To: | Boston Scientific Scimed, Inc. (trademarks@bsci.com) |
Subject: | U.S. Trademark Application Serial No. 90383311 - COGNITA - TM-01042US01 |
Sent: | June 13, 2021 07:49:32 PM |
Sent As: | ecom117@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90383311
Mark: COGNITA
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Correspondence Address:
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Applicant: Boston Scientific Scimed, Inc.
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Reference/Docket No. TM-01042US01
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 13, 2021
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.
SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL
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’s mark is COGNITA for Healthcare services, namely, a suite of digital interactive tools for physicians and patients in the field of pain management and pain management medical devices. Registrant’s mark is = KOGNITO, U.S. Registration No. 4270615 for Educational software featuring instruction in health and behavioral health topics.
The marks are similar in appearance and the only difference between the marks is the slight variation in sound between them due to the fact that one ends in A whereas the other one ends in O. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomms. & 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, it appears that both parties offer software pertaining to health related issues.
The goods of the applicant and registrant are likely to travel through the same channels of trade and they are likely to be encountered by the same consumers. Those consumers, when coming across the goods & services are likely to believe that they derive from the same and not from different sources. Therefore, likelihood of confusion may occur.
The examining attorney attaches evidence in the nature of Trademark Registrations featuring pain management and behavioral health services. The evidence is intended to support a likelihood of confusion refusal.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Therefore, for the reasons listed above registration is refused under section 2(d) of the Trademarks Act.
PRIOR PENDING APPLICATIONS
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Should the applicant elect to respond to this office action the following informalities should also be addressed.
RECITATION OF SERVICES IS INDEFINITE
Generally “a suite of tools” typically indicates software products. Therefore, the applicant needs to further specify the nature of its goods and/or services.
Applicant may substitute the following wording, if accurate:
“Downloadable computer software, namely, an integrated suite of enterprise software programs for physicians and patients in the field of pain management and pain management medical devices, in International Class 9.”
“Suite of software as a service featuring software for physicians and patients in the field of pain management and pain management medical devices. in International Class 42.”
Healthcare services in the nature of health and wellness programs, namely, a suite of health self-management programs for physicians and patients in the field of pain management and pain management medical devices, in International Class 44.”
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.
MAY NOT EXPAND THE IDENTIFICATION/RECITATION
ADDITIONAL MONEY IS NEEDED
The application identifies goods and services that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
How to respond. Click to file a response to this nonfinal Office action.
/Blandu, Florentina/
Examining Attorney
U.S. Patent & Trademark Office
L.O.117
Florentina.Blandu@uspto.gov
Tel 571-272-9128
Fax 571-273-9128
RESPONSE GUIDANCE