UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/445376
MARK: ISCAN
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Illumina, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 9/26/2008
THIS IS A FINAL ACTION.
The examining attorney has reviewed the response filed by applicant on August 27, 2008.
The examining attorney hereby withdraws the refusal with respect to the prior pending application in Serial No. 77319173 and accepts the proposed amendment to applicant’s identification of goods. However, with respect to the Section 2(d) refusal for U.S. Registration No. 3419449, the examining attorney has considered the applicant’s arguments as set forth in the response and has found them unpersuasive. Therefore, for the reasons set forth below, the refusal under Section 2(d) is now made FINAL with respect to U.S. Registration No. 3419449. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
Likelihood of Confusion – Section 2(d) Refusal
Similarity of Marks
Applicant’s mark is ISCAN. Registrant’s mark is ISCAN. The marks are identical and are, therefore, sufficiently similar to support a finding of likelihood of confusion.
Similarity of Goods/Services
Applicant’s goods/services, as amended, are “laboratory equipment comprised of lasers, optics, namely a lens, filter and mirror, detectors, namely optical detectors, and sample containers, for detection, quantitation, and analysis of genotyping, diagnostic assays, and nucleic acid sequencing reactions.” Registrant’s goods/services are a “medical device, namely, a scanner to use in digitizing images of biological tissue.” These goods/services are related because they are all or could all be utilized in conjunction with the analysis of biological matter. In addition, both applicant’s and registrant’s goods are scanning devices. See registrant’s identification of goods and attached web page from applicant’s website at www.illumina.com.
When the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii). As indicated above and by the attached webpages from applicant’s website, www.illumina.com, the goods of applicant and registrant are both scanners. Although applicant has described its scanner in the identification of goods as “laboratory equipment comprised of lasers, optics, namely a lens, filter and mirror, detectors, namely optical detectors,” it is clear from the applicant’s website that this equipment is, in fact, a scanner. Therefore, even if, as applicant contends in its Response, the applicant’s and registrant’s goods are currently not “related nor marketed in such a way that the same purchasers would encounter them,” the possibility to expand applicant’s product line to include a scanner that is similar or identical to registrant’s exists, and the Section 2(d) refusal must stand on that ground alone.
Even if applicant’s identification of goods did preclude the use of its scanners to digitize images of biological tissue, a Section 2(d) refusal would still issue, because (1) applicant and registrant both have goods used to analyze biological matter and (2) the marks are identical. See attached dictionary definitions of “biological,” “tissue,” “gene,” “molecule,” “cell,” “nucleic acid,” and “DNA” from www.bartleby.com and “genetic”/“genetic analysis” from www.medical-dictionary.thefreedictionary.com as well as definitions of “gene expression” and “gene analysis” and information regarding applicant’s goods/service from the applicant’s website at www.illumina.com, all of which indicate that genetic analysis does involve analysis of biological tissue/matter/substances. See also attached webpages from www.agilent.com, www.bioserve.com, www.affymetrix.com and www.findarticles.com evidencing that other companies, including registrant, are marketing products/services related to the examination of tissue samples and to genetic analysis. If the marks of the respective parties are identical, the relationship between the goods and/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. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).
Accordingly, based on the similarity of the marks and the relationship of the services, registration of the applicant’s mark is refused under Section 2(d) of the Trademark Act.
Although the examining attorney has refused registration, the applicant has the option to respond to the refusal to register by submitting evidence and legal arguments in support of registration. If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following requirement.
Responding to this Office Action
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.
/Meghan Reinhart/
Trademark Examining Attorney
Law Office 108
Phone - (571) 272-2943
Fax - (571) 273-9108
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.
