Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

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

 

Serial Number  76/558189

 

The following issues were discussed in communication with Timothy Linkkila on May 27, 2004.

 

Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 1790060 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

In determining whether there is a likelihood of confusion, the examining attorney must consider all circumstances surrounding the sale of the goods/services.  Industrial Nucleonic Corp. v. Hinde Engineering Co., 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973).  These circumstances include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods/services.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  If the goods/services of the parties differ, it is necessary to show that they are related in some manner.  In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01 et seq. 

 

The applicant has applied to register BIOGEN IDEC for providing assistance to patients in obtaining reimbursements from insurers of health care costs and providing grants for improving the quality of life of patients and their families, providing grants in support of scientific, medical and business meetings and workshops, and providing grants in support of educating the public about medical issues and educational services, namely, providing training and instruction in the use of specialized drug administration techniques, and conducting seminars in the field of health care and research and consultation services in the field of biotechnology and providing health care services, namely, providing health care information to individuals by means of a toll-free telephone number, and monitoring and advising patients' compliance with drug treatment procedures.  The registered mark is IDEC PHARMACEUTICALS (with PHARMACEUTICALS disclaimed) for a house mark for drugs, pharmaceuticals, and reagents used in the diagnosis monitoring and treatment of cancer, infectious diseases, and auto-immune disorders and research, development services in the field of immunotherapeutic substances; patient monitoring and treatment; clinical testing; medical therapy and immunotherapy; and immunodiagnostic services and monitoring thereof.

 

The marks of the parties are confusingly similar, as both include the term IDEC.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (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 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The goods/services are highly related and partly overlapping, as both applicant and registrant provide medical and pharmaceutical related services.  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). 

 

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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Ownership of Cited Registration

Applicant confirms that applicant and registrant have merged and that an assignment is forthcoming.  Once the cited registered mark has been assigned to the applicant, the applicant is responsible for proving its ownership.  TMEP section 812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. Section 1060; 37 C.F.R. Section 2.185.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. Section 2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).

 

Prior Registrations

The examining attorney notes that assignments of ten prior BIOGEN marks to the applicant have been filed and are in the process of being recorded.  If the applicant is the owner of Registration Nos. 0729797 , 1275543 , 1314274 , 1343559 , 1961898 , 2037710 , 2063817 , 2084446 , 2099409, 2242940 and 2815504, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  Once cited registration 1790060 has been assigned to the applicant, applicant may claim ownership of that registration as well.

 

 

 

/James T. Griffin/

Examining Attorney, Law Office 103

703-308-9103, ext. 126

jim.griffin@uspto.gov

(unofficial communications only)

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

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

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

 

Mark
        IDEC PHARMACEUTICALS
Goods and Services
        IC 005. US 018. G & S: house mark for drugs, pharmaceuticals, and reagents used in the diagnosis monitoring and treatment of cancer, infectious diseases, and auto-immune disorders. FIRST USE: 19891001. FIRST USE IN COMMERCE: 19891001

        IC 042. US 100. G & S: research, development services in the field of immunotherapeutic substances; patient monitoring and treatment; clinical testing; medical therapy and immunotherapy; and immunodiagnostic services and monitoring thereof. FIRST USE: 19880400. FIRST USE IN COMMERCE: 19880400
Mark Drawing Code
        (1) TYPED DRAWING
Serial Number
        74089700
Filing Date
        August 17, 1990
Current Filing Basis
        1A
Original Filing Basis
        1A
Publication for Opposition Date
        June 8, 1993
Registration Number
        1790060
Registration Date
        August 31, 1993
Owner Name and Address
        (REGISTRANT) IDEC PHARMACEUTICALS CORP. CORPORATION CALIFORNIA 11099 N. Torrey Pines Road, Suite 160 La Jolla CALIFORNIA 92037

        (LAST LISTED OWNER) IDEC PHARMACEUTICALS CORPORATION CORPORATION BY MERGER DELAWARE 3030 CALLAN ROAD SAN DIEGO CALIFORNIA 92121
Assignment Recorded
        ASSIGNMENT RECORDED
Disclaimer Statement
        NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "PHARMACEUTICALS" APART FROM THE MARK AS SHOWN
Type of Mark
        TRADEMARK. SERVICE MARK
Register
        PRINCIPAL
Affidavit Text
        SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20030812.
Renewal
        1ST RENEWAL 20030812
Live Dead Indicator
        LIVE
Attorney of Record
        ANNEMARIE KAISER