Request for Reconsideration afier Final Action
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`Page 1 of 19
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`PTO Form 1960 (Rev 9/2007)
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`‘OMB No. )oo<x-xxxx (Exp. xfxxxx)
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`Request for Reconsideration after Final Action
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`The table below presents the data as entered.
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`REMARKS
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`LIKELIHOOD OF CONFUSION REJECTION
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`The Examining Attorney maintains the refusal of the mark because of a likelihood of confusion
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`over U.S. Registration No. 2493914.
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`In light of the above amendments to the goods description and the
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`following remarks Applicant respectfully requests reconsideration of this rejection.
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`To begin with, Applicant agrees with the Examining Attorney’s framework for analysis, namely,
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`that under any likelihood of confusion determination the two key considerations are the similarities
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`between the marks and the similarities between the goods and/or services. Federated Foods, Inc., 544
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`F.2d 1098 (CCPA 1976). However, Applicant submits that the Examining Attomey omitted from her
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`analysis a number of additional factors set forth in In re E.I. duPont case in the last Office Action that
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`Applicant would suggest substantially change the outcome of the analysis.
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`(For a complete list of the
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`factors see, In re E1. a’uPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973).)
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`Similarity of Marks
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`First, with regard to the similarity of the mark, Applicant believes the Examining Attorney
`understates the importance of the presence of the “T” in the T-POD mark, and its likely impact on a
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`consumer when comparing the T-POD registration with Applicant’s POD mark. Specifically, Applicant
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`would make two points: first that the presence of the “T” in the first part of the T-POD mark and its
`aural and visual impact on a consumer would be significant, and second that the fact that the “T” has
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`been ascribed a meaning by the Registrant would finther distinguish the T-POD mark from the POD
`mark
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`Turning to the question of the aural and visual impact of the addition of the “T” element to the
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`T-POD mark, although the Examining Attorney dismisses Applicant’s contention that it is the first part
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`of the mark that is generally dominant, this argument is supported by a number of court decisions. See,
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`e.g., Presto Products, Inc. 9USPQ2d 1895 (TTAB 1988) (Court discussing the importance of the first
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`Request for Reconsideration afier Final Action
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`Page 2 of 19
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`part of the mark in determining likelihood of confusion.) Another example that is extremely
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`relevant to this case, although nonprecedential, is In re Emissive Energy Corp.,
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`in which the TTAB
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`discussed the differences between the marks T2 and SLIQUE T2 both for lighting products.
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`(A copy of
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`the Emissive Energy decision is submitted herewith for the Examining Attomey’s convenience.) In that
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`case the Board set forth the proper test for determining the similarity of marks quoting from the
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`Opryland case:
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`“When it is the entirety of the marks that is perceived by the public, it is the entirety of
`the marks that must be compared.”
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`(OQL1/land USA Inc. 12. Great American Music Show Inc., 970 F .2d 847, 23 USPQ 1471, 1473 (Fed. Cir.
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`1992).) Using this analytic framework the Board went on to compare the marks:
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`The comparison of the marks in this case is fairly straightforward. Neither mark contains
`a design or stylization. Registrant’s mark is for the term SLIQUE T2 while applicant’s
`mark is simply T2. When the terms SLIQUE T2 and T2 are compared, the addition of
`the word SLIQUE at the beginning of registrant’s mark changes the appearance, sound,
`meaning, and commercial impression of the marks. It is a difficult term to overlook and
`we have no reason to believe that consumers will discount the term when they encounter
`it.
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`(In re Emissive Energy Corp, Serial No. 78440691 (May 24, 2006) page 6, citing to Bongrain
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`International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed.
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`Cir. 1987) (The “statute refers to likelihood, not the mere possibility, of confusion”), and Champagne
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`Louis Roederer S.A. v. Delicato Vingards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998)
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`(“CRISTAL and CRYSTAL CREEK evoke very different
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`images
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`in the minds of relevant
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`consumers”).)
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`In this case the addition of the “T” adds a strong consonant sound at the very beginning of the
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`mark that is wholly absent from Applicant’s mark. Moreover, the “T” element is separated from the
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`“POD” portion of the mark by a dash, giving it a larger visual impact than would be provided were the
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`two terms “T” and “POD” combined into a single unified term.
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`In short, as in the Emissive Energy
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`Corp. case, the addition of the “T” at the beginning of Registrant’s mark “changes the appearance,
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`sound, meaning, and commercial impression of the marks,” and “it is a difficult term to overlook and
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`we have no reason to believe that consumers will discount the term when they encounter it.”
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`Moreover, the “T” in the “T-POD” mark is at the heart of the difference between the goods
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`offered under Applicant’s and Registrant’s marks. Specifically, as Applicant has previously explained,
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`Registrant’s goods are used only for treatment of trauma to the pelvic region of a patient, a use for
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`which Applicant’s goods are not suitable, and at the same time Registrant uses the mark T-POD as an
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`acronym for “Trauma-Pelvic Orthotic Device”.
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`(See, T-POD Protocol and FAQ submitted with this
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`response.) The fact that the “T” has a meaning that would be known to the relevant consumer that is
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`inapplicable to App1icant’s goods is extremely relevant to the analysis of the similarity of goods.
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`Specifically, in another nonprecedential, but still relevant case, ESPN, Inc. v. Luttermoser, the
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`[Request for Reconsideration afier Final Action
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`Page 3 of 19
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`TTAB discussed the importance of the different meanings that would be given to the letters “X”
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`and “A” when viewing the marks “X GAMES” and “A GAMES”.
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`(TTAB Opposition No. 91158096,
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`issued July 7, 2006, a copy of the decision is submitted herewith for the Examining Attorney’s
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`convenience.) In that case the TTAB summarized the basic position of Applicant in the present case
`when it wrote:
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`Here, it is obvious that the marks are similar in terms of sight, sound and meaning to the
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`extent that they both include a single letter followed by the word GAMES. However, it
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`is equally obvious that the marks are dissimilar in terms of sight, sound, and meaning to
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`the extent that they start with different letters that are readily distinguishable, i.e., the
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`letter X and A.
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`It is often the first part of a mark, which is most likely to be impressed
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`upon the mind of a purchaser and remembered. (ESPN, Inc, v. Luttermoser, pg. 14.)
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`The TTAB then went on to distinguish the two marks based on their analysis of what the
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`consuming public would perceive the meaning of the different introductory letters in the marks. For
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`example, in the case of the X GAMES mark the “X” was seen as likely to invoke the term “extreme”,
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`While in the case of the A GAMES mark the “A” was seen as likely to invoke some other meaning such
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`as adrenaline or alternative or action, etc.
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`In short, the TTAB found that because the single letters
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`before the word “GAMES” in each mark would be attributed a different meaning by the relevant
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`public, the marks could not be considered confusingly similar when taken in their entirety.
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`_
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`As mentioned, Applicant believes the ESPN case is particularly relevant to the current
`determination because the relevant buying public, in this case a highly-educated and highly-discerning
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`population of medical professionals, would know the “T” in T-POD signifies “trauma”, and in turn that
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`the T-POD device is designed for use in a very select environment, namely, emergency medical
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`response and stabilization for patients with pelvic “trauma.” Indeed, the addition of the “T”, and the
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`fact that it stands for “trauma”, would serve to highlight to the relevant public the substantial’
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`differences between the marks and the products sold under those marks just as the “A” and “X” in the
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`ESPN case signify to consumers the differences between the two sporting events.
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`Similarity of Goods/Charmels of Trade
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`Turning now to the question of the similarity between the goods offered under the two marks,
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`Applicant has substantially amended the goods to be registered under the mark since the Examining
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`Attorney issued the last Office action. Specifically, Applicant’s goods no longer relate to any sort of
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`pelvis or mid-section protective equipment. Moreover, the addition of the repeated statements that
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`Applicant’s goods are for “the prevention of injury” to “joints”, “ligaments”, etc. clearly distinguishes
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`the goods from those set forth in the registration, which only claim “therapeutic” uses on the “pelvis”.
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`Moreover, Applicants have amended the description under Class 010 to more specifically set forth that
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`the goods to be offered are not medical devices, but merely products for sale to the public for use in
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`protecting the user from injury to joints and the muscle, ligament, etc. surrounding that joint. Applicant
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`would submit that the combination of these revisions clearly sets the goods to be offered under
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`Request for Reconsideration afier Final Action
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`Page 4 of 19
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`App1icant’s mark out from the goods offered under the Registrant’s mark
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`7: L6
`Specifically, while the T-POD mark has been registered for a “therapeutic medical device” for '
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`use in the event of “pelvic” trauma, the primary function of App1icant’s goods are to prevent injury by
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`allowing the user’s joint, such as a knee, to move within a controlled range-of-motion. hi the event a
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`user’s joint is exposed to an external impact or force, the brace locks and creates an alternate load-path
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`to the joint.
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`In this way Applicant’s goods aid in the prevention of hyper-extension, hyper-flexion,
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`medial and lateral knee injuries, and in no Way can immobilize the joint in a post-trauma event.
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`(As
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`evidence Applicant is submitting relevant information concerning Registrant’s “T-POD” device and
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`Applicant’s ”MX” knee brace to highlight the disparate nature of the products offered under the POD
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`and T-POD marks.)
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`The end result is that while the T-POD device is likely to be encountered only by medical
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`professionals for use after a trauma, the POD device is directed to anyone that engages in a potentially
`high impact activity to help prevent injury during exercise. Accordingly, it is unlikely the targeted
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`consumer of the POD device would ever encounter the T-POD device, and even were a medical
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`professional to encounter the POD device, as will be discussed in greater detail below, it is Applicant’s
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`contention that the sophistication of these professionals would eliminate any possibility of confusion.
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`Sophistication of Consumer
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`In addition to the substantial differences between the goods ofiered by Registrant and those
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`offered by Applicant, Applicant would respectfully submit that the Examining Attomey’s analysis
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`misses the most relevant of the duPont factors for the current case, namely, the nature of the relevant
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`consumer and the nature of the purchase itself. Specifically, as will be discussed in detail below, under
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`the a’uPont test the court stressed that it is important to take into account the conditions under which
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`sales are made and the buyers to whom sales are made, i.e., whether the purchase is likely to be made
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`on an "impulse" or afier a carefiil, sophisticated analysis.
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`In the present case it is unlikely that a medical
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`professional seeking an “orthopedic therapeutic medical device for use on the pelvis” is going to make a
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`purchase in an impulsive fashion.
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`Indeed, the courts have consistently taken the position that medical device purchases tend to be
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`undertaken by highly trained professionals in a measured manner. For example,
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`in the Astra
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`Pharmaceutical Prods. case the First Circuit found no infringement between a local anesthetic
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`preparation and a computerized blood analyzer machine, bothisold under the ASTRA mark, stating that
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`the “most critical factor” was the sophistication of the buyers of the products.
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`(Astra Pharmaceutical
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`Products Inc. v. Beckman Instruments Inc.. 718 F.2d 1201 220 U.S.P.
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`. 786 1st Cir. 1983 .Accord
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`Blue Bell Bio-Medical v. C1'n—Bad Inc.. 864 F.2d 1253. 9 U.S.P.
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`.2d 1870 5th Cir. 1989 (the care
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`with which hospitals buy medical carts for the operating room makes a mistaken purchase unlikely).
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`In
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`the Astra case the court went further to explain that it was not even possible to consider a hospital a
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`single consumer, stating: “[t]he ‘hospital community" is not a homogeneous whole, but is composed of
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`separate departments with diverse purchasing requirements, which,
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`in effect, constitute different
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`Page 5 of 19
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`markets for the parties’ respective products”.
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`(Astra Pharmaceutical Prods, Inc. 220 USPQ
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`786, 791.)
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`Perhaps the most relevant case to the current question is‘ the Hewlett—Packard case, where the
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`court specifically held that sophisticated buyers of medical instruments were not likely to be confused
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`between the marks “HP” and “HPM”, marks that, as in the current case, only have a single letter
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`(See, Hewlett-Packard Co. v. Human Pejormance Measurement, Inc. 23
`different between them.
`U.S.P.Q.2d 1390, 1991 WL 350751 (l“.T.A.B£fl) (holding that there was no likelihood of confusion
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`between HPM for medical instruments used in clinical measurement of human performance functions
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`and HP for a wide range of laboratory and medical instruments and services incident thereto where the
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`parties’ goods differ in the manner in which they function and are intended to be utilized by different
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`groups of people within a hospital).) In that case the court stated:
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`“Given the deliberation involved in determining the suitability of particular medical
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`instruments for specific patient care applications, and since customers and prospective
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`purchasers typically deal directly with the parties in making their purchasing decisions,
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`we believe that the parties’ marks are not so similar that confusion as to the origin or
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`affiliation of their medical instruments would be likely to occur.”
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`(In Hewlett-Packard‘ Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390, 1396 ('1'FAB
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`1991))
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`In short,
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`the presumption by the courts is that,
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`in general, purchasers in the healthcare
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`Indeed, from these cases it becomes clear that both the
`community tend to be inherently sophisticated.
`courts and the Board recognize that in a medical environment it is likely that any purchase of a
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`“medical device” will involve substantial extremely sophisticated research and analysis of the device,
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`and will likely be done by a professional purchaser of medical devices, such as a hospital manager, in
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`consultation with a physician. Moreover, this presumption is supported by the number of professional
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`organizations associated with healthcare purchasers and managers,
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`such as,
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`for example,
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`the
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`Association for Healthcare Resource Materials Management and the Health Industry Group Purchasing
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`Association, as well as how these organizations and the professional literature in this field describe how
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`medical purchases are generally undertaken. For example, in an article from a January 2006 edition of
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`Information Week (copy enclosed) the authors writing about healthcare purchasing state:
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`Healthcare on the purchasing side is behind other industries in using “technology" to
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`help optimize the sourcing of products and supplies, says Bogosta. That's in part because
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`healthcare supply purchases are "extraordinarily complex" and are frequently driven by
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`factors such as a physician's preference for a surgical instrument with a special handle.
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`(Information Week, “Medical Center And IT Vendor Revamp Health-Care Industry Purchasing
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`Models” January 2006.)
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`In another relevant article (copy enclosed) from the Health Industry Group
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`Purchasing Association the authors summarize the process of medical purchasing as follows:
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`Most health care providers make group purchasing selections in a committee setting,
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`Request for Reconsideration after Final Action
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`usually comprised of health care professionals, such as doctors, nurses and other
`clinicians. These committees help determine which medical
`supplies are most
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`appropriate from a clinical standpoint.
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`(HIGPA website, "The Basics About Group Purchasing Organizations”)
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`Accordingly, it is clear that where a device is being sold and marketed to the medical industry
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`the final purchase decision will invariably be made one or more highly trained healthcare professionals.
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`This is extremely important to the current analysis because more generally the courts have taken the
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`position that where, as here, the relevant buyer class is composed solely of professional, or commercial
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`purchasers, it is reasonable to set a higher standard of care than exists for consumers.
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`Specifically, many cases state that where the relevant buyer class is composed of professionals
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`or commercial buyers familiar with the field, they are sophisticated enough not to be confused by
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`trademarks that are closely similar. That is, it is typically assumed that such professional buyers are
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`less likely to be confused than the ordinary consumer.
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`(See, e.g., Sunbeam Lighting Co. v. Sunbeam
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`Corp, 183 F.2d 969, 86 U.S.P.Q. 240, 86 U.S.P.Q. 464 (9th Cir. 1950), cert. denied, 340 U.S. 920 95
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`L. Ed. 665, 71 S. Ct. 357, 88 U.S.P.Q. 569 (1951)(expert buyers held to higher standard); S'ave—A—StoQ,
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`Inc. v. Sav-A—St0Q, Inc., 230 Ark. 319, 322 S.W.2d 454, 121 U.S.P.Q. 232 (1959) (professional buyers
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`“should be capable of a reasonable degree of discrimination”); Qvnamics Research Corg. v. Langenau
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`Mfg. Co., 704 F.2d 1575, 217 U.S.P.Q. 649 (Fed. Cir. 1983) (distinguishing prior case involving sale to
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`consumers)).
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`In short the courts have held that while two marks might be sufficiently similar to confuse an
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`ordinary consumer, a professional buyer or an expert in the field may be more knowledgeable and will
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`not be confused.
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`(Again see, CMM Cable Rep. v. Ocean Coast Pr_0ps., Inc., 888 F._SL1Jgp.
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`l92,_36
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`U.S.P.Q.2d 1458 (D_.Me. 1995), afi°d, 97 F.3d 1504, 41 U.S.P.Q.2d 1065_(lst Cir. 1996) (sophisticated
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`professional buyers “are less likely to be confused as to the source or origin of a product than ordinary
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`consumers»; and Electronic Design & Sales, Inc. v. Electronic Data Systems C07'Q., 954 F.2d 713, 21
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`U.S.P.Q.2d 1388 (Fed. Cir. 1992) (No likelihood of confusion where plaintiff sold “E.D.S.” computer
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`»
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`services to “experienced corporate officials after significant study and contractual negotiation” while
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`defendant sold “EDS” power supplies and battery chargers to OEMs. Both parties’ goods and services
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`“are usually purchased after careful consideration by persons who are highly knowledgeable”).
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`From the evidence submitted with this response it cannot be disputed that the device being sold
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`under the T-POD mark is a medical device. Specifically, the T-POD device is indicated for use ONLY
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`in stabilizing trauma victims (See, attached “Protocol”, “FAQ” and “Instructions and Use” attached
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`with this response), and as such will only be encountered by a highly-trained and extremely
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`sophisticated consumer, namely medical professionals.
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`Indeed, a review of the “Protocol” and the
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`“FAQ” documents Registrant provide on their website finds that not only would medical professionals
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`be the only relevant consumers, but moreover in order to use the device the medical professional will,
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`by necessity, have to be specifically trained to use the T-POD device. For example in the “Protocol”,
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`Registrant writes:
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`3. Application- The T-POD should be placed by trained healthcare provider.
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`Likewise, m the “FAQ” document Registrant answers the question “Can anyone apply the device?” by
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`stating:
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`Yes, it is safe for any health care provider to apply once sufficient training had been
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`provided.
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`In short, this means that the purchaser must ensure both that a “medical professional” is
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`available to use the T-POD and that that medical professional has “sufficient training” or can receive
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`“sufficient training” prior to the device being used.
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`In addition, Applicant would also draw the
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`Examiner’s attention to the National Stocking Number (NSN) recently issued by the US government on
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`the T-POD device. (As evidence Applicant submits a copy of a press release on the issuance of the
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`NSN to the T-POD device.) These NSN are unique reference numbers issued to products that can be
`used by large institutional purchaser to uniquely identify the product and ensure that an incorrect
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`device is not purchased. As detailed in this press release the T-POD is targeted to such large
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`institutional purchasers, such as hospitals and EMS professionals.
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`Applicant finds it inconceivable that the sophisticated consumers that are the purchasers of the
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`T-POD device, having such organized and detailed purchasing procedures in place, would somehow be
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`confused as between the medical trauma device being olfered under the T-POD mark and the types of
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`over-the-counter protective braces, guards, pads and clothing proposed for use under the POD mark.
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`Accordingly, Applicant would submit that the differences between the T-POD registration and the POD
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`mark are significant when placed into the proper market context, and would relieve any potential
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`confusion in the relevant consuming public.
`Summarv
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`In light of this legal framework, the amendments made to the current application, and the
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`remarks and evidence submitted with this response, Applicant submits that there is no conceivable way
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`that a relevant consumer would encounter Registrant’s and App1icant’s goods under circumstances that
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`could give rise to a likelihood of confusion as between the source of the goods.
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`GOODS/SERVICES DESCRIPTION
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`The Examining attorney requested that Applicant revise the good/services description to
`77
`66
`remove unidentified indefinite words such as “accessories ,
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`components”, etc., to remove the term
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`“including” and to reinsert the restriction that the protective pads are not used for sporting activities.
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`Applicant has complied with each of these requirements and submit herewith a newly revised
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`goods/services description that Applicant believes
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`address
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`all of
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`the Examining attomey’s
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`requirements.
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`INFORMATION REQUIREMENT
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`Request for Reconsideration alter Final Action
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`Page 8 of 19
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`The Examining attorney requires information about the goods/services description contained
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`herein, namely, whether all or part of the mark is merely descriptive. Applicants submit herewith
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`several informative brochures that detail a knee brace being made under the POD mark for motocross
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`enthusiasts. Applicants further submit that they know of no common significance to the term POD in
`any foreign language or within the industry of protective devices as a whole. Within the company an
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`early version of the POD device was humorously referred to as “Permanently Outdoor Dog” in
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`reference to App1icant’s pet; however, this acronym was, for obvious reasons, never made public, has
` never been used in an commercial context, and is no longer used in any context with regard to the
`products to be sold under the POD mark.
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`EVIDENCE SECTION
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`EVIDENCE FILE NAME(S)
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`ORIGINAL
`PDF FILE
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`http ://tgate/PDF/RFR1’
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`http ://tgate/PDF/RFR/
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`http ://tgate/PDF/RFR/
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`http ://tgate/PDF/RFR/
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`http://tgate/PDF/RFR/
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`http ://tgate/PDF/RFR/
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`http://tgate/PDFfRFR/
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`http://tgate/PDF/RFR/
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`http://tgate/PDF/'RFR/’
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`DESCRIPTION OF EVIDENCE FILE
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`evidence in support of response
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`GOODS AND/OR SERVICES SECTION (009)(current)
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`INTERNATIONAL CLASS
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`DESCRIPTION
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`Safety and protective devices, equipment and apparatus and parts and accessories therefore; protective
`pads for knee, elbow, ankle, hip, wrist, shoulder, neck, finger and back, all the forgoing for protection
`against accidents and injuries; protective joint protectors including but not limited to knee, elbow,
`ankle, hip, wrist, shoulder, neck, finger and back protection; protective clothing , all of the forgoing for
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`Request for Reconsideration after Final Action
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`Page 9 of 19
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`protection against accidents and injuries; protective clothing for participating in motor sports, all of the
`forgoing for protection against accidents and injuries; protective clothing of plastics all of the forgoing
`for protection against accidents and injuries; protective devices apparatus for personal use for
`protection against accident and injury; ski wear for protection against injury; body protectors, knee
`protectors, elbow protectors; hand protectors, hip protectors, all of the forgoing for protection against
`accidents and injuries
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`GOODS AND/OR SERVICES SECTION (009)(proposed)
`INTERNATIONALCLASS
`DESCRIPTION
`'
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`SAFETY AND PROTECTIVE DEVICES, EQUIPMENT AND APPARATUS, AND PARTS AND
`ACCESSORIES THEREFORE, NOT FOR SPORTING OR ATHLETIC USE, NAMELY,
`PROTECTIVE GUARDS, PADS, CLOTHING AND BRACES FOR KNEE, ELBOW, ANKLE,
`WRIST, SHOULDER, NECK, FINGER AND BACK, ALL THE FORGOING FOR PROTECTION
`AGAINST ACCIDENTS AND INJURIES; JOINT PROTECTORS FOR PROTECTION AGAINST
`ACCIDENTS AND INJURIES, NAMELY, PADS, GUARDS, BRACES AND CLOTHING FOR
`PROTECTING KNEE, ELBOW, ANKLE, WRIST, SHOULDER, NECK, FINGER AND BACK
`PROTECTION; PROTECTIVE CLOTHING FOR PROTECTION AGAINST ACCIDENTS AND
`INJURIES; PROTECTIVE CLOTHING FOR USE DURING MOTOR SPORTS FOR PROTECTION
`AGAINST ACCIDENTS AND INJURIES; PROTECTIVE CLOTHING, NAMELY PLASTIC
`CLOTHING FOR PROTECTION AGAINST ACCIDENTS AND INJURIES; PERSONAL
`PROTECTIVE DEVICES, NAMELY, PADS, GUARDS, BRACES AND CLOTHING FOR
`PROTECTION AGAINST ACCIDENT AND INJURY; PROTECTIVE CLOTHING FOR USE
`DURING SKIING FOR PROTECTION AGAINST INJURY; BODY, KNEE, ELBOW, AND HAND
`PROTECTORS, NAMELY GUARDS, PADS, BRACES AND GLOVES FOR PROTECTION
`AGAINST ACCIDENTS AND INJURIES
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`GOODS AND/OR SERVICES SECTION (010)(current)
`INTERNATIONAL CLASS
`DESCRIPTION
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`10
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`'
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`Braces for joint fixation of knee, elbow, ankle, hip, wrist, shoulder, neck, finger and back braces; joint
`protectors, joint and muscle supports; joint stabilizing units and immobilizers; ligament protectors;
`knee, elbow, hip, wrist, neck, back, shoulder, finger and ankle supports, equipment and devices for the
`prevention of injuries to bones, joints, muscles, tendons, and ligaments, namely continuous passive
`motion devices for joints including, but not limited to knee, elbow, hip, wrist, neck, shoulder, finger
`and ankles
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`_
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`GOODS AND/OR SERVICES SECTION (0l0)(proposed)
`INTERMIONAL
`DESCRIPTION
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`10
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`MEDICAL PRODUCTS, NAMELY BRACES FOR JOINT FIXATION OF KNEE, ELBOW,
`ANKLE, WRIST, SHOULDER, NECK, FINGER AND BACK; BRACES, PADS AND GUARDS
`FOR PROTECTIVE USE, NAMELY, FOR USE AS JOINT. MUSCLE AND LIGAMENT
`PROTECTORS; ORTHOPEDIC PROTECTIVE SUPPORTS FOR KNEE, ELBOW, WRIST, NECK,
`BACK, SHOULDER, FINGER AND ANKLE; MEDICAL PRODUCTS FOR THE PREVENTION
`OF INJURIES TO BONES, JOINTS, MUSCLES, TENDONS, AND LIGAMENTS, NAMELY,
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`file://\\ticrs-ais—01\ticrsexpo1t\HtmlToTiff[nput\RFR00012008_O2_O4_09_13_44_TTAB08...
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`Request for Reconsideration afier Final Action
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`Page 10 of 19
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` CONTINUOUS PASSIVE MOTION BRACES FOR JOINTS, NAMELY, KNEE, ELBOW, WRIST,
`NECK, SHOULDER, FINGER AND ANKLES
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`SIGNATURE SECTION
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`'
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`USPTO/RFR-76.233.182.102-
`20080130173752668952-7903
`0118-4l04b4d19cb85496lecd
`59725ccb9a13d-N/A-N/A-200
`80130172 15 8546444
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`coNcmm mmmm
`FILING INFORMATION SECTION
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`TEAS STAMP
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`PTO Form 1960 (Rev 9/2007)
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`OMB No. xxxx-xxxx (Exp. xlxxxx)
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`Request for Reconsideration after Final Action
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`To the Commissioner for Trademarks:
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`Application serial no. 79030118 has been amended as follows:
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`ARGUlV[ENT(S)
`In response to the substantive refusal(s), please note the following:
`REMARKS
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`LIKELIHOOD OF CONFUSION REJECTION
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`The Examining Attorney maintains the refilsal of the mark because of a likelihood of confusion
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`over U.S. Registration No. 2493914.
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`In light of the above amendments to the goods description and the
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`following remarks Applicant respectfully requests reconsideration of this rejection.
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`To begin with, Applicant agrees with the Examining Attomey’s framework for analysis, namely,
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`that under any likelihood of confusion determination the two key considerations are the similarities
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`between the marks and the similarities between the goods and/or services. Federated Foods, Inc., 544
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`F.2d 1098 (CCPA 1976). However, Applicant submits that the Examining Attorney omitted from her
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`file ://\\ticrs-ais-0 l\ticrs exp ort\HtmlTo TifiInput\RF R000 l2008_02_04_09_ l 3_44_TTABO 8 . ..
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`Request for Reconsideration after Final Action
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`Page 11 of 19
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`analysis a number of additional factors set forth in In re E.I. duPont case in the last Office Action that
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`Applicant would suggest substantially change the outcome of the analysis.
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`(For a complete list of the
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`factors see, In re E.I. duPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973).)
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`Similarity of Marks
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`First, with regard to the similarity of the mark, Applicant believes the Examining Attorney
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`understates the importance of the presence of the “T” in the T-POD mark, and its likely impact on a
`consumer when comparing the T-POD registration with Applicant’s POD mark. Specifically, Applicant
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`would make two points: first that the presence of the “T” in the first part of the T-POD mark and its aural
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`and visual impact on a consumer would be significant, and second that the fact that the “T” has been
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`ascribed a meaning by the Registrant would further distinguish the T-POD mark from the POD mark.
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`Turning to the question of the aural and visual impact of the addition of the “T” element to the T-
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`POD mark, although the Examining Attorney dismisses Applicant’s contention that it is the first part of
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`the mark that is generally dominant, this argument is supported by a number of court decisions. See, e.g.,
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`Presto Products, Inc. 9USPQ2d 1895 (TTAB 1988) (Court discussing the importance of the first part of
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`the mark in determining likelihood of confusion.) Another example that is extremely relevant to this
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`case, although nonprecedential,
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`is In re Emissive Energy Corp.,
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`in which the TTAB discussed the
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`differences between the marks T2 and SLIQUE T2 both for lighting products.
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`(A copy of the Emissive
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`Energy decision is submitted herewith for the Examining Attomey’s convenience.)
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`In that case the
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`Board set forth the proper test for determining the similarity of marks quoting from the Opryland case:
`“When it is the entirety of the marks that is perceived by the public, it is the entirety of the
`marks that must be compared.”
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`(Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 USPQ 1471, 1473 (Fed. Cir.
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`1992).) Using this analytic framework the Board went on to compare the marks:
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`The comparison of the marks in this case is fairly straightforward. Neither mark contains a
`design or stylization. Registrant’s mark is for the term SLIQUE T2 while applicant’s mark
`is simply T2.
`When the terms SLIQUE T2 and T2 are compared, the addition of the
`word SLIQUE at the beginning of registrant’s mark changes the appearance, sound,
`meaning, and commercial impression of the marks. It is a difficult term to overlook and
`we have no reason to believe that consumers will discount the term when they encounter
`it.
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`(In re Emissive Energy Corp., Serial No. 78440691 (May 24, 2006) page 6, citing to Bongrain
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`International (American) Corp. v. Delice de France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed.
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`Cir. 1987) (The “statute refers