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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88191689 SOFWAVE(Standard Characters, see http://tmng-al.gov.uspto.report/resting2/api/img/88191689/large) has been amended as follows:

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

                This is in response to the Office action dated February 21, 2019 initially refusing registration of Applicant’s mark under Section 2(d) of the Lanham Act. The refusal, directed only to Class 44, was based on an alleged likelihood of confusion with the mark of Registration No. 4,388,328, SOFTWAVE (the “Registration”).

                Applicant respectfully submits that there is no likelihood of confusion between Applicant’s SOFWAVE mark for the services as amended and the mark of the Registration because: 1) Applicant’s services as amended and the services of the Registration are not so related as to give rise to any reasonable likelihood of confusion; 2) Applicant’s mark and the mark of the Registration have a distinct commercial impression when applied to the respective services as amended.

1) Applicant’s services as amended and the services of the Registration are not so related as to give rise to any reasonable likelihood of confusion

                The Class 44 services of the Registration include: Medical treatment of soft tissue indications and other injuries utilizing acoustic pressure pulses emitted from a shock wave device or a pulsed acoustic wave generator and not for treating hearing issues, enhancing auditory ability or addressing auditory issues or injuries. The Registrant’s services are very specifically described as involving acoustic pressure pulses to treat injuries.

                Applicant has amended its Class 44 services to both clarify the nature of its services, and to exclude any treatment that involves the technology specified in the Registration, namely acoustic pressure pulses, since such treatment will not offered by Applicant under its proposed mark. Accordingly, Applicant’s services in Class 44 are directed towards different treatments from those of the Registrant, namely toward skin tightening and health and beauty skin treatment, among others. In addition, the skin, health, and beauty care will use technology that is distinct from that of Registrant, as outlined in the exclusion.

                The clarification and limitation of the services as amended distinguishes Applicant’s services from those of the Registration, and accordingly the services do not give rise to any reasonable likelihood of confusion under the respective marks.

2) Applicant’s mark and the mark of the Registration have a distinct commercial impression when applied to the respective services as amended.

                That the mark of the Registration and Applicant’s mark share elements is not dispositive on the issue of likelihood of confusion.  “The use of identical, even dominant, words in common does not automatically mean that the two marks are similar … Rather in analyzing the similarities of sight, sound, and meaning between two marks, a court must look to the overall commercial impression created by the marks and not merely compare individual features.” General Mills v. Kellogg Co., 824 F.2d 622,627 (8th Cir. 1987) In addition, even if the marks are identical or share identical elements, differences in connotation of the marks when applied to the respective goods or services can “outweigh visual and phonetic similarity.” Coach Services v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012) (where COACH and design for educational materials and COACH for fashion accessories had distinct connotations (i.e. sports coach or tutor versus traveling coach) and therefore had different commercial impressions that outweighed any visual or phonetic similarity); see also In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) (where CROSSOVER for brassieres and CROSSOVER for ladies’ sportswear were found to create different commercial impressions as a result of their different meanings and connotations when applied to the respective goods despite being identical marks).

                The marks at issue differ in sight and sound, as Applicant’s mark is SOF followed by WAVE, and Registrant’s mark is SOFT followed by WAVE. The T makes a difference in pronunciation, as the mechanics of pronouncing the T causes the speaker to pause slightly between pronouncing the T (a stop) and the W. In addition, the differences in the marks cause different connotations and commercial impressions in connection with the respective services. Registrant’s SOFTWAVE mark, according to Registrant’s website, relates to the treatment using “soft-focus” pressure waves which causes little pain and is meant to distinguish the treatment from other “shockwave” treatment that is more painful. See, Registrant’s website attached as Exhibit A. Therefore, the mark has the commercial impression and connotation of the “soft” less painful sound wave that is suggestive of the treatment offered under the mark of the Registration. Because sound waves are involved in the treatment, the use of “soft” has the additional “not loud” connotation as the sound waves are not meant to be heard by the human ear. See Exhibit A. Applicant’s mark, on the other hand, does not share the same connotation and commercial impression, because it does not contain the element “soft” and is not suggestive of the types of sound wave treatments offered by Registrant.

                As the sight, sound, and commercial impression of the marks in connection with their respective services are distinct, Applicant respectfully suggests there is no likelihood of confusion.

                Applicant respectfully requests that the Examining Attorney reconsider and withdraw the refusal under Section 2(d) in light of the arguments and case law presented above, and approve the mark of the instant application for publication.

EVIDENCE
Evidence in the nature of website screenshots from cited registrant describing the services offered has been attached.
Original PDF file:
evi_20518215159-20190820153119441853_._EXHIBIT_A_ROA_SOFWAVE__M1932081xA35AF_.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 010 for Energy-based medical devices in the field of aesthetic applications, based on proprietary ultrasound energy technology; medical devices for skin treatment; ultrasound apparatus for medical and therapy purposes; apparatus for the treatment of cellulite and other skin conditions; apparatus for non-invasive skin treatment; medical apparatus for the cooling of the skin; aesthetic massage apparatus
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 017953752 filed 09/12/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Energy-based medical devices in the field of aesthetic applications, based on proprietary ultrasound energy technology; Energy-based medical devices utilizing proprietary ultrasound energy technology for performing aesthetic skin treatment procedures; medical devices for skin treatment; ultrasound apparatus for medical and therapy purposes; apparatus for the treatment of cellulite and other skin conditions; apparatus for non-invasive skin treatment; medical apparatus for the cooling of the skin; aesthetic massage apparatusClass 010 for Energy-based medical devices utilizing proprietary ultrasound energy technology for performing aesthetic skin treatment procedures; medical devices for skin treatment; ultrasound apparatus for medical and therapy purposes; apparatus for the treatment of cellulite and other skin conditions; apparatus for non-invasive skin treatment; medical apparatus for the cooling of the skin; aesthetic massage apparatus
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 017953752 filed 09/12/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 044 for Dermatological services for treating skin conditions; cosmetic treatment of skin; skin tightening services; cellulite treatment services; cosmetic facial and body care and treatment services; health and beauty care and treatment services; consultation services relating to skin care; advisory and consultancy services relating to medical apparatus and medical technology; rental and leasing of skin care equipment
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ European Union Trademark - EUTM application number 017953752 filed 09/12/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Dermatological services for treating skin conditions; cosmetic treatment of skin; skin tightening services; cellulite treatment services; cosmetic facial and body care and treatment services; health and beauty care and treatment services; healthcare services and beauty care services; health and beauty treatment services, namely skin tightening, body contouring, feminine health, fat lysis, cellulite treatment, stretch marks and stria treatment; advisory and consultancy services relating to medical apparatus and medical technology; consultation services relating to skin care; consulting services in the field of dermatology regarding the use and operation of skin treatment apparatus; rental and leasing of skin care equipment; all of the foregoing services excluding treatment using acoustic pressure pulsesClass 044 for Dermatological services for treating skin conditions; cosmetic treatment of skin; skin tightening services; cellulite treatment services; cosmetic facial and body care and treatment services; healthcare services and beauty care services; health and beauty treatment services, namely skin tightening, body contouring, feminine health, fat lysis, cellulite treatment, stretch marks and stria treatment; consultation services relating to skin care; consulting services in the field of dermatology regarding the use and operation of skin treatment apparatus; rental and leasing of skin care equipment; all of the foregoing services excluding treatment using acoustic pressure pulses
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ European Union Trademark - EUTM application number 017953752 filed 09/12/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

The applicant's current attorney information: Christina D. Frangiosa. Christina D. Frangiosa of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is located at

      50 S 16TH STREET, 22ND FLOOR
      PHILADELPHIA, Pennsylvania 19102-2516
      US
The docket/reference number is 313173-00001.

The phone number is 215-851-8432.

The fax number is 215-851-8383.

The email address is ipdocket@eckertseamans.com

The applicants proposed attorney information: Christina D. Frangiosa. Other appointed attorneys are Jenna P. Torres; Richard E. Peirce; David Gornish; Mark Vogelbacker; Roger Lalonde. Christina D. Frangiosa of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      50 S 16TH STREET, 22ND FLOOR
      PHILADELPHIA, Pennsylvania 19102-2516
      United States
The docket/reference number is 313173-00001.

The phone number is 215-851-8432.

The fax number is 215-851-8383.

The email address is ipdocket@eckertseamans.com

Christina D. Frangiosa submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: CHRISTINA D. FRANGIOSA. CHRISTINA D. FRANGIOSA of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is located at

      50 S 16TH STREET, 22ND FLOOR
      PHILADELPHIA, Pennsylvania 19102-2516
      US
The docket/reference number is 313173-00001.

The phone number is 215-851-8432.

The fax number is 215-851-8383.

The email address is ipdocket@eckertseamans.com; cfrangiosa@eckertseamans.com; jtorres@eckertseamans.com; lmcguinness@eckertseamans.com

The applicants proposed correspondence information: Christina D. Frangiosa. Christina D. Frangiosa of ECKERT SEAMANS CHERIN & MELLOTT, LLC, is located at

      50 S 16TH STREET, 22ND FLOOR
      PHILADELPHIA, Pennsylvania 19102-2516
      United States
The docket/reference number is 313173-00001.

The phone number is 215-851-8432.

The fax number is 215-851-8383.

The email address is ipdocket@eckertseamans.com; cfrangiosa@eckertseamans.com; jtorres@eckertseamans.com; lmcguinness@eckertseamans.com

SIGNATURE(S)
Response Signature
Signature: /Jenna P. Torres/     Date: 08/20/2019
Signatory's Name: Jenna P. Torres
Signatory's Position: Associate Attorney, Eckert Seamans, PA bar member

Signatory's Phone Number: 215-851-8408

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:    CHRISTINA D. FRANGIOSA
   ECKERT SEAMANS CHERIN & MELLOTT, LLC
   
   50 S 16TH STREET, 22ND FLOOR
   PHILADELPHIA, Pennsylvania 19102-2516
Mailing Address:    Christina D. Frangiosa
   ECKERT SEAMANS CHERIN & MELLOTT, LLC
   50 S 16TH STREET, 22ND FLOOR
   PHILADELPHIA, Pennsylvania 19102-2516
        
Serial Number: 88191689
Internet Transmission Date: Tue Aug 20 15:41:26 EDT 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XX-201908201541268
44880-88191689-610512113c51315f951dc8424
0c042682da469122fe9be71434266c7b46907610
-N/A-N/A-20190820153119441853