UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/342530

 

On April 4, 2005, action on this application was suspended pending the disposition of Application Serial No. 78035663.  The referenced application has matured into a registration.  Therefore, registration is refused as follows.

 

SECTION 2(D) LIKELIHOOD OF CONFUSION REFUSAL

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 3109879  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

 

The applicant uses its mark BRAINSCAN on goods and services identified as “Nucleic acids, polypeptides, and derivatives; Kits containing nucleic acids and other reagents for performing nucleic acid based assays; Solid supports, namely, chip supports, bead, glass slides, filters, microtiters plates and universal constant pore glass, coated with synthetic nucleic acids; all for use in scientific and medical research” in Class 5, “Data processing for the purpose of scientific and medical research “ in Class 35 and “Research, testing, and analysis of genetic material Diagnostic services in the field of genetic information and central nervous system disorders; Database development, namely, compiling and systemizing genetic and statistical information; Providing database featuring genetic and statistical information for use in scientific and medical research; all for use in scientific and medical research” in Class 42.  The registrant uses its mark BRAINSCAN on goods and services identified as “COMPUTERS; PLANNING SOFTWARE AND PROGRAMS FOR MEDICAL PURPOSES, NAMELY FOR NEUROSURGICAL AND RADIOTHERAPEUTICAL PURPOSES; MAGNETIC OR OPTICAL STORAGE MEDIA INCLUDING PLANNING SOFTWARE AND PROGRAMS FOR MEDICAL PURPOSES, NAMELY FOR NEUROSURGICAL AND RADIOTHERAPEUTICAL PURPOSES” in Class 9 and “ELECTRONIC APPARATUS AND IMAGE PRESENTATION APPARATUS FOR MEDICAL PURPOSES, NAMELY FOR NEUROSURGICAL AND RADIOTHERAPEUTICAL PURPOSES, AND FOR APPLICATION WITH IMAGE-GUIDED LOCALIZATION SYSTEMS FOR SURGICAL PURPOSES; NEUROSURGICAL INSTRUMENTS AND APPARATUS; RADIOTHERAPEUTIC APPARATUS; INSTRUMENTS AND APPARATUS FOR DETECTING AND SETTING TARGET POINTS FOR MEDICAL PURPOSES; SYSTEMS FOR SOFTWARE-CONTROLLED PRECISION TREATMENT IN NEUROSURGERY AND RADIOTHERAPY; PROBES, SENSORS, ELECTRONIC APPARATUS AND IMAGE PRESENTATION APPARATUS FOR LOCALIZATION SYSTEMS” in Class 10 and “COMPUTER PROGRAMMING SERVICES, NAMELY, DEVELOPING PROGRAMS FOR OTHERS IN THE FIELDS OF NEUROSURGERY AND RADIOTHERAPY” in Class 42.

 

Comparison of the Marks

The applicant’s and registrant’s marks are identical.

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

Comparison of the Goods/Services

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a). 

 

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 the 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).  TMEP §1207.01(a)(i). 

 

The applicant’s and registrant’s goods and services are used in the same field and would be marketed to the same class of purchaser.  The goods could potentially be used together and the services could involve overlap or research in the area of each others goods.

 

Because of the similarity between the applicant’s and registrant’s marks and because the marks are used on  related goods and services consumers are likely to mistakenly believe that the  goods and services come from the same source.  For these reasons registration of the applicant’s mark is refused in accordance with Section 2(d) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

DISCLAIMER

The disclaimer of "medical imaging apparati, software and services" must be deleted from the application. This

language is not a part of the mark and therefore should not be disclaimed.

 

IDENTIFICATION OF GOODS AND SERVICES

The applicant's Class 35 and Class 42 identifications are acceptable as amended.

 

The Class 1 identification now contains goods which should be classified in a class other than Class 1. Solid supports, namely, chip supports, beads, glass slides, filters, micro titers, plates and universal constant pore glass coated with synthetic nucleic acids" are all laboratory equipment and are properly classified in Class 9. The applicant must delete these goods or add Class 9 to the application.

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.7 1(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods/services that are not within the scope of the goods/services recited in the present identification.

 

The application identifies goods/services that may be classified in several international classes. Therefore, the applicant must either: (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class. 37 C.F.R. Section 2.86(a)(2); TMEP sections 810.01 and 1113.01.

 

The fee for filing a trademark application is $335 for each class. 37 C.F.R. Section 2.6(a)(1).

 

If the applicant prosecutes this application as a combined, or multiple-class, application, the applicant must comply with each of the following:

 

(1)        The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order. TMEP section 1113.01.

 

(2)        The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01. The fee for filing a trademark application is $335 for each class.

 

(3)        The applicant must submit:

 

(a)        dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a). The dates of use must be at least as early as the filing date of this application. 37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing

date of the application, and/or

 

(b)        a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b).

 

(4)        The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above. 37 C.F.R. Sections 2.59(a) and 2.7 1(c).

 

 

/Kelley L. Wells/

Kelley L. Wells

Trademark Examining Attorney

Law Office 105

Phone: 571-272-9312

Fax: 571-273-9105

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.