic apparatus for medical purposes; nursing appliances” in International Class 10.
The relevant goods of the mark in U.S. Registration No. 3239601 include “nutritional supplement” in International Class 5.
The relevant goods of the mark in U.S. Registration No. 5043321 include “Medical imaging apparatus” in International Class 10.
With respect to U.S. Registration No. 3239601, the application uses broad wording to describe “medicines for human purposes; drugs for medical purposes; vitamin preparations,” which presumably encompasses all goods of the type described, including registrant’s more narrow “nutritional supplement.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
With respect to U.S. Registration No. 5043321, the application uses broad wording to describe “veterinary apparatus and instruments; physiotherapy apparatus; endoscopy cameras for medical purposes; medical apparatus and instruments; gastroscopes; testing apparatus for medical purposes / apparatus for use in medical analysis; diagnostic apparatus for medical purposes; nursing appliances,” which presumably encompasses all goods of the type described, including registrant’s more narrow “Medical imaging apparatus.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Because the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.
Identification of Goods Requires Amendment
Applicant submitted the following identification of goods with the application:
International Class 5
diagnostic preparations for veterinary purposes; diagnostic preparations for medical purposes; biological preparations for medical purposes; medical radiation imaging material; medicines for human purposes; drugs for medical purposes; Sports bra; dietetic foods adapted for medical purposes; vitamin preparations; chemical preparations for pharmaceutical purposes
International Class 10
veterinary apparatus and instruments; Special truck; physiotherapy apparatus; endoscopy cameras for medical purposes; brushes for cleaning body cavities; medical apparatus and instruments; gastroscopes; testing apparatus for medical purposes / apparatus for use in medical analysis; diagnostic apparatus for medical purposes; nursing appliances
The above bolded wording in the identification of goods requires amendment because it does not identify the goods with enough specificity to make clear the scope of the goods offered by applicant. Further, the wording could identify goods in more than one international class and is thus overbroad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.
Therefore, the identification of goods as submitted with the application requires the following amendments.
International Class 5
The wording “biological preparations for medical purposes” is indefinite as written and requires additional specificity as to the nature of the goods. Applicant must use additional wording to clarify either the specific goods being offered or their intended use.
The wording “medical radiation imaging material” is similarly indefinite because the specific nature of the goods is unclear. Applicant must provide additional clarity as to the specific goods.
The wording “medicines for human purposes” and “drugs for medical purposes” is indefinite because the specific use of the goods is not clear. Applicant must use additional wording to clarify the intended use of the goods.
The wording “sports bra” while definite, is properly classified in International Class 25.
Lastly, the wording “chemical preparations for pharmaceutical purposes” is indefinite because the intended use of the goods is unclear. Applicant must specify the disease or condition to be prevented or treated.
International Class 10
The wording “veterinary apparatus and instruments,” “physiotherapy apparatus,” “medical apparatus and instruments,” “testing apparatus for medical purposes / apparatus for use in medical analysis,” and “diagnostic apparatus for medical purposes” is all indefinite because the specific goods or their intended use is unclear. Applicant must provide additional clarity as to either the goods or their use.
The wording “special truck” is indefinite because the nature of the goods is unclear. The wording could also describe goods in multiple international classes and is thus overbroad. For example, “trucks” are in International Class 12 while “fire trucks” are in International Class 9.
Lastly, the wording “nursing appliances” is indefinite because it does not describe the goods with sufficient clarity. Applicant must use additional wording to clarify the specific nature of the goods.
Applicant may adopt the following identification of goods, if accurate:
International Class 5
diagnostic preparations for veterinary purposes; diagnostic preparations for medical purposes; biological preparations for medical purposes for the treatment of {indicate disease or condition to be treated}; medical radiation imaging material, namely, {indicate specific Class 5 goods}; medicines for human purposes, namely, medicines for {indicate specific use}; drugs for medical purposes, namely, drug delivery agents in the form of {specify form} for {indicate specific use}; dietetic foods adapted for medical purposes; vitamin preparations; chemical preparations for pharmaceutical purposes, namely, for {specify the disease or condition to be prevented or treated}
International Class 10
veterinary apparatus and instruments, namely, {specify the goods}; physiotherapy apparatus, namely, {indicate specific goods}; endoscopy cameras for medical purposes; brushes for cleaning body cavities; medical apparatus and instruments in the nature of {indicate specific goods}; gastroscopes; testing apparatus for medical purposes, namely, {indicate specific goods e.g., blood testing apparatus}; diagnostic apparatus for medical purposes for the detection of {indicate use e.g., for the detection of cancer}; nursing appliances, namely, {indicate specific goods}
International Class 12
Special truck in the nature of {indicate specific goods}
International Class 25
Sports bra
Applicant may amend the identification to clarify or limit the goods or services, but not to broaden or expand the goods or services 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 or services may not later be reinserted. See TMEP §1402.07(e).
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 and/or services 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 fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 4 classes; however, applicant submitted a fees sufficient for only 2 classes. 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 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
Entity Unclear
If applicant is a corporation, applicant must specify the U.S. state or foreign country under which it is incorporated. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).
If applicant is an association, applicant must specify the U.S. state or foreign country under whose laws the applicant is organized or exists, and indicate whether the association is incorporated or unincorporated. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(c).
If applicant is a partnership, applicant must specify the U.S. state or foreign country under whose laws the partnership is organized. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(b). In addition, for a U.S. partnership, applicant must list, if not yet specified, the names, legal entities, and national citizenship (for individuals), or the U.S. state or foreign country of organization or incorporation (for businesses) of all general partners. 37 C.F.R. §2.32(a)(iii). For foreign partnerships, the names and citizenships of the general partners are not required. See TMEP §803.03(b).
If applicant is a joint venture, applicant must specify the U.S. state or foreign country under whose laws the joint venture is organized. 37 C.F.R. §2.32(a)(ii); TMEP §803.03(b). In addition, for a U.S. joint venture, applicant must list the names, legal entities, and national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation (for businesses) of all active members of the joint venture. 37 C.F.R. §2.32(a)(iv); TMEP §803.03(b). For foreign joint ventures, the names and citizenships of the active members are not required. TMEP §803.03(b).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
Foreign Registration Required
A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If an applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to the applicant’s country of origin. TMEP §1016.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin. If the foreign registration is not written in English, applicant must also provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
Comments
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
/Faucette, Max/
Trademark Examining Attorney
Law Office 107
(571)270-5655
max.faucette@uspto.gov
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