Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA526136
`ESTTA Tracking number:
`03/12/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Spinal Modulation, Inc.
`Corporation
`1135 O'Brien Drive
`Menlo Park, CA 94025
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Carrie A. Shufflebarger
`Thompson Hine LLP
`312 Walnut Street Fourteenth Floor
`Cincinnati, OH 45202
`UNITED STATES
`carrie.shufflebarger@thompsonhine.com, lou.ebling@thompsonhine.com,
`sharon.bella@thompsonhine.com, docket@thompsonhine.com,
`ipdocket@thompsonhine.com Phone:513.352.6678
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3052105
`HTRD GROUP HONG KONG
`Suite M 5555 West Linebaugh Ave
`Tampa, FL 33624
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`01/31/2006
`
`Class 010. First Use: 2001/01/00 First Use In Commerce: 2001/01/00
`All goods and services in the class are cancelled, namely: medical devices and systems, namely
`non-surgical diagnostic and treatment devices and systems including spinal decompression units,
`bone densitometers and non-surgical laser therapy systems
`
`Grounds for Cancellation
`
`Torres v. Cantine Torresella S.r.l.Fraud
`Abandonment
`
`808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
`Trademark Act section 14
`
`Attachments
`
`Petition for Cancellation.pdf ( 10 pages )(28199 bytes )
`Exhibit A - AXIUM TSDR.pdf ( 2 pages )(31958 bytes )
`Exhibit B - Office Action.pdf ( 20 pages )(8718740 bytes )
`Exhibit C1 - .pdf ( 25 pages )(4265408 bytes )
`Exhibit C2 - .pdf ( 25 pages )(4513771 bytes )
`Exhibit C3 - .pdf ( 26 pages )(5338925 bytes )
`Exhibit D1 - Assignment.pdf ( 25 pages )(4214244 bytes )
`Exhibit D2 - Assignment.pdf ( 25 pages )(4724093 bytes )
`
`

`
`Exhibit D3 - Assignment.pdf ( 26 pages )(5856965 bytes )
`Exhibit E - case.pdf ( 10 pages )(869196 bytes )
`Exhibit F - 105 Declaration.pdf ( 13 pages )(418124 bytes )
`Exhibit G - 864 Declaration.pdf ( 17 pages )(460510 bytes )
`Exhibit H - whois.pdf ( 2 pages )(115596 bytes )
`Exhibit I - Office Action.pdf ( 4 pages )(29134 bytes )
`Exhibit J - Website.pdf ( 2 pages )(51856 bytes )
`Exhibit K - press release.pdf ( 7 pages )(6168110 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by First Class Mail on this date.
`
`Signature
`Name
`Date
`
`/Carrie A. Shufflebarger/
`Carrie A. Shufflebarger
`03/12/2013
`
`

`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of
`
`:
`Registration No.
`Registrant of Record :
`De Jure Registrant
`:
`Mark
`
`
`:
`Issue Date
`
`:
`
`3,052,105
`HTRD GROUP HONG KONG
`AXIOM WORLDWIDE, INC.
`AXIOM WORLDWIDE & Design
`January 31, 2006
`
`
`
`
`
`
`
`
`
`
`SPINAL MODULATION, INC.
`
`
`
`
`
`
`
`
`
`
`Petitioner,
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`HTRD GROUP HONG KONG and
`AXIOM WORLDWIDE, INC.
`
`
`
`
`
`
`
`Putative Registrant/De Jure Registrant
`
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`:
`
`Cancellation No.
`
`
`
`
`
`
`
`PETITION FOR CANCELLATION
`
`Spinal Modulation, Inc. (“Petitioner”), a Delaware corporation having a mailing address
`
`at 1135 O’Brien Drive, Menlo Park, California, believes it is being damaged by Registration No.
`
`3,052,105 for AXIOM WORLDWIDE & Design (the “‘105 Registration”), and hereby petitions
`
`to cancel said registration pursuant to Sections 8 and 14 of the Trademark Act of 1946 (15
`
`U.S.C. §§ 1058, 1064).
`
`As grounds for cancellation, it is alleged that:
`
`PETITIONER AND ITS AXIUM MARK
`
`1.
`
`Petitioner Spinal Modulation, Inc. manufactures implantable neuromodulation
`
`devices, which it offers under the trademark AXIUM.
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 2
`
`2.
`
`On November 3, 2011, Petitioner filed U.S. Application Serial No. 85/463,170 to
`
`
`
`register the trademark AXIUM in International Class 10 for “Neuromodulation devices”
`
`(“Petitioner’s Application”). A current TSDR Printout for Petitioner’s Application is attached as
`
`Exhibit A.
`
`3.
`
`Petitioner’s Application has been refused registration based on Registration No.
`
`3,052,105 for AXIOM WORLDWIDE, thereby causing damage to Petitioner and establishing
`
`Petitioner’s standing for this Petition for Cancellation. A true and correct copy of the Examining
`
`Attorney’s October 16, 2012 Final Office Action is attached as Exhibit B.
`
`THE ‘105 REGISTRATION, REGISTRANT, AND CHAIN OF TITLE
`
`4.
`
`On July 28, 2003, Axiom Worldwide, Inc., a Florida corporation with an address
`
`at 3830 N. Gunn Highway, Tampa, Florida 33624, filed U.S. Application Serial No. 76/533,071
`
`to register the mark AXIOM WORLDWIDE & Design for goods and services in International
`
`Classes 10, 35, and 40, which application matured into the ‘105 Registration on January 31,
`
`2006.
`
`5.
`
` On June 4, 2004, Axiom Worldwide, Inc. filed U.S. Application Serial No.
`
`76/595,705 for AXIOM WORLDWIDE in plain-text form for the same goods and services as the
`
`‘105 Registration, which application matured into U.S. Registration No. 3,056,864 on February
`
`7, 2006 (the “‘864 Registration”).
`
`6.
`
`On September 27, 2010, current putative registrant HTRD Group Hong Kong
`
`(“HTRD”) recorded documents with the USPTO Assignment Division purporting to transfer
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 3
`
`
`
`ownership of the ‘864 Registration from “Axiom Worldwide LLC” and “Progress Bank of
`
`Florida” to HTRD. A true and correct copy of this filing is attached as Exhibit C.
`
`7.
`
`On February 3, 2011, HTRD recorded the same documents with the USPTO
`
`Assignment Division purporting to transfer ownership of the ‘105 Registration from “Axiom
`
`Worldwide LLC” and “Progress Bank of Florida” to HTRD. A true and correct copy of this
`
`filing is attached as Exhibit D.
`
`8.
`
`Other than the filings attached as Exhibits C-D, there are no documents of record
`
`with the USPTO Assignment Division concerning title to the ‘105 or ‘864 Registrations:
`
`specifically, there are no documents of records that establish a transfer of title from Axiom
`
`Worldwide, Inc. to either “Axiom Worldwide LLC” or “Progress Bank of Florida.” As a result,
`
`any purported transfer of title from Axiom LLC or Progress Bank of Florida to HTRD is void.
`
`ANCILLARY PROCEEDINGS BETWEEN THE REGISTRANTS
`
`Ancillary legal proceedings involving Axiom Worldwide, Inc. (the original
`
`9.
`
`registrant), Axiom Worldwide LLC (the party that purported to transfer the ‘105 Registration),
`
`and HTRD (the putative registrant of record) establish that HTRD is not the owner of the ‘105
`
`Registration, and therefore did not have the authority to file a Section 8 Declaration therefor.
`
`10.
`
`On June 25, 2010, the United States District Court for the Northern District of
`
`Georgia expressly held that Axiom Worldwide LLC, HTRD’s purported predecessor in interest,
`
`did not own the trademark registrations it was attempting to assert in that action, noting that the
`
`transfer document attached as Exhibits C-D hereto “did not, by its terms, transfer Axiom, Inc.’s
`
`trademarks, or any other intellectual property rights, to Axiom LLC.” Relevant portions of the
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 4
`
`
`
`Court’s ruling in North American Medical Corporation v. Axiom Worldwide, Inc., Axiom
`
`Worldwide, LLC, Case No. 1:06-cv-1678-JEC (N.D. Ga.), are attached as Exhibit E.
`
`THE SECTION 8 DECLARATIONS
`
`11.
`
`On July 31, 2012, Caroline Pace of Kane Russell Coleman and Logan executed a
`
`Declaration of Use pursuant to Section 8 of the Trademark Act on behalf of HTRD concerning
`
`the ‘105 Registration, in which she declared the mark depicted in the ‘105 Registration was in
`
`use for all of the goods in International Class 10. A true and correct copy of this declaration and
`
`the purported specimens of use are attached as Exhibit F.
`
`12.
`
`The following day, Ms. Pace executed a Declaration of Use pursuant to Section 8
`
`of the Trademark Act on behalf of HTRD concerning the ‘864 Registration, in which she
`
`declared the mark depicted in the ‘864 Registration was in use in U.S. commerce for all of the
`
`goods in International Class 10. A true and correct copy of this declaration and purported
`
`specimens of use is attached as Exhibit G.
`
`13.
`
`On information and belief, the specimens of use submitted in connection with the
`
`Section 8 Declarations were not evidence showing “current use” of the AXIOM WORLDWIDE
`
`and AXIOM WORLDWIDE & Design marks by HTRD. Rather, the submitted specimens were
`
`printouts dated 12/19/2005 from the web site axiomworldwide.com, which is owned by Jim
`
`Gibson, President and CEO of Axiom Worldwide, Inc. A true and correct copy of the “Whois”
`
`report for the URL displayed on the Specimens is attached as Exhibit H.
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 5
`
`14.
`
`The Post-Registration Division accepted the Section 8 Declaration for the ‘105
`
`
`
`Registration on August 20, 2012, neglecting to notice the gaps in the chain of title, the absence of
`
`authorization by the true registrant, or specimens showing “current use” of the mark.
`
`15.
`
`By Office Action dated August 24, 2012, a Trademark Specialist in the Post
`
`Registration Division of the USPTO refused acceptance of HTRD’s Section 8 Declaration with
`
`respect to the ‘864 Registration, citing the unexplained break in the chain of title between the
`
`original Registrant, Axiom Worldwide, Inc., and the party filing the Declaration, HTRD Group
`
`Hong Kong. The Trademark Specialist provided options for HTRD to correct the deficiencies
`
`within the six months allowed for responding to Office Actions. A true and correct copy of this
`
`Office Action is attached as Exhibit I.
`
`16.
`
`HTRD did not respond to the Office Action attached as Exhibit H by the deadline,
`
`and on February 28, 2013, the ‘864 Registration was cancelled.
`
`
`COUNT I
`FRAUD
`
`Petitioner incorporates by reference the allegations of Paragraphs 1-16, as if fully
`
`17.
`
`set forth herein.
`
`18.
`
`Section 8 of the Trademark Act, 15 U.S.C. § 1058, and Trademark Rule 2.161(a),
`
`37 C.F.R. § 2.161(a), require that a Section 8 Declaration be filed by the owner of a trademark
`
`registration within the period set forth in the statute, and include, inter alia, a verified statement
`
`by a person properly authorized to act on behalf of the owner, and a specimen showing current
`
`use of the mark in commerce.
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 6
`
`19.
`
`HTRD’s Section 8 Declaration for the ‘105 Registration contained numerous
`
`
`
`materially false misrepresentations, including: (1) that HTRD is the owner of the ‘105
`
`Registration; (2) that the person executing the Declaration was authorized to act on behalf of the
`
`owner; and (3) that the specimen submitted therewith showed “current use” of the mark on goods
`
`in International Class 10.
`
`20.
`
`These misrepresentations were material insofar as the Section 8 Declaration
`
`would not have been accepted but for the misrepresentations, and the ‘105 Registration would
`
`have been cancelled pursuant to Section 8(a)(1) of the Lanham Act.
`
`21.
`
`The person acting on HTRD’s behalf acted with the intent to deceive, evidenced
`
`by willful withholding from the PTO of material information or facts concerning ownership of
`
`the Registration which, if disclosed to the PTO, would have resulted in the disallowance of the
`
`Section 8 Declaration and cancellation of the registration sought to be maintained.
`
`22.
`
`On information and belief, HTRD did not respond to the Office Action with
`
`respect to the ‘864 Registration because it knew it had made material misrepresentations in its
`
`Section 8 Declaration, and it could not supply the requested information because it did not
`
`possess rights in the ‘864 Registration, further evidencing HTRD’s acts of fraud on the PTO.
`
`23.
`
`As a consequence of these fraudulent acts, the ‘105 Registration should be
`
`cancelled under Section 14(3) of the Lanham Act, 15 U.S.C. § 1064(3).
`
`
`
`
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 7
`
`
`
`COUNT II
`CANCELLATION FOR FAILURE TO FILE
`VALID SECTION 8 DECLARATION WITHIN THE STATUTORY PERIOD
`
`Petitioner incorporates by reference the allegations of Paragraphs 1-23 as if fully
`
`24.
`
`set forth herein.
`
`25.
`
`Due to deficiencies in the purported chain of title for the ‘105 Registration, and
`
`collateral estoppel based on the Northern District of Georgia’s June 25, 2010 Order, the original
`
`Registrant, Axiom Worldwide, Inc., remained the de jure owner of the ‘105 Registration at the
`
`time of the statutory deadline to file a valid Section 8 Declaration under Section 8(b) of the
`
`Lanham Act, 15 U.S.C. § 1058(b).
`
`26.
`
`Axiom Worldwide, Inc. did not file a Section 8 Declaration within the time
`
`allowed under Section 8(b), or within the grace period provided therein.
`
`27.
`
`As a consequence of Axiom Worldwide, Inc.’s failure to file a Section 8
`
`Declaration for the ‘105 Registration, such registration should be cancelled pursuant to Section
`
`8(a)(1) of the Lanham Act, 15 U.S.C. § 1058(a)(1).
`
`
`COUNT III
`ABANDONMENT
`
`Petitioner incorporates by reference the allegations of Paragraphs 1-27 as if fully
`
`28.
`
`set forth herein.
`
`29.
`
`On information and belief, Axiom Worldwide Inc., the de jure owner of the ‘105
`
`Registration, has expressly abandoned its use in United States commerce of the mark depicted in
`
`the ‘105 Registration.
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 8
`
`30.
`
`Axiom Worldwide, Inc.’s web site, www.axiomworldwide.com, currently
`
`
`
`displays the following statement:
`
`The Axiom Worldwide Inc., website is being maintained solely for the purposes of
`supporting the international community. New machines are no longer available for sale in
`the United States and Canada. For more information, contact us.” James Gibson Jr. —
`President and CEO, Axiom Worldwide Inc.
`
` true and correct printout of this web site is attached as Exhibit J.
`
`31.
`
`On August 20, 2012, Axiom Worldwide, Inc. President and CEO James Gibson
`
` A
`
`
`
`issued a “News Update” advising that in April 2011 it had “discontinued manufacturing
`
`operations in the USA,” and “delist[ed] and terminated[ed] all US FDA 510(k)s for the
`
`DRX9000 Series of Products.” Copies of this statement and the FDA filings are attached as
`
`Exhibit K.
`
`32.
`
`On information and belief, the goods identified as “the DRX9000 Series of
`
`Products” in Exhibit K are covered by the ‘105 Registration.
`
`33.
`
`On information and belief, in view of the foregoing, Axiom Worldwide, Inc. has
`
`abandoned its use in the United States of the mark depicted in the ‘105 Registration for goods in
`
`International Class 10, and has no intent to resume its sale or offering for sale of such goods in
`
`the United States.
`
`34.
`
`Consequently, the ‘105 Registration should be cancelled pursuant to Section 14(3)
`
`of the Lanham Act, 15 U.S.C. § 1064(3).
`
`WHEREFORE, Petitioner prays that Registrant's U.S. Trademark Registration No.
`
`3,052,105 be cancelled.
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 9
`
`
`
`The filing fee of $300 is being submitted herewith by a credit card of Petitioner’s counsel
`
`noted below.
`
`Please direct all correspondence to Carrie A. Shufflebarger, Esq., at Thompson Hine,
`
`LLC, 312 Walnut Street, Fourteenth Floor, Cincinnati, Ohio 45202, and all calls to the same at
`
`(513) 352-6678.
`
`
`
`Respectfully submitted,
`
`
`
`/s/ Carrie A. Shufflebarger____________________
`Louis K. Ebling, Esq.
`Carrie A. Shufflebarger, Esq.
`Thompson Hine LLC
`312 Walnut Street
`Fourteenth Floor
`Cincinnati, Ohio 45202
`(513) 352-6678
`(513) 241.4771 (facsimile)
`carrie.shufflebarger@thompsonhine.com
`lou.ebling@thompsonhine.com
`
`
`
`
`
`
`
`
`
`Date: March 12, 2013
`
`
`
`826450.1
`
`
`
`
`

`
`Notice of Opposition
`In re Registration No. 3,052,105
`Page 10
`
`
`
`CERTIFICATE OF FILING
`
`I certify that this Petition for Cancellation is being submitted electronically to the
`
`Trademark Trial and Appeal Board at the United States Patent and Trademark Office on this
`12th day of March, 2013.
`
`
`
`/s/ Carrie A. Shufflebarger____________________
`Carrie A. Shufflebarger
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of this Petition for Cancellation is being served via mail, postage
`
`prepaid, on the following, on this 12th day of March, 2013.
`
`Kevin M. Madden
`Kane Russell Coleman & Logan
`919 Milam Street, Suite 2200
`Houston, Texas 77002
`
`HTRD Group Hong Kong
`Suite M
`5555 West Linebaugh Ave
`Tampa, Florida 33624
`
`James Gibson
`Axiom Worldwide, Inc.
`9423 Corporate Lake Drive
`Tampa, Florida 33634
`
`
`
` /s/ Carrie A. Shufflebarger____________________
`Carrie A. Shufflebarger
`
`826450.1
`
`
`
`
`

`
`Generated on: This page was generated by TSDR on 2013-03-11 14:57:29 EDT
`
`Mark: AXIUM
`
`US Serial Number: 85463170
`
`Register: Principal
`
`Mark Type: Trademark
`
`Application Filing Date: Nov. 03, 2011
`
`Status: A final Office action refusing registration has been sent (issued) because the applicant neither satisfied nor overcame all requirements
`and/or refusals previously raised. The applicant may respond by filing (1) a request for reconsideration; and/or (2) an appeal to the
`Trademark Trial and Appeal Board. To view all documents in this file, click on the Trademark Document Retrieval link at the top of this
`page.
`
`Status Date: Oct. 16, 2012
`
`
`
`Mark Literal Elements: AXIUM
`
`Mark Information
`
`Standard Character Claim: Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
`
`Mark Drawing Type: 4 - STANDARD CHARACTER MARK
`Goods and Services
`
`Note: The following symbols indicate that the registrant/owner has amended the goods/services:
`
`Brackets [..] indicate deleted goods/services;
`Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of
`Asterisks *..* identify additional (new) wording in the goods/services.
`
`For: Neuromodulation devices
`
`International Class: 010 - Primary Class
`
`U.S Class: 026, 039, 044
`
`Class Status: ACTIVE
`
`Basis: 1(b)
`
`Filed Use: No
`
`Filed ITU: Yes
`
`Filed 44D: No
`
`Filed 44E: No
`
`Filed 66A: No
`
`Filed No Basis: No
`
`Basis Information (Case Level)
`
`Currently Use: No
`
`Currently ITU: Yes
`
`Currently 44D: No
`
`Currently 44E: No
`
`Currently 66A: No
`
`Amended Use: No
`
`Amended ITU: No
`
`Amended 44D: No
`
`Amended 44E: No
`
`Currently No Basis: No
`Current Owner(s) Information
`
`Owner Name: Spinal Modulation, Inc.
`
`Owner Address: 1135 O'Brien Drive
`Menlo Park, CALIFORNIA 94025
`UNITED STATES
`
`Legal Entity Type: CORPORATION
`
`State or Country Where
`Organized:
`Attorney/Correspondence Information
`
`DELAWARE
`
`Attorney Name: Louis K. Ebling
`
`Attorney Primary Email
`Address:
`
`IPdocket@thompsonhine.com
`
`Correspondent
`Name/Address:
`
`LOUIS K. EBLING
`THOMPSON HINE LLP
`312 WALNUT ST
`CINCINNATI, OHIO 45202-4024
`UNITED STATES
`
`Phone:
`
`(513) 352-6527
`
`Attorney of Record
`Docket Number: 79005.2
`
`Attorney Email
`Authorized:
`
`Yes
`
`Correspondent
`
`Fax:
`
`(513) 241-4771
`
`

`
`Correspondent e-mail: IPdocket@thompsonhine.com
`
`Correspondent e-mail
`Authorized:
`
`Yes
`
`Domestic Representative - Not Found
`Prosecution History
`
`Date
`
`Description
`
`Oct. 16, 2012
`Oct. 16, 2012
`Oct. 16, 2012
`Sep. 04, 2012
`Sep. 04, 2012
`Sep. 04, 2012
`Mar. 01, 2012
`Mar. 01, 2012
`Mar. 01, 2012
`Feb. 22, 2012
`Nov. 07, 2011
`Nov. 07, 2011
`
`NOTIFICATION OF FINAL REFUSAL EMAILED
`FINAL REFUSAL E-MAILED
`FINAL REFUSAL WRITTEN
`TEAS/EMAIL CORRESPONDENCE ENTERED
`CORRESPONDENCE RECEIVED IN LAW OFFICE
`TEAS RESPONSE TO OFFICE ACTION RECEIVED
`NOTIFICATION OF NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION E-MAILED
`NON-FINAL ACTION WRITTEN
`ASSIGNED TO EXAMINER
`NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
`NEW APPLICATION ENTERED IN TRAM
`TM Staff and Location Information
`
`TM Attorney: SMITH, BRIDGETT G
`
`Current Location: TMO LAW OFFICE 115 - EXAMINING
`ATTORNEY ASSIGNED
`
`TM Staff Information
`Law Office Assigned: LAW OFFICE 115
`
`File Location
`
`Date in Location: Oct. 16, 2012
`
`Proceeding
`Number
`
`76582
`88889
`88889
`
`6325
`6325
`76582
`76582
`
`

`
`To:
`
`Subject:
`
`Sent:
`
`Spinal Modulation, Inc. (IPdocket@thompsonhine.com)
`
`U.S. TRADEMARK APPLICATION NO. 85463170 - AXIUM - 79005.2
`
`10/16/2012 11:06:09 AM
`
`Sent As:
`
`ECOM115@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
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`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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`*85463170*
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`CLICK HERE TO RESPOND
`http://www.uspto.gov/trademarks/te
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` APPLICATION SERIAL NO. 85463170
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` MARK: AXIUM
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` CORRESPONDENT ADDRESS:
` LOUIS K. EBLING
` THOMPSON HINE LLP
` 312 WALNUT ST
` CINCINNATI, OH 45202-4024
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` APPLICANT: Spinal Modulation, Inc.
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` CORRESPONDENT’S REFERENCE/DOCKET NO :
` 79005.2
` CORRESPONDENT E-MAIL ADDRESS:
` IPdocket@thompsonhine.com
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`OFFICE ACTION
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`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST
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`RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE
`ISSUE/MAILING DATE BELOW.
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`ISSUE/MAILING DATE: 10/16/2012
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`THIS IS A FINAL ACTION.
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`This letter responds to the applicant's communication filed on September 4, 2012. The examining
`attorney has considered the applicant's arguments carefully related to Registration Nos. 3052105 and
`3056864, but found them unpersuasive; therefore, the likelihood of confusion refusal is maintained and
`made FINAL. The likelihood of confusion refusal related to Registration No. 3823509 is withdrawn
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`I. Likelihood of Confusion
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark
`that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the
`goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du
`Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be
`considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP
`§1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor
`may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co.,
`315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-
`62, 177 USPQ at 567.
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`In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods
`and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60
`USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc. , 59 USPQ2d 1593 (TTAB 1999); In re
`Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
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`A. Similarity of the Marks
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`The applicant has applied to register the mark AXIUM in standard character form. The registered marks
`are:
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`2.
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`1.
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`AXIOM WORLDWIDE stylized with a design for use on “medical devices and systems, namely
`non-surgical diagnostic and treatment devices and systems including spinal decompression units,
`bone densitometers and non-surgical
`laser therapy systems” in International Class 10 (U.S.
`Registration No. 3052105), and
`AXIOM WORLDWIDE in standard character form for use on “medical devices and systems,
`namely non-surgical diagnostic and treatment devices and systems including spinal decompression
`units, bone densitometers and non-surgical laser therapy systems” in International Class 10 (U.S.
`Registration No. 3056864).
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`The question is not whether people will confuse the marks, but whether the marks will confuse people into
`believing that the goods and/or services they identify come from the same source. In re West Point-
`Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b). For that
`reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to
`a side-by-side comparison. The question is whether the marks create the same overall impression. See
`Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info.
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`Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980). The focus is on the recollection of the
`average purchaser who normally retains a general rather than specific impression of trademarks.
`Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air
`Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
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`When a mark consists of a word portion and a design portion, the word portion is more likely to be
`impressed upon a purchaser’s memory and to be used in calling for the goods and/or services. Therefore,
`the word portion is normally accorded greater weight in determining likelihood of confusion. In re
`Dakin’s Miniatures, Inc. , 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3
`USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976);
`TMEP §1207.01(c)(ii).
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`The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be
`sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d
`1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc. , 84 USPQ2d 1581, 1586 (TTAB 2007);
`TMEP §1207.01(b)(iv). There is no correct pronunciation of a mark because it is impossible to predict
`how the public will pronounce a particular mark. See In re Viterra Inc., 671 F.3d 1358, 1367, 101
`USPQ2d 1905, 1912 (Fed. Cir. 2012); Centraz Indus. Inc. v. Spartan Chem. Co., 77 USPQ2d 1698, 1701
`(TTAB 2006); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such
`similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In
`re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc. , 84
`USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
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`Furthermore, although marks are compared in their entireties, one feature of a mark may be more
`significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362,
`101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp. , 753 F.2d 1056, 1058, 224 USPQ 749,
`751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter is typically less significant or
`less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d
`1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp. , 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed.
`Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). In this case, the registered marks have disclaimed the
`wording WORLDWIDE making it less dominant than the word AXIOM.
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`Despite the differences in the marks, the marks remain substantially similar.
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` B. Similarity of Goods
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`The applicant has applied for use of its mark on neuromodulation devices. The registered marks are used
`on “medical devices and systems, namely non-surgical diagnostic and treatment devices and systems
`including spinal decompression units, bone densitometers and non-surgical laser therapy systems among
`other services.”
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`The applicant argues that the goods are unrelated from the cited goods. The applicant suggest that since
`the registrant uses the term “including” which the office typically does not prefer, that I should interpret
`the goods using the terms “namely” instead to the term “including” as identified in the cited
`registrations. Unfortunately, the Examining Attorney must interpret the goods based on how they have
`been approved. As previously indicated, analyzing the applicant’s and registrant’s goods and/or services
`for similarity and relatedness is based on the description of the goods and/or services set forth in the
`application and registration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v.
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`Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also
`Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir.
`2002); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp. Inc., 648 F.2d 1335, 1337, 209 USPQ 986, 988
`(C.C.P.A. 1981).
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`Absent restrictions in an application and/or registration, the identified goods and/or services are presumed
`to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank
`Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v.
`Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad
`identifications are presumed to encompass all goods and/or services of the type described. See In re Jump
`Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
`1992).
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`In this case, the identification set forth in the application and registration(s) has no restrictions as to nature,
`type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or
`services travel in all normal channels of trade, and are available to the same class of purchasers. Further,
`the registration(s) use(s) broad wording to describe the goods and/or services and this wording is
`presumed to encompass all goods and/or services of the type described, including those in applicant’s
`more narrow identification. The registrant identifies its goods as “medical devices and systems, namely
`non-surgical diagnostic and treatment devices and systems including spinal decompression units, bone
`densitometers and non-surgical laser therapy systems among other services.” Specifically, the wording
`non-surgical and treatment devices and systems is broad enough to include related and similar to the
`neuromodulation devices in Applicant’s more specific identification of goods. See attached Internet
`article from the North Amercian Neuromodulation Society. The attached article also indicates that “[t] he
`neuromodulation community is based on a multidisciplinary approach that is diverse in its delivery. It
`involves physicians, industry, and basic science researchers. Clinicians involved in the procedures vary
`from neurosurgeons, anesthesiologists, pain specialists, and rehab physicians. Those involved in the
`multidisciplinary approach can include neurologists, psychiatrists, psychologists, primary care physicians,
`and physical therapy.”
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`The goods/services of the parties need not be identical or directly competitive to find a likelihood of
`confusion. They need only be related in some manner, or the conditions surrounding their marketing be
`such, that they could be encountered by the same purchasers under circumstances that could give rise to
`the mistaken belief that that goods/services come from a common source. In re Martin’s Famous Pastry
`Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65
`(TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper
`Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910
`(TTAB 1978).
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`The goods/services in question have highly similar uses and are likely to be used in conjunction with each
`other. Attached to this Final Action are Internet articles which show that the neuromodulation field may
`include a wide range of disciplines and treatment, surgical and non-surgical. AXIOM WORLDWIDE’s
`attached website states that “[a]t Axiom Worldwide, [their] long-term goal has remained the same
`since…company was founded in 2001: to consistently produce high quality, innovative treatment options
`utilizing emerging technologies to improve the quality of life of patients suffering from a variety of
`chronic back and neck conditions.” The Applicant’s website indicates that its neuromodulation devices
`are “ designed for managing chronic intractable pain.” It appears that the applicant