| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 90117210 |
| LAW OFFICE ASSIGNED | LAW OFFICE 122 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | ATLAS |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
| The proposed mark ATLAS for medical device and surgical instrument for suturing purposes and medical device for creating U-shaped stitch for surgical purposes has been rejected due to a likelihood of confusion with the registrant's mark ATLAS for catheters and parts and fittings thereof. For at least the following reasons, Applicant respectfully disagrees. Despite the similarity of the marks and that the goods both are for medical use, the goods themselves are used for different purposes, different procedures and are entirely unrelated to each other. Applicant's goods are for a specific type of surgical instrument and medical device for suturing, such as for making a U-shaped stitch during a surgical procedure. The registrant's catheter goods and parts and fittings thereof bear no similarity in terms of use, purpose, function or treatment. Further, the purchasers of the applicant's and registrant's goods are highly trained, medical professionals. Due to their extensive knowledge and experience in the medical field and with medical equipment, these purchasers have a level of sophistication above and beyond an ordinary consumer. These medical goods and surgical instruments are not marketed to or purchased by an ordinary consumer. Rather, highly trained, medical professionals are the actual purchasers of these medical goods. The Federal Circuit in Electronic Design & Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713 (Fed. Cir. 1992) supports this distinction as it held that a likelihood of confusion had to be shown to exist in the relevant customer or purchaser. The Court stated that "this is especially true, where, as here, the applicant's goods are specifically different and noncompetitive" (Id. at 716). To provide some background of the EDS case, the Appellant's mark E.D.S. (stylized) for battery chargers and power supplies was opposed and registration was denied in view of Appellee's registered mark EDS for computer programming services including design, implementation and management of electronic data processing programs and telecommunication services. The Appellee-registrant was selling its services to mostly large corporations in the medical, automotive, merchandising and other fields. The Appellant began as a sole proprietor designing custom power supplies for others; and after about six years, he was making and selling his own battery charges and power supplies with the applied-for mark. Within about the next eight years, both parties were selling to large corporations in the automotive, merchandising and communications fields - two of which were the same corporations. The Board agreed with the registrant and refused registration of the E.D.S. (stylized) mark because "the applicant's goods are sufficiently related [to opposer's services] and would likely be encountered by some of the same persons so that confusion is likely." Upon reversing the Board's decision on Appeal, the Court emphasized that for determining a likelihood of confusion, "'relevant persons' is not always limited to purchasers, past or future... and that the essential inquiry... is whether there is a likelihood of confusion among actual and potential purchasers." In addition, the Court stated that "the mere purchase of the goods and services of both parties by the same institution does not by itself establish similarity of trade channels or overlap of customers." It further expressed that modes and channels of advertising are also important factors to consider when identifying the relevant persons. In the present case, due to this level of sophistication among the actual purchasers, there would be no likelihood of confusion between the applicant's medical device/surgical instrument goods used for suturing and U-shaped stitching purposes and the registrant's catheters and related parts and fittings. The goods are entirely unrelated, and to the highly trained, sophisticated medical professionals who are actually purchasing them, the sources of the goods would not be confused because they would understand and readily distinguish the name of a medical device/surgical instrument for suturing/stitching purchases from the name of catheter goods and related parts/fittings. For these reasons, applicant respectfully requests withdrawal of the rejection. The examining attorney may contact the undersigned representative as needed by phone or email dcorpus@pearne.com. | |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | DEBORAH L. CORPUS |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tmdocket@pearne.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | dcorpus@pearne.com |
| DOCKET/REFERENCE NUMBER | AMT-63126 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Deborah L. Corpus |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | tmdocket@pearne.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | dcorpus@pearne.com |
| DOCKET/REFERENCE NUMBER | AMT-63126 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /deborahlcorpus/ |
| SIGNATORY'S NAME | Deborah L. Corpus |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | 216-579-1700 |
| DATE SIGNED | 01/31/2021 |
| ROLE OF AUTHORIZED SIGNATORY | Authorized U.S.-Licensed Attorney |
| SIGNATURE METHOD | Signed directly within the form |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Sun Jan 31 23:28:14 ET 2021 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XX-2 0210131232814299711-90117 210-7605d2db934d62449bcd2 2b59b92a390fa697a2c568d98 19af7222399ca285a3-N/A-N/ A-20210131231712311845 |
| PTO- 1957 |
| Approved for use through 11/30/2023. OMB 0651-0050 |
| U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number |