UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/580855

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Sec. 2(d) Refusal

 

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. 1719343 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The marks of the parties are very similar-INNOVA versus INNOVANCE and design.  Applicant has appropriated registrant’s entire mark INNOVA.  The respective goods include laboratory biological shakers and automated blood analyzers  and pipettes and related laboratory equipment.  Applicant’s laboratory blood analyzers and registrant’s biological shakers are both items used in the laboratory for medical and research use and appear to travel in the same trade channels.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods/services, and similarity of trade channels of the goods/services.  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. 

 

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 requirements.

 

IDENTIFICATION OF GOODS

 

International Class 1

The wording “reagents” in the identification of goods needs clarification because the applicant must describe further the intended uses.  Applicant may change this wording to “reagents for scientific and medical research uses,” if accurate.  TMEP §1402.01.

 The wording “blood plasma” in the identification of goods is too broad because these goods are classified in International Class 5.  Applicant may amend the classification of this wording to International Class 5 and add it to the identification of goods for International Class 5.  TMEP §§1402.01 and 1402.03.

 

The wording “chemical and biological compounds used as standards, controls and calibrators” in the identification of goods needs clarification because the applicant must specify further the nature and the purpose of these goods.  Applicant may change this wording to “chemical and biological compounds used as standards, controls and calibrators in scientific and/or medical research for the purpose of (specify type of use),” if accurate.  TMEP §1402.01.

 

The wording “cleansing and buffering solutions, all for scientific and research usage” in the identification of goods needs clarification because the applicant must specify further the nature and the purpose of these goods.  Applicant may change this wording to “cleansing and buffering solutions for scientific and medical research usage for the purpose of <specify>,” if accurate.  TMEP §1402.01.

International Class 5

The wording “reagent” in the identification of goods needs clarification because the applicant must describe further the intended uses.  Applicant may change this wording to “clinical medical reagents; diagnostic reagents for clinical or medical laboratory uses ,” if accurate.  TMEP §1402.01.

 

The wording “chemical and biological compounds used as standards, controls and calibrators” in the identification of goods needs clarification because the applicant must specify further the nature and the purpose of these goods.  Applicant may change this wording to “chemical and biological compounds used as standards, controls and calibrators for clinical medical or medical laboratory uses for the purpose of <specify>,” if accurate.  TMEP §1402.01.

 

The wording “cleansing and buffering solutions, all for scientific and research usage” in the identification of goods needs clarification because the applicant must specify further the nature and the purpose of these goods.  Applicant may change this wording to “cleansing and buffering solutions for clinical medical or medical laboratory usage for the purpose of <specify>,” if accurate.  TMEP §1402.01.

 

CLASS 9

 Automated blood analyzers and parts thereof used for medical diagnostic and monitoring purposes is proper for class 10 however  if for laboratory use they are proper for class 9 as are the  cups, curettes, vials, pipettes, sample plates, tubes and tube racks for medical, scientific, clinical medical and research laboratory usage, e.g. laboratory equipment, namely automated blood analyzers, namely…, in International Class 9.

The applicant must rewrite the identification of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

 Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

Additional Class

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 LITERATURE

The applicant must submit literature to permit proper consideration of the application.  37 C.F.R. §2.61(b); TMEP §§814 and 1402.01(d).

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

/John C. Tingley/

Trademark Examining Attorney

Law Office 106

703-308-9106 x-266    fax 703 746 8106

6:30 a.m. to 3:00 p.m

 

To reach the undersigned attorney by telephone after November 1, 2004, please call (571) 272 - 9334.  Thank you.

How to respond to this Office Action:

 

You may respond using the Office's Trademark Electronic Application System (TEAS) (visit http://www.gov.uspto.report/teas/index.html and follow the instructions therein), but you must wait until at least 72 hours after receipt of the e-mailed office action. PLEASE NOTE:  For those with applications filed pursuant to Section 66(a) of the Trademark Act, all responses to Office actions that include amendments to the identifications of goods and/or services must be filed on paper, using regular mail (or hand delivery) to submit such response. TEAS cannot be used under these circumstances. If the response does not include an amendment to the goods and/or services, then TEAS can be used to respond to the Office action.

 

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

 

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