`
`ESTTA1363502
`
`Filing date:
`
`06/06/2024
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Ex Parte Appeal -
`Serial No.
`
`97172345
`
`Appellant
`
`Imperative Care, Inc.
`
`Applied for mark
`
`Z
`
`Correspondence
`address
`
`STEVEN J. NATAUPSKY
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 MAIN STREET, 14TH FLOOR
`IRVINE, CA 92614
`UNITED STATES
`Primary email: efiling@knobbe.com
`949-760-0404
`
`Submission
`
`Attachments
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Reply brief
`
`Reply Brief.pdf(266536 bytes )
`Exhibits-.pdf(3926156 bytes )
`
`Zoe Vikstrom
`
`efiling@knobbe.com
`
`/Zoe Vikstrom/
`
`06/06/2024
`
`
`
`TSP.145T
`97/172345
`Z
`
`
`
` Trademark Trial and Appeal Board
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`Applicant :
`
`Serial No.
`
`Filed
`
`Mark
`
`
`:
`
`:
`
`:
`
`Imperative Care, Inc.
`
`
`
`97/172345
`
`December 14, 2021
`
`Z
`
`APPLICANT’S REPLY BRIEF
`
`Commissioner for Trademarks
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`Dear Sir or Madam:
`
`
`
`Applicant submits that this Reply Brief is timely filed as Applicant submitted a Motion to
`
`Extend Its Reply Brief Deadline (“Motion to Extend”) by 30 days on May 7, 2024. A true and
`
`correct copy of the Motion to Extend as filed, along with the confirmation receipt, is attached as
`
`Exhibit A.
`
`I.
`
`The Examining Attorney Incorrectly States that Applicant Did Not Provide
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`Evidence that Applicant’s Goods are Limited to Brain Surgery
`
`
`
`The Examining Attorney states in the Appeal Brief that Applicant did not provide evidence
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`that Applicant’s Goods are limited to use during “brain surgery,” and that “Applicant did not cite
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`to any evidence in the record to support its assertion that vascular catheters cannot serve
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`neurovascular, cardiovascular, and/or endovascular applications.” See Examining Attorney’s
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`Appeal Brief, p. 9. This is simply incorrect. See Applicant’s Appeal Brief, pp. 9-10. Moreover,
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`the term “neurovascular” must be analyzed in the context of Applicant’s entire identification of
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`goods. Here, Applicant’s applied-for goods are “Medical catheters for use in the neurovascular
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`
`
`-1-
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`
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`TSP.145T
`97/172345
`Z
`
`
`
` Trademark Trial and Appeal Board
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`system; Access catheters for the introduction of medical devices in the neurovascular system;
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`Aspiration catheters for use in the neurovascular system; Medical pumps for use in the
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`neurovascular system, namely, vacuum pumps and aspiration pumps; Medical filters for use in the
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`neurovascular system, namely, filters for capturing debris and clots in the bloodstream; All of the
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`foregoing for use by medical healthcare professionals in the neurovascular field” in Class 10
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`(emphasis added). See Applicant’s Appeal Brief, p. 1. As shown in Applicant’s recitation of goods,
`
`the term “neurovascular” is used to modify the term “system,” and a “neurovascular system” is a
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`structural unit of the brain. See Molecular Neurobiology Volume 57 (July 28, 2020) (defining
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`“neurovascular system” as “a functional and structural unit of the brain”). See Exhibit B.
`
`Moreover, the Collins Dictionary defines “neuro” as “of a nerve, nerves, or the nervous system.”
`
`See Exhibit C. The Board may take judicial notice of dictionary definitions that (1) are available
`
`in a printed format, (2) are the electronic equivalent of a print reference work, or (3) have regular
`
`fixed editions. See TBMP §1208.04; TMEP §710.01(c); see also Fed. R. Evid. 201; 37 C.F.R.
`
`§2.122(a). Thus, Applicant has provided evidence that its goods, neurovascular catheters, are
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`limited to use with the brain.
`
`By contrast, the goods identified in the Cited Marks Z2, Z-TRAK, and Z-TRAK PLUS do
`
`not have neurovascular system applications and none of the recitations of goods for these
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`registrations include the wording “neurovascular”. Instead, the goods identified in the Cited Mark
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`Z2 are limited to coronary guiding catheters. Coronary is defined by the Merriam Webster
`
`Dictionary as “of or relating to the heart.” See Exhibit D. In addition, the catheters identified in
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`the Cited Marks Z-TRAK and Z-TRAK PLUS are limited to use with “endovascular grafts.”
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`“Graft” is defined by Taber’s Medical Dictionary as “Tissue transplanted or implanted in a part of
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`the body to repair a defect” and is defined by Merriam Webster Dictionary as “to implant (living
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`
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`-2-
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`TSP.145T
`97/172345
`Z
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`
` Trademark Trial and Appeal Board
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`tissue) surgically.” See Exhibit E. The Board may take judicial notice of these dictionary
`
`definitions. See TBMP §1208.04; TMEP §710.01(c); see also Fed. R. Evid. 201; 37 C.F.R.
`
`§2.122(a).
`
`Surgeons using coronary guiding catheters and catheters for endovascular grafts are using
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`these sophisticated medical devices to perform different procedures on entirely different parts of
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`the body than neurosurgeons using neurovascular catheters during procedures involving the
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`neurovascular system. Given these considerable differences between these medical devices, their
`
`intended uses, and the types of highly skilled and technically trained physicians using such medical
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`devices, such physicians and medical device purchasing agents are not likely to be confused as to
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`the source of such medical devices. This is further demonstrated by the co-existence of the Cited
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`Marks with numerous other Z marks on the register for medical goods. See Applicant’s Brief,
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`pp.20-24. Moreover, the peaceful co-existence of the cited registration for Z2 (owned by
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`Medtronic, Inc.) with Z-TRAK and Z-TRAK PLUS (owned by Cook Medical Technologies LLC),
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`shows that these highly sophisticated and discerning consumers can readily distinguish between
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`the marks and the respective medical devices, even where these goods can be broadly categorized
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`as “catheters”.
`
`II.
`
`The Evidence of Record Does Not Demonstrate
`
`that Applicant’s
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`Neurovascular System Catheters are Related to the Surgical Instruments Identified
`
`in the Cited Mark
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`Owned by Zimmer, Inc.
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`The Examining Attorney asserts that Applicant’s neurovascular system catheters are
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`directly overlapping with the surgical instruments and apparatuses identified in Registration No.
`
`
`
`-3-
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`
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`TSP.145T
`97/172345
`Z
`
` Trademark Trial and Appeal Board
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`2478454 for the Cited Mark
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`because Applicant’s Goods are used during surgical
`
`procedures in the medical field. See Examining Attorney’s Appeal Brief, p.6. However, the
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`Principles of Neurological Surgery (Fourth Edition 2018) defines “surgical instruments” as “tools
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`that allow surgeons to open the soft tissue, remove the bone, dissect and isolate the lesion, and
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`remove or obliterate the abnormal structures of the treatment.” See Exhibit F. By contrast,
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`neurovascular catheters are defined by the Merriam Webster Dictionary as “a tubular medical
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`device[s] for insertion into canals, vessels, passageways, or body cavities usually to permit
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`injection or withdrawal of fluids or to keep a passage open.” (emphasis added). See Exhibit G.
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`The Board may take judicial notice of these dictionary definitions. See TBMP §1208.04; TMEP
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`§710.01(c); see also Fed. R. Evid. 201; 37 C.F.R. §2.122(a).
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`Catheters cannot and do not function to lacerate and remove tissue, bones, lesions, or other
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`abnormal structures within the human body, and therefore, do not fall within the definition of
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`“surgical instruments.” Indeed, the file history of the
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`registration does not identify
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`catheters in its line of surgical instruments. See Applicant’s Response to Office Action, Exhibit
`
`B.
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`Accordingly, the Examining Attorney does not provide proper weight to the very
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`significant differences between Applicant’s neurovascular system catheters used during brain
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`procedures by neurosurgeons and Registrant’s general surgical instruments used by general
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`surgeons to cut tissue or bone. The evidence of record establishes that Applicant’s Goods and
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`those in the cited registrations are unrelated such that the relevant consumers, who are highly
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`-4-
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`TSP.145T
`97/172345
`Z
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`sophisticated and highly trained physicians and/or medical purchasing agents, are unlikely to be
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`confused.
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`III. The Examining Attorney’s Internet Evidence Fails to Establish that the Goods
`
`in the Cited Marks and Applicant’s Goods are Related
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`The Examining Attorney asserts that the evidence of record shows “a wide swath of these
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`[surgical] instruments are provided by the same brand” and that Applicant’s Goods are
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`“encompassed by the broad identifications in the cited registrations such as ‘a full line of surgical
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`instruments and apparatuses.’” See Examining Attorney’s Appeal Brief, p.8. This contention is
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`flawed for two reasons. First, as established above, Applicant’s Goods are not “surgical
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`instruments” and do not overlap with the other types of catheters offered under the cited
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`registrations. Second, the Examining Attorney’s contention is unsupported by case law. Goods
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`are not deemed related for purposes of a likelihood of confusion analysis simply because they both
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`appear on a company’s website. Instead, to support a conclusion that the respective marks are
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`confusingly similar, the goods specified in the application must be related to the goods listed in
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`the cited marks such that consumers would be confused about the source of origin. See T.M.E.P.
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`§ 1207.01(a)(i). If the goods are not related or marketed in such a way that they would not be
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`encountered by the same people in situations that would create the incorrect assumption that they
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`originate from the same source, then there is no likelihood of confusion, even if the marks are
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`identical. See id.
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`Here, the Examining Attorney submitted webpage printouts of the brand MicroVention
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`(see Final Office Action, p. 25-26), which includes a wide variety of products, including a balloon
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`catheter and an aspiration pump:
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`
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`-5-
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`TSP.145T
`97/172345
`Z
`
`
`
` Trademark Trial and Appeal Board
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`.
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`The fact that these two goods are offered by the same large medical device company does
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`not show that they are similar or related in any way. These devices serve completely different
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`purposes and are fundamentally different from one another, particularly amongst the highly trained
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`medical professionals who use these medical products. Similarly, Applicant’s neurovascular
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`catheters are not related to general surgical instruments simply because they each appear on a
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`single company’s website. Therefore, the Examining Attorney’s examples of “large swaths” of
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`products being offered under the same marks discounts a fundamental step in the likelihood of
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`confusion analysis—comparing the similarity of the goods and whether they are marketed in such
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`a way that they would not be encountered by the same consumers in situations that would create
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`the false assumption that the products originate from the same source. Because surgical
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`instruments for cutting tissue or bone are fundamendtally different from neurovascular catheters
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`used during brain surgery, and highly trained and specialized neurosurgeons are fundamentally
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`different from other types of surgeons, these goods are not related or marketed to the same
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`consumers. Indeed, neurosurgeons are one of the most highly specialized medical practitioners in
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`any medical system, and as such, they do not also perform general surgery. Similarly,
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`cardiovascular surgeons are also highly trained physicians that cannot and do not perform
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`-6-
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`TSP.145T
`97/172345
`Z
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` Trademark Trial and Appeal Board
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`neurosurgery. As such, these highly trained physicians would not be using the same types of
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`instruments to perform these fundamentally different surgical procedures on completely different
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`parts of the body.
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`IV.
`
`It Is Unreasonable to Assume, and There is No Evidence Supporting the
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`Proposition, that Surgeons in the Same School or Hospital Would Discuss Applicant’s
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`Mark and the Cited Marks and Be Confused as to the Source of Applicant’s Goods
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`The Examining Attorney states that “in the absence of evidence to the contrary, it is
`
`reasonable to believe that surgeons at the same school or hospital do have a working relationship
`
`and may discuss their work and their tools with one another, and to assume that one surgeon’s “Z”
`
`brand of tools is the same “Z” brand used by their colleagues.” See Examining Attorney’s Appeal
`
`Brief, pp. 10-11. Applicant respectfully disagrees. First, Applicant has provided evidence to the
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`contrary in its Appeal Brief (see Applicant’s Appeal Brief, pp. 6-10), including that neurosurgeons
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`using neurovascular system catheters in brain surgery undergo different training and specialties as
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`compared to surgeons using general surgery instruments, endovascular catheters for endovascular
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`grafts, and coronary guiding catheters. Second, it is the Examining Attorney’s burden to prove a
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`likelihood of confusion, and there is simply no evidence that these conversations occur. In
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`addition, a hypothetical possibility of confusion does not create a likelihood of confusion. The
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`Federal Circuit has specifically held: “[w]e are not concerned with mere theoretical possibilities
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`of confusion, deception, or mistake or with de minimus situations but with the practicalities of the
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`commercial world, with which the trademark laws deal.” Elec. Design & Sales, Inc. v. Elec. Data
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`Sys. Corp., 954 F.2d 713, 719, 21 U.S.P.Q.2d (BNA) 1388, 1393 (Fed. Cir. 1992) (citing Witco
`
`Chem., 418 F.2d at 1405). Likelihood of confusion “is synonymous with ‘probable’ confusion—
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`it is not sufficient if confusion is merely ‘possible.’” 4 McCarthy on Trademarks and Unfair
`
`
`
`-7-
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`TSP.145T
`97/172345
`Z
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` Trademark Trial and Appeal Board
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`Competition § 23:3 (5th ed.) (quoting Am. Steel Foundries v. Robertson, 269 U.S. 372, 383 (1926));
`
`see also Mtd Prods. Inc. v. Universal Tire Corp., 193 U.S.P.Q. (BNA) ¶ 56 (T.T.A.B. Oct. 18,
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`1976) (“A possibility of such confusion always exists, but what may be possible may not at all be
`
`probable and, if not probable, it is not likely.”).
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`Moreover, the mere remote possibility that two surgeons working at the same school or
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`hospital could discuss their respective medical devices with each other does not demonstrate that
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`such highly sophisticated consumers would be likely to be confused as to the source of these goods.
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`Indeed, the standard is not a possibility of confusion, but a likelihood or probability of confusion.
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`See id. Indeed, the marketplace has already demonstrated that the
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`registrations and the
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`Z2, Z-TRAK, and Z-TRAK PLUS registrations can peacefully co-existence. Given the
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`sophistication and high degree of purchasing care of the relevant consumers, the very different
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`nature of the goods and the procedures under which they are used, and the differences in the
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`appearance and/or spelling of the marks, confusion is simply not probable.
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`As described above, the purpose and the nature of Applicant’s Goods (neurovascular
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`system catheters used in neurosurgery) and the goods in connection with the Cited Marks (general
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`surgery instruments, endovascular catheters, and coronary guiding catheters) are completely
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`distinct and used by exceedingly sophisticated surgeons who are trained in completely different
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`types of surgical procedures on distinct parts of the body. Therefore, these specialized surgeons
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`and highly sophisticated medical device purchasing agents are acutely aware of the differences
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`between these respective goods, and it simply is implausible that the relevant consumers are likely
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`to be confused as to the source of these medical products after having a brief conversation with a
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`colleague.
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`-8-
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`TSP.145T
`97/172345
`Z
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` Trademark Trial and Appeal Board
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`V.
`
`The Examining Attorney Mischaracterizes the Scope of Protection of
`
`Applicant’s Mark
`
`The Examining Attorney mischaracterizes the scope of protection of Applicant’s Mark
`
`when stating Applicant’s Mark is legally identical to the registrations for the mark
`
`. See
`
`Examining Attorney’s Appeal Brief, p. 4. Indeed, the rights associated with a mark presented in
`
`standard characters pertain only to “font style, size, or color” and do not apply to any additional
`
`shapes or design elements. See In re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905,
`
`1910 (Fed. Cir. 2012); Citigroup Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 1353, 98
`
`USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d at 1187 ("We
`
`hold that when we are comparing a standard character mark to a word + design mark for Section
`
`2(d) purposes, we will consider variations of the depictions of the standard character mark only
`
`with regard to ‘font style, size, or color’ of the ‘words, letters, numbers, or any combination
`
`thereof.’"). Given that the
`
`registrations include a circle design, whereas Applicant’s
`
`Mark does not, the marks are not legally identical as Applicant’s plain block letter filing does not
`
`provide any claim to additional shapes or designs. In addition, the
`
`registrations are not
`
`entitled to a broad scope of protection in view of the peaceful co-existence of these marks with
`
`other standalone “Z” marks in Class 10 for medical goods. See Applicant’s Appeal Brief, pp. 20-
`
`24. Thus, consumers will readily perceive even very subtle differences between the marks and/or
`
`the underlying goods, particularly as Applicant’s neurovascular catheters serve very different
`
`purposes from registrant’s general surgical instruments, as discussed above. In view of the
`
`significant differences in the respective goods, the high degree of purchasing care exercised by the
`
`
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`-9-
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`TSP.145T
`97/172345
`Z
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` Trademark Trial and Appeal Board
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`relevant consumers, the narrow scope of protection for these registrations, and the difference
`
`between the appearances of the respective marks, confusion is not likely.
`
`VI. Conclusion
`
`Applicant respectfully requests that the likelihood of confusion refusal be reversed and that
`
`Applicant’s Mark be approved for publication.
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`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON, & BEAR LLP
`
`By:
`
`/Zoe Vikstrom/
`
`
`
`
`
`
`
`
`
`Steven J. Nataupsky
`Jonathan Menkes
`Zoe Vikstrom
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`(949) 760-0404
`efiling@knobbe.com
`
`-10-
`
`
`
`
`
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`
`
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`
`
`Exhibit A
`Exhibit A
`
`
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Applicant :
`
`Serial No.
`
`Filed
`
`Mark
`
`
`:
`
`:
`
`:
`
`
`
`Imperative Care, Inc.
`
`
`
`97/172345
`
`December 14, 2021
`
`Z
`
`APPLICANT’S MOTION FOR EXTENSION OF TIME TO FILE RESPONSE BRIEF
`
`Pursuant to T.B.M.P. §1203.02(d) and 1203.02(c), Applicant respectfully requests a 30-
`
`
`
`day extension of time within which to file its Reply Brief. Applicant submits that good cause
`
`exists for this extension request.
`
`Applicant respectfully requests that the Board grant Applicant a short extension request as
`
`Applicant needs additional time to confer with its counsel. As the short extension request will not
`
`cause any prejudice to the USPTO, Applicant respectfully requests that the extension request be
`
`granted.
`
`
`
`
`
`
`
`
`
`
`
` Respectfully submitted,
`
`
`
`
`
`
`
`Dated: May 7, 2024
`
`
`
`
`
`
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`/Zoe Vikstrom/
`
`By:
`
`Steven J. Nataupsky
`
`Zoe Vikstrom
`
`Attorneys for Applicant
`2040 Main Street, 14th Floor
`
`
`Irvine, CA 92614
`
`(949) 760-0404
`
`
`
`
`
`
`
`
`
`
`
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`
`
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`
`
`Exhibit B
`Exhibit B
`
`
`
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`The Role of Neurovascular System in
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`microenvironment for normal functioning, neuronal survival, and information processing.
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`Recent studies have highlighted the role of vascular dysfunction in several
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`neurodegenerative diseases. This is not unexpected since both nervous and vascular
`
`systems are functionally interdependent and show close anatomical apposition, as well as
`
`similar molecular pathways. However, despite extensive research, the precise mechanism
`
`by which neurovascular dysfunction contributes to neurodegeneration remains
`
`incomplete. Therefore, understanding the mechanisms of neurovascular dysfunction in
`
`disease conditions may allow us to develop potent and effective therapies for prevention
`
`and treatment of neurodegenerative diseases. This review article summarizes the current
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`.
`.
`.
`.
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`research in the context of neurovascular signaling associated with neurodegenerative
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`Fundin
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`diseases, such as Alzheimer(cid:8217)s disease (AD), Parkinson(cid:8217)s disease (PD), amyotrophic lateral
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`sclerosis (ALS), and Huntington(cid:8217)s disease (HD). We also discuss the potential implication of
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`neurovascular factor as a novel therapeutic target and prognostic marker in patients with
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`neurodegenerative conditions.
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`Endothelial
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`Document title: The Role of Neurovascular System in Neurodegenerative Diseases | Molecular Neurobiology
`Capture URL: https://link.springer.com/article/10.1007/s12035-020-02023-z
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`Page 1 of 45
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`neurodegenerative conditions.
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`Article
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`References
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`1. Begley DJ, Brightman MW (2003) Structural and functional aspects of the blood-brain
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`Document title: The Role of Neurovascular System in Neurodegenerative Diseases | Molecular Neurobiology
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`Definition of 'neuro-'
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`neuro-
`
`in American English
`
`((cid:8216)nurow *); (cid:8216)njurow 4); 'nura 4); 'njora @))
`
`of a nerve, nerves, or the nervous system
`
`neuropathy
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`Pronunciation
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`around small London
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`He attempted to
`pedal his paintings
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`J
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`Webster's New World College Dictionary, 4th Edition. Copyright © 2010 by Houghton Mifflin
`
`Harcourt. All rights reserved.
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`Word origin
`
`< Gr neuron, nerve
`
`neuro-
`
`in American English
`
`COMBINING FORM
`
`neurology
`
`Also (esp. before a vowel): neur-
`
`Most material © 2005, 1997, 1991 by Penguin Random House LLC. Modified entries © 2019 by
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`Document title: NEURO- definition in American English | Collins English Dictionary
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`monday.on
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`[< Gk neuro-, comb. form of netiron, akin to L nervus]
`
`neuro-
`in British English
`
`or before a vowel heur-
`
`COMBINING FORM
`
`indicating a nerve or the nervous system
`neuroblast
`
`neurology
`
`Collins English Dictionary. Copyright © HarperCollins Publishers
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`Word origin
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`from Greek neuron nerve; related to Latin nervus
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`Related terms of
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`neuro-
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`Document title: NEURO- definition in American English | Collins English Dictionary
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`Document title: NEURO- definition in American English | Collins English Dictionary
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`Exhibit D
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`Soe Birla
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`Dae ay
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`Definition
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`COPrONALY 102 adjective
`
`cor-o-nary ( (cid:8216)kOr-a-,ner-64) ) (cid:8216)kar-,
`
`-,ne-ré
`
`noun
`
`
`
`
`
`Example Sentences
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`Word History
`
`Phrases Containing
`
`1
`
`2
`
`:of, relating to, resembling, or being a crown or coronal
`
` :of, relating to, or being the coronary arteries or veins of the heart
`
`broadly : of or relating to the heart
`
`COronaly
`
`2.2 noun
`
`Noite] (cid:8364) 10 Waa
`
`adatom re] 6
`
`- Show More v
`
`plural coronaries
`
`1
`
`a: CORONARY ARTERY
`
`b
`
`: CORONARY VEIN
`
`Save Word
`
`2
`
`: CORONARY THROMBOSIS
`
`broadly : HEART ATTACK
`
`
`
`
`
` Quordle
`W
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`
`O
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`L
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`> Examples of coronary in a Sentence
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`Noun
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`| almost had a coronary when | heard the news.
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`But for people with a higher likelihood of heart problems, the risk of
`/
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`atrial fibrillation is counterbalanced by the potential anti-inflammatory,
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`_
`anti-clotting, and triglyceride-lowering benefits of omega-3 fats, which
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`Document title: Coronary Definition & Meaning - Merriam-Webster
`Capture URL: https://www.merriam-webster.com/dictionary/coronary#:~:text=of%202%20adjective-,cor%C2%B7%E2%80%8Bo%C2%B7%E2%80%8Bnary%20%CB…
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