United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90751710
Mark: INSTINCT
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Correspondence Address:
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Applicant: Medtronic Minimed, Inc
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Reference/Docket No. T88968253US0
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: February 26, 2022
1) Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 4190636. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Please see the attached registration information.
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.
Similarity of the Marks
In the present case, applicant’s mark and registrant’s mark is the standard character mark “INSTINCT.” These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
The Goods are Related
In this case, registrant’s goods are as follows: multi-touch gesture recognition software used with touchpads for interfacing with medical devices; computer control devices, namely, touchpads.
Applicant’s goods are as follows: devices for monitoring blood glucose for medical purposes; insulin pumps; insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, infusion reservoir and downloadable mobile application software used to display, manage, monitor, and track blood glucose and insulin for use in diabetes.
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). When an application or registration broadly identifies goods or services, the goods or services are presumed to encompass all goods or services of the type described. 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).
In this case, applicant’s goods are broadly identified. Thus the devices for monitoring blood glucose presumably include touchpads that interface with glucose medical devices and insulin delivery systems. Moreover, applicant’s delivery system is broadly identified and, therefore presumed to include such goods featuring touchpads such as glucose monitors with touchpads on them. Similarly, applicant’s “downloadable mobile application software used to display, manage, monitor, and track blood glucose and insulin for use in diabetes” is presumed to encompass all such software including software for use with touchpads and those using gesture recognition functions to perform the displaying, managing, monitoring, etc.
Moreover, registrant’s goods are broadly identified. They are, therefore, presumed to encompass 1) touchpad software for touchpads interfacing with insulin and glucose-related medical goods 2) touchpads that may be used with/on applicant’s goods. Thus, applicant’s and registrant’s goods appear highly related and complementary in terms of purpose and function.
Please note that the trademark examining attorney also has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely, medical software and/or hardware along with related medical devices, including those in the diabetes field, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Additionally, registrant’s goods have no restrictions as to channels of trade or classes of purchasers. They are, therefore, “presumed to travel in the same channels of trade to the same class of purchasers” as are applicant’s goods 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.
Doubt is Resolved in Favor of Registrant
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).
In light of the foregoing, registration is refused under Trademark Act Section 2(d), 15 U.S.C. §1052(d).
2) Identification of Goods
Some of the wording in the identification of goods/services is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant also must adopt the appropriate international classification number for the goods and/or services identified in the application. “Proper classification allows for administrative recordkeeping, enables accurate and efficient public searches of USPTO records, and facilitates examination of applications filed with the USPTO by aligning fees with costs.” In re Carlton Cellars, LLC, 2020 USPQ2d 10150, at *2 (TTAB 2020).
More specifically, to ensure proper classification, “insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, infusion reservoir … used to display, manage, monitor, and track blood glucose and insulin for use in diabetes” must be amended. Applicant must clarify what the purpose of the delivery systems is. Those being scientific/laboratory equipment used for diabetes research use would be classified in Class 9. However, those used for medical/patient use are properly classified in Class 10.
In addition, because the software is “downloadable” and it appears to be for consumers’ “mobile” devices, it does not appear it could actually be sold as a unit with or as part of the physical goods listed in the identification. Even if, with the purchase of the physical delivery systems, consumers obtain the information/access they need to download the related software to a mobile device, the software is still provided/downloaded separately (and is not software that is pre-installed in the monitors or infusion goods). Significantly, downloadable software is properly classified in Class 9 - no matter what the purpose of the software is.
Thus, applicant may substitute the following wording and classes, if accurate.
Class 9:
Scientific laboratory equipment, namely, insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, and infusion reservoirs sold as a unit and used to display, manage, monitor, and track blood glucose and insulin for use in diabetes medical research; downloadable mobile application software for use in insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, and infusion reservoirs, namely, downloadable mobile application software used to display, manage, monitor, and track blood glucose and insulin for use in diabetes medical research and medical management of diabetes
Class 10:
Devices for monitoring blood glucose for medical purposes; insulin pumps; medical apparatuses, namely, insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, and infusion reservoirs sold as a unit and used to display, manage, monitor, and track blood glucose and insulin for use in diabetes patient management
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.
3) Multiple-classification Requirements
(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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that could be classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class. 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 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
4) Requirement for Information
To permit proper examination of the application, applicant must respond to the following:
a) Applicant must state whether its downloadable software is made/will be made available to a consumer only after applicant’s physical goods are purchased.
b) Applicant must state what goods or devices the “downloadable mobile application software” is used with/will be used with. For example, if the software is actually to be downloaded to the insulin delivery systems comprised of glucose monitors, insulin monitors, infusion sets, and infusion reservoirs and such goods are themselves “mobile,” then applicant may clarify that. On the other hand, if the software may be separately downloaded to other mobile devices that connect to the insulin delivery systems such as a patient’s mobile phone, a doctor’s mobile phone, or a patient’s portable tablet computer, then applicant may clarify that.
See 37 C.F.R. §2.61(b); TMEP §§814, 1402.01(e).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Response Advisory
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Applicant may wish to hire an attorney. Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
To respond: Click to file a response to this nonfinal Office action.
Please do not hesitate to contact the undersigned with any questions.
/MaureenDallLott/
Maureen Dall Lott
Trademark Examining Attorney, Law Office 105
United States Patent and Trademark Office
571-272-9714
RESPONSE GUIDANCE