| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Response to Office Action
The table below presents the data as entered.
Input Field
|
Entered
|
| SERIAL NUMBER |
77445376 |
| LAW OFFICE ASSIGNED |
LAW OFFICE 108 |
| MARK SECTION (no change) |
| ARGUMENT(S) |
The Examining Attorney has refused registration of the above-referenced application under Trademark Act Section 2(d), because in her opinion, there is a likelihood of confusion with U.S. Registration
No. 3419449 and a potential likelihood of confusion with application Serial No. 77319173. Applicant concurs with the Examining Attorney that the general test for determining likelihood of
confusion between two marks is as laid out in In re E.I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973). However, Applicant respectfully disagrees with the
Examining Attorney's analysis of the factors involved in the above-mentioned test as applied to the mark at issue.
The Board's determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion.
Id. at 1357. See also, In re Majestic Distilling Co., Inc., 65 USPQ2d 1201 (Fed. Cir. 2003).
A. The goods are distinct
It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods set forth in the prior cited references and the pending application. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987), and Paula Payne Products Co. v. Johnson Publishing Co.,
Inc., 177 USPQ 76 (CCPA 1973). The goods set forth in Reg. No. 3419449 are "medical device, namely, a scanner to use in digitizing images of biological tissue" and the goods set forth in
application Serial No. 77319173 are:
Opto-electronic scanner to perform live mapping of the biometric features of a living person, namely, eye iris and fundus of eye; computer software to detect, record, view, process
and forward biometric features of a living person, namely, eye iris and fundus of eye; computers to save such biometric features of a living person, namely, eye iris and fundus of eye, in databases
to keep them ready for use in a computer readable form.
The scanner goods described in Reg. No. 3419449 are used to digitize microscope slides of biological tissue for magnified viewing, for use in pathology. The mark is not used on goods for
molecular level analysis purposes, but such goods are simply for conversion of a slice of biological tissue to a digital format for purposes of viewing a larger image of the tissue. In the
industry, the function of the goods is known as whole slide imaging. This is akin to an expensive digital photocopy enlarger. For example, a technician might take a slice of live tumor
tissue from a patient and put it on a slide, placing it in the cited registrant's scanner in order for a doctor to view a larger image of the tissue. Information from the registrant's web site
and industry resources discussing the nature of the specific goods is attached.
The scanner goods described in application Serial No. 77319173 are used for scanning a live person's eyeball to capture the unique physiological characteristics of individuals to establish and verify
their identities. In general, a small machine is held up to a person's eyes, the machine scans the person's eyes and the information is later used to re-identify the person. Information
on the goods is attached.
On the other hand, Applicant's goods, 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. Applicant's product is used to detect and analyze DNA and other nucleic acid
sequences. Specifically, it is a DNA bead array reader for genetic analysis, such as genotyping and gene expression profiling. In other words, Applicant's product detects at the molecular
level, which differs from simply enlarging pathology or histology samples by orders of magnitude; and is fundamentally distinct from a scanner that scans a live human's eyeball for identification
purposes. Applicant's product is not a slide magnification tool for digitizing or viewing enlarged images of biological tissue and is not an eye-scanner for identification of live human
beings. As such, the respective goods are entirely distinct.
The Examining Attorney has claimed that the goods in the cited registration and Applicant's goods are related because "they are both used in conjunction with the analysis of biological tissue and/or
body fluid samples." As noted above, this is not the case. Only the cited registrant's goods are used with biological tissue and/or body fluid samples, and cited registrant's goods are
for image enlargement, not for analysis.
In order to find a likelihood of confusion, the goods and/or services of two parties must be related in some manner, or the conditions surrounding their marketing must be such, that they could be
encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source. See In re
Martin's Famous Pastry Shoppe, Inc., 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 and Telegraph
Corp., 197 USPQ 910 (TTAB 1978). In this case, the respective parties' goods are neither related nor marketed in such a way that the same purchasers would encounter them.
Applicant's goods do not do what the cited registrant's goods do, nor do they do what the cited prior applicant's goods do. All three products perform distinct and separate functions for
separate and distinct purposes. Consequently, the goods would not be encountered by the same purchasers that would give any indication that the goods come from a common source, and the
respective parties' goods move in different channels of trade. Typically, where trade channels differ, confusion as to either source of origin or sponsorship is unlikely.
Additionally, in the medical field, the Trademark Trial and Appeal Board has consistently held that virtually identical marks for medical goods that perform different functions, however slight, are
distinct and not likely to cause confusion. In Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390 (TTAB 1991), the court held that there was no
likelihood of confusion between HPM for medical instruments used in clinical measurement of human performance functions and HP for a wide range of laboratory and medical instruments and services
incident thereto.
Given the deliberation involved in determining the suitability of particular medical instruments for specific patient care applications, and since customers and prospective
purchasers typically deal directly with the parties in making their purchasing decisions, we believe that the parties' marks are not so similar that confusion as to the origin or affiliation of their
medical instruments would be likely to occur.
Id. at 1396. See also, In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998) (no likelihood of confusion between DIGIRAD for gamma radiation
sensors, signal processors, and display apparatus for use in medical isotopic tracing and nuclear imaging and DIGIRAY for electronic digital x-ray system and related computer software for medical
use); Basic American Medical Inc. v. American Medical International Inc., 1 USPQ2d 1217 (SD Ind. 1986) (no likelihood of confusion between BAMI for health care services and
facilities and AMI for health care services and products); and, AFP Imaging Corp. v. Women & Infants Hospital of Rhode Island, 28 USPQ2d 1319 (Fed. Cir. 1993)
(unpublished, affirming TTAB decision finding no likelihood of confusion between AFP Plus for prenatal screening services for Down's Syndrome and AFP and AFP IMAGING for medical products).
Further, the Federal Circuit has explicitly rejected the argument that goods and services are related just because they are broadly categorized in the same field, and has done so specifically with
respect to the "medical industry". In Electronic Design & Sales Inc. v. Electronic Data Sys. Corp., 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), the Federal Circuit
held that "it is error to deny registration simply because 'applicant sells some of its goods in some of the same fields in which opposer provides its services.'"
Regarding the goods at hand, the scanner as described in the cited prior registration is for digitizing and enlarging intact tissue samples for easier viewing. Applicant's goods are not for
digitizing and/or enlarging tissue samples, but relate to the analysis of DNA molecules for costly research, trial and product development. The cited prior applicant's goods are simply entirely
distinct, being for scanning the eyeball of a live person for identification of persons for security purposes, used primarily for military, law enforcement and border patrol purposes. Such
contrast between these three types of goods is much greater than the differences between the goods and services in the cases noted above. Thus, the respective consumers are unlikely to be
confused.
In fact, the goods listed in Reg. No. 3419449 and application Serial No. 77319173 are far more similar to one another than they are to the goods listed in the subject application. Both scanners
listed in the cited filings scan tissue for enlarged viewing purposes, while Applicant's goods do not, but are instead used to detect and analyze DNA and other nucleic acid sequences. Thus, if
the marks in Reg. No. 3419449 and application Serial No. 77319173 are not confusingly similar to one another, it follows that the subject mark cannot be confusingly similar to either mark.
B. The goods are expensive
The goods of the three respective parties are also relatively expensive. When purchasing expensive goods, the consumer purchases only after careful consideration, thus confusion is less likely.
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 23:96 (4th Ed. 2004). Sophisticated buyers of higher priced items can be expected to
exercise a greater degree of care when making purchasing decisions. McGregor-Doniger, Inc. v. Drizzle, Inc., 202 USPQ 81, 92 (2d Cir. 1979) (the relevant purchasing
group of women's overcoats and raincoats priced from $100 to $900 tend to be sophisticated and knowledgeable about women's apparel); Pignons S.A. de Mecanique de Precision v.
Polaroid Corp., 212 USPQ 246 (1st Cir. 1981) (no likelihood of confusion between ALPA cameras costing $550-$1400 and ALPHA cameras costing $188-$233); J.C. Penny Co. v.
Arctic Enterprises, Inc., 183 USPQ 342 (D. Minn. 1974) (buyer of snowmobile costing $1500 is knowledgeable and sophisticated and not likely to be confused by same mark used on senior user's
$40 auto tires).
Here, the cost of the goods listed in Reg. No. 3419449 are unknown, but they are not "off the shelf" type consumer products or impulse items that an average person would purchase from a variety
store. The goods listed in Serial No. 77319173 are not impulse items and to the best of Applicant's knowledge, are likely to cost at least several hundred dollars a unit. Applicant's
goods have a projected cost of over $200,000.00.
Given the specialized needs of the consumers and the high, yet divergent prices of the parties' goods, consumers of the parties' goods will exercise great care in their decisions to purchase such
goods. See, Electronic Design & Sales Inc. v. Electronic Data Sys. Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) ("sophistication is important and often dispositive
because sophisticated consumers may be expected to exercise greater care"); and In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006). This factor weighs heavily in
favor of finding no likelihood of confusion.
C. The consumers are sophisticated
As noted above, sophisticated consumers exercise greater care when making purchases. Here, the target markets for the respective parties' goods are sophisticated professionals with specialized
needs. At least for the cited registrant and Applicant's goods, the consumers are sophisticated medical and research professionals. The Federal Circuit and the Trademark Trial and Appeal
Board have recognized that where the consumers are medical professionals, such consumers are highly sophisticated and less likely to be confused. In In re N.A.D.
Inc., 224 USPQ 969, 971 (Fed. Cir. 1985), in finding no likelihood of confusion between NARKOMED for anesthesia machines and NARCO & Design for medical equipment including anesthesia
machines or NARCO MEDICAL SERVICES for leasing of hospital and surgical equipment, the court stated that "only very sophisticated purchasers are here involved who would buy with great care and
unquestionably know the source of the goods." See also, Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390, 1396 (TTAB 1991); Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926, 1933 (TTAB 1993) ("These well-educated and highly trained individuals [doctors, clinicians, medical researchers and other
medical professionals] are apt to be careful and discriminating in their selection of computer programs for particular applications, such as searching for citations to and abstracts of biomedical
journal reports.").
Users of cited prior registrant's goods are likely to be sophisticated medical professionals who are careful in their selection of services that assist in diagnosing their patient's ailments.
Applicant's consumers are medical and science professionals who exercise an extreme degree of care in selecting applicable and expensive equipment for genetic research.
The consumers of the cited prior applicant's goods are in the business of security, which is also a field that takes serious consideration. The product literature identifies the users of the
goods as the military, law enforcement and border patrol. It is unfathomable that a consumer looking for a specialized iris scanner for security or other purposes would mistake Applicant's
molecular-level analysis goods for an iris scanner.
Given the vast differences in the goods, the target consumers and markets, the high degree of sophistication of the purchasers, and the cost of the goods, there is no likelihood of consumer confusion
between the marks at issue.
D. The evidence is inapplicable
The Examining Attorney has presented voluminous evidence, however, none of the evidence shows that the goods of the respective parties are related. In support of her argument that the goods of
the cited registrant and Applicant are related or likely to be marketed together or used together, she has submitted web pages "discussing and defining genotyping, diagnostic assays, biometrics and
nucleic acid, including their relationship to or categorization under the biological sciences."
That the goods of the respective parties may generally have ties to the general field of science in no way suggests that they are related, likely to be marketed or used together, or that consumers
would think that them emanate from the same source. As noted above, the Federal Circuit has explicitly rejected the argument that goods and services are related just because they are broadly
categorized in the same field. In Electronic Design & Sales, 21 USPQ2d 1388.
Applicant fails to see how a general discussion of biological sciences points to the relatedness of the goods at issue. None of the articles discuss that tissue enlargers and iris scanners are
related to equipment for DNA analysis, nor do they show that such goods would be marketed or used together.
a. The Wikipedia article on "Genotyping" does not refer to or allude to the cited registrant's goods or the cited prior applicant's goods. It is not
possible to determine the genotype of an individual by simply enlarging biological tissue as related to cited registrant's goods nor by scanning the iris of an individual as related to cited prior
applicant's goods.
b. The Wikipedia article on "Biometrics" is a general discussion of a broad science and does not refer to the goods or either party. It may relate to the
general science behind the goods of the cited prior applicant as the discussion is primarily about using biometrics for security purposes, but does not specifically relate to the goods of the other
parties nor show any relationship between them.
c. The Wikipedia article on "Nucleic Acid," is again a general discussion and does not refer to or allude to the cited registrant's goods or the cited prior
applicant's goods.
d. The Wiktionary definition of "biometrics" is a general definition and does not in any way indicate any relatedness between any of the goods at issue.
e. The Free Dictionary definition of "diagnostic assay" is a simple definition. That the page lists what the authors of the dictionary determine to be related
words, which also do not refer to any of the subject goods, is not sufficient to prove relatedness of the same. Furthermore, this source is not a publisher of a commonly recognized dictionary
and the reliability of the content is questionable. The Board has been reluctant to take judicial notice of such evidence for precisely these reasons. In re Total
Quality Group, Inc., 51 USPQ2d 1474 (TTAB 1999); In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006).
f. The Free Dictionary definition of "genotype" is similarly vague and does not indicate any relatedness of the goods.
Applicant is further concerned about the reliance by the Examining Attorney on Wikipedia and similar resources that not only are general discussions and do not indicate that the goods at issue are
related nor marketed or used together, but that are not authority on the discussions contained therein. That such heavy reliance is placed on such voluminous yet marginal discussions and
questionable authority suggests that no real or credible evidence exists that would show a likelihood of confusion. See generally, In re IP Carrier Consulting Group,
84 USPQ2d 1028 (TTAB 2007), and In re Total Quality Group, Inc., 51 USPQ2d 1474, 1475-1476 (TTAB 1999).
The Examining Attorney also submitted records of third party registration and additional web print outs that she alleges suggest that the subject goods may emanate from or be sold by a single
source.
g. The printout from Applicant's own web page does not refer to any of the goods of the cited registration or prior cited applicant as Applicant does not produce
or sell such goods.
h. The printout from GeneTyper is for molecular level genetic consulting services and does not refer to the goods at issue nor does it suggest that the goods of the various parties
may emanate from a single source. It is possible that the Examining Attorney is concerned with the use of the term "tissue" in the printout. However, such use relates to "cre excision,"
which is an established method of knocking out a gene (or allele), referring to the targeted inactivation of genes in genome. The reference to "tissue-specific" refers not to imaging of biological
tissue, but to how the genes can be inactivated in the genomes of cells in some tissues but not in others (thus "conditional"). The assay refers to detection of changes at the level of DNA
sequences and their effect on genes. Such use in no way relates to the goods of the cited prior registrant or prior cited applicant.
i. The printout from BD does not identify any of the goods at issue and thus makes no suggestion that the goods at issue may emanate from a single source.
j. The printout from PulmoLab does not list any of the goods at issue and is, as with much of the other evidence, entirely inapplicable.
k. The printout from Mossman Associates does not refer to any of the goods at issue and thus cannot be used to suggest that the goods at issue may emanate from a single source.
l. Reg. No. 2356798, owned by Lomo, is primarily for optical equipments such as microscope and other types of scopes. Lomo is a well-known optical and camera company and does
not make equipment for analysis, but only for viewing. The registration does not list Applicant's goods. If anything, if one were looking at the goods in a vacuum, the registration
indicates that the cited registrant's goods may emanate from the same source of the cited prior applicant. And since there is no confusion between those two marks, there is likewise no
confusion between those two marks and the subject mark.
m. Reg. No. 2399470 is just another version of the prior registration and our same comments apply.
n. Reg. No. 2539719 is similar to the two above and our same comments apply.
o. Reg. No. 2676014 is for pregnancy tests and has no relevance in the present case.
p. Reg. No. 2643982 is a diagnostic system not specific enough to relate to the goods of any of the parties and in no way suggests that the goods of the parties would emanate from
the same source.
q. Reg. No. 2609413 is just another version of the above and our same comments apply.
r. Reg. No. 3157007 is for silicon tubing and stoppers, does not identify any of the goods at issue and thus in no way suggests that the goods of the parties would emanate from the
same source.
s. Reg. No. 3200589 is just another version of the above and our same comments apply.
The evidence made of record by the Examining Attorney in this case is wholly insufficient and inapplicable to show that either the trade or purchasers would be confused by the marks at issue or would
think that the goods emanate from the same source. The fact that the Examining Attorney obviously spent a great deal of time looking for evidence of relatedness, yet found no reasonable
evidence, tends to show that the marks at issue are not confusingly similar. The Examining Attorney cannot refuse registration based on the mere speculation that the proposed mark is
confusingly similar to the cited registration. Bongrain Int'l (Am.) Corp. v. Delice de France, Inc., 1 USPQ2d 1775, 1779 (Fed. Cir. 1987) (The "statute refers to
likelihood, not the mere possibility, of confusion"). Consequently, the Examining Attorney's refusal must be withdrawn.
In light of the above, it is submitted that the application is in condition for publication. Applicant respectfully requests that the mark be passed to publication. If the Examining
Attorney requires any additional information, please feel free to contact the undersigned.
|
| EVIDENCE SECTION |
| EVIDENCE FILE NAME(S) |
| ORIGINAL PDF FILE |
evi_69239101136-152011288_._Article_1_BioI.pdf |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0002.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0003.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0004.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0005.JPG |
| ORIGINAL PDF FILE |
evi_69239101136-152011288_._BioImagene_product.pdf |
CONVERTED PDF FILE(S)
(3 pages) |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0006.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0007.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0008.JPG |
| ORIGINAL PDF FILE |
evi_69239101136-152011288_._Dual_Iris_Capture_web.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0009.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0010.JPG |
| ORIGINAL PDF FILE |
evi_69239101136-152011288_._I_SCAN_iris_brochure.pdf |
CONVERTED PDF FILE(S)
(2 pages) |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0011.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0012.JPG |
| ORIGINAL PDF FILE |
evi_69239101136-152011288_._Iris_recognition_-_Wikipedia.pdf |
CONVERTED PDF FILE(S)
(4 pages) |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0013.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0014.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0015.JPG |
| |
\\TICRS\EXPORT3\IMAGEOUT3\774\453\77445376\xml1\ROA0016.JPG |
| DESCRIPTION OF EVIDENCE FILE |
web print outs and a brochure regarding the nature of the goods of cited prior registrant and cited prior applicant |
| GOODS AND/OR SERVICES SECTION (current) |
| INTERNATIONAL CLASS |
009 |
| DESCRIPTION |
| Laboratory equipment comprised of lasers, optics, detector and sample carrier for detection, quantitation, and analysis of genotyping,
diagnostic assays, and nucleic acid sequencing reactions |
| FILING BASIS |
Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) |
| INTERNATIONAL CLASS |
009 |
| DESCRIPTION |
| 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 |
| FILING BASIS |
Section 1(b) |
| SIGNATURE SECTION |
| RESPONSE SIGNATURE |
/GAHolley/ |
| SIGNATORY'S NAME |
Gabrielle Holley |
| SIGNATORY'S POSITION |
Attorney of Record |
| DATE SIGNED |
08/27/2008 |
| AUTHORIZED SIGNATORY |
YES |
| FILING INFORMATION SECTION |
| SUBMIT DATE |
Wed Aug 27 15:44:28 EDT 2008 |
| TEAS STAMP |
USPTO/ROA-XX.XXX.XXX.XXX-
20080827154428339333-7744
5376-43010a67794177e25ac7
31424deebeba828-N/A-N/A-2
0080827152011288691 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
Response to Office Action
To the Commissioner for Trademarks:
Application serial no.
77445376 has been amended as follows:
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
The Examining Attorney has refused registration of the above-referenced application under Trademark Act Section 2(d), because in her opinion, there is a likelihood of confusion with U.S. Registration
No. 3419449 and a potential likelihood of confusion with application Serial No. 77319173. Applicant concurs with the Examining Attorney that the general test for determining likelihood of
confusion between two marks is as laid out in
In re E.I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973). However, Applicant respectfully disagrees with the
Examining Attorney's analysis of the factors involved in the above-mentioned test as applied to the mark at issue.
The Board's determination under Section 2(d) is based on an analysis of all of the facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion.
Id. at 1357. See also,
In re Majestic Distilling Co., Inc., 65 USPQ2d 1201 (Fed. Cir. 2003).
A. The goods are distinct
It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods set forth in the prior cited references and the pending application. See
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1 USPQ2d 1813 (Fed. Cir. 1987), and
Paula Payne Products Co. v. Johnson Publishing Co.,
Inc., 177 USPQ 76 (CCPA 1973). The goods set forth in Reg. No. 3419449 are "medical device, namely, a scanner to use in digitizing images of biological tissue" and the goods set forth in
application Serial No. 77319173 are:
Opto-electronic scanner to perform live mapping of the biometric features of a living person, namely, eye iris and fundus of eye; computer software to detect, record, view, process
and forward biometric features of a living person, namely, eye iris and fundus of eye; computers to save such biometric features of a living person, namely, eye iris and fundus of eye, in databases
to keep them ready for use in a computer readable form.
The scanner goods described in Reg. No. 3419449 are used to digitize microscope slides of biological tissue for magnified viewing, for use in pathology. The mark is not used on goods for
molecular level analysis purposes, but such goods are simply for conversion of a slice of biological tissue to a digital format for purposes of viewing a larger image of the tissue. In the
industry, the function of the goods is known as whole slide imaging. This is akin to an expensive digital photocopy enlarger. For example, a technician might take a slice of live tumor
tissue from a patient and put it on a slide, placing it in the cited registrant's scanner in order for a doctor to view a larger image of the tissue. Information from the registrant's web site
and industry resources discussing the nature of the specific goods is attached.
The scanner goods described in application Serial No. 77319173 are used for scanning a live person's eyeball to capture the unique physiological characteristics of individuals to establish and verify
their identities. In general, a small machine is held up to a person's eyes, the machine scans the person's eyes and the information is later used to re-identify the person. Information
on the goods is attached.
On the other hand, Applicant's goods, 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. Applicant's product is used to detect and analyze DNA and other nucleic acid
sequences. Specifically, it is a DNA bead array reader for genetic analysis, such as genotyping and gene expression profiling. In other words, Applicant's product detects at the molecular
level, which differs from simply enlarging pathology or histology samples by orders of magnitude; and is fundamentally distinct from a scanner that scans a live human's eyeball for identification
purposes. Applicant's product is not a slide magnification tool for digitizing or viewing enlarged images of biological tissue and is not an eye-scanner for identification of live human
beings. As such, the respective goods are entirely distinct.
The Examining Attorney has claimed that the goods in the cited registration and Applicant's goods are related because "they are both used in conjunction with the analysis of biological tissue and/or
body fluid samples." As noted above, this is not the case. Only the cited registrant's goods are used with biological tissue and/or body fluid samples, and cited registrant's goods are
for image enlargement, not for analysis.
In order to find a likelihood of confusion, the goods and/or services of two parties must be related in some manner, or the conditions surrounding their marketing must be such, that they could be
encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source. See
In re
Martin's Famous Pastry Shoppe, Inc., 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 and Telegraph
Corp., 197 USPQ 910 (TTAB 1978). In this case, the respective parties' goods are neither related nor marketed in such a way that the same purchasers would encounter them.
Applicant's goods do not do what the cited registrant's goods do, nor do they do what the cited prior applicant's goods do. All three products perform distinct and separate functions for
separate and distinct purposes. Consequently, the goods would not be encountered by the same purchasers that would give any indication that the goods come from a common source, and the
respective parties' goods move in different channels of trade. Typically, where trade channels differ, confusion as to either source of origin or sponsorship is unlikely.
Additionally, in the medical field, the Trademark Trial and Appeal Board has consistently held that virtually identical marks for medical goods that perform different functions, however slight, are
distinct and not likely to cause confusion.
In Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390 (TTAB 1991), the court held that there was no
likelihood of confusion between HPM for medical instruments used in clinical measurement of human performance functions and HP for a wide range of laboratory and medical instruments and services
incident thereto.
Given the deliberation involved in determining the suitability of particular medical instruments for specific patient care applications, and since customers and prospective
purchasers typically deal directly with the parties in making their purchasing decisions, we believe that the parties' marks are not so similar that confusion as to the origin or affiliation of their
medical instruments would be likely to occur.
Id. at 1396. See also,
In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998) (no likelihood of confusion between DIGIRAD for gamma radiation
sensors, signal processors, and display apparatus for use in medical isotopic tracing and nuclear imaging and DIGIRAY for electronic digital x-ray system and related computer software for medical
use);
Basic American Medical Inc. v. American Medical International Inc., 1 USPQ2d 1217 (SD Ind. 1986) (no likelihood of confusion between BAMI for health care services and
facilities and AMI for health care services and products); and,
AFP Imaging Corp. v. Women & Infants Hospital of Rhode Island, 28 USPQ2d 1319 (Fed. Cir. 1993)
(unpublished, affirming TTAB decision finding no likelihood of confusion between AFP Plus for prenatal screening services for Down's Syndrome and AFP and AFP IMAGING for medical products).
Further, the Federal Circuit has explicitly rejected the argument that goods and services are related just because they are broadly categorized in the same field, and has done so specifically with
respect to the "medical industry". In
Electronic Design & Sales Inc. v. Electronic Data Sys. Corp., 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), the Federal Circuit
held that "it is error to deny registration simply because 'applicant sells some of its goods in some of the same fields in which opposer provides its services.'"
Regarding the goods at hand, the scanner as described in the cited prior registration is for digitizing and enlarging intact tissue samples for easier viewing. Applicant's goods are not for
digitizing and/or enlarging tissue samples, but relate to the analysis of DNA molecules for costly research, trial and product development. The cited prior applicant's goods are simply entirely
distinct, being for scanning the eyeball of a live person for identification of persons for security purposes, used primarily for military, law enforcement and border patrol purposes. Such
contrast between these three types of goods is much greater than the differences between the goods and services in the cases noted above. Thus, the respective consumers are unlikely to be
confused.
In fact, the goods listed in Reg. No. 3419449 and application Serial No. 77319173 are far more similar to one another than they are to the goods listed in the subject application. Both scanners
listed in the cited filings scan tissue for enlarged viewing purposes, while Applicant's goods do not, but are instead used to detect and analyze DNA and other nucleic acid sequences. Thus, if
the marks in Reg. No. 3419449 and application Serial No. 77319173 are not confusingly similar to one another, it follows that the subject mark cannot be confusingly similar to either mark.
B. The goods are expensive
The goods of the three respective parties are also relatively expensive. When purchasing expensive goods, the consumer purchases only after careful consideration, thus confusion is less likely.
J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 23:96 (4th Ed. 2004). Sophisticated buyers of higher priced items can be expected to
exercise a greater degree of care when making purchasing decisions.
McGregor-Doniger, Inc. v. Drizzle, Inc., 202 USPQ 81, 92 (2d Cir. 1979) (the relevant purchasing
group of women's overcoats and raincoats priced from $100 to $900 tend to be sophisticated and knowledgeable about women's apparel);
Pignons S.A. de Mecanique de Precision v.
Polaroid Corp., 212 USPQ 246 (1st Cir. 1981) (no likelihood of confusion between ALPA cameras costing $550-$1400 and ALPHA cameras costing $188-$233);
J.C. Penny Co. v.
Arctic Enterprises, Inc., 183 USPQ 342 (D. Minn. 1974) (buyer of snowmobile costing $1500 is knowledgeable and sophisticated and not likely to be confused by same mark used on senior user's
$40 auto tires).
Here, the cost of the goods listed in Reg. No. 3419449 are unknown, but they are not "off the shelf" type consumer products or impulse items that an average person would purchase from a variety
store. The goods listed in Serial No. 77319173 are not impulse items and to the best of Applicant's knowledge, are likely to cost at least several hundred dollars a unit. Applicant's
goods have a projected cost of over $200,000.00.
Given the specialized needs of the consumers and the high, yet divergent prices of the parties' goods, consumers of the parties' goods will exercise great care in their decisions to purchase such
goods. See,
Electronic Design & Sales Inc. v. Electronic Data Sys. Corp., 21 USPQ2d 1388 (Fed. Cir. 1992) ("sophistication is important and often dispositive
because sophisticated consumers may be expected to exercise greater care"); and
In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006). This factor weighs heavily in
favor of finding no likelihood of confusion.
C. The consumers are sophisticated
As noted above, sophisticated consumers exercise greater care when making purchases. Here, the target markets for the respective parties' goods are sophisticated professionals with specialized
needs. At least for the cited registrant and Applicant's goods, the consumers are sophisticated medical and research professionals. The Federal Circuit and the Trademark Trial and Appeal
Board have recognized that where the consumers are medical professionals, such consumers are highly sophisticated and less likely to be confused. In
In re N.A.D.
Inc., 224 USPQ 969, 971 (Fed. Cir. 1985), in finding no likelihood of confusion between NARKOMED for anesthesia machines and NARCO & Design for medical equipment including anesthesia
machines or NARCO MEDICAL SERVICES for leasing of hospital and surgical equipment, the court stated that "only very sophisticated purchasers are here involved who would buy with great care and
unquestionably know the source of the goods." See also,
Hewlett-Packard Co. v. Human Performance Measurement Inc., 23 USPQ2d 1390, 1396 (TTAB 1991);
Aries Systems Corp. v. World Book Inc., 26 USPQ2d 1926, 1933 (TTAB 1993) ("These well-educated and highly trained individuals [doctors, clinicians, medical researchers and other
medical professionals] are apt to be careful and discriminating in their selection of computer programs for particular applications, such as searching for citations to and abstracts of biomedical
journal reports.").
Users of cited prior registrant's goods are likely to be sophisticated medical professionals who are careful in their selection of services that assist in diagnosing their patient's ailments.
Applicant's consumers are medical and science professionals who exercise an extreme degree of care in selecting applicable and expensive equipment for genetic research.
The consumers of the cited prior applicant's goods are in the business of security, which is also a field that takes serious consideration. The product literature identifies the users of the
goods as the military, law enforcement and border patrol. It is unfathomable that a consumer looking for a specialized iris scanner for security or other purposes would mistake Applicant's
molecular-level analysis goods for an iris scanner.
Given the vast differences in the goods, the target consumers and markets, the high degree of sophistication of the purchasers, and the cost of the goods, there is no likelihood of consumer confusion
between the marks at issue.
D. The evidence is inapplicable
The Examining Attorney has presented voluminous evidence, however, none of the evidence shows that the goods of the respective parties are related. In support of her argument that the goods of
the cited registrant and Applicant are related or likely to be marketed together or used together, she has submitted web pages "discussing and defining genotyping, diagnostic assays, biometrics and
nucleic acid, including their relationship to or categorization under the biological sciences."
That the goods of the respective parties may generally have ties to the general field of science in no way suggests that they are related, likely to be marketed or used together, or that consumers
would think that them emanate from the same source. As noted above, the Federal Circuit has explicitly rejected the argument that goods and services are related just because they are broadly
categorized in the same field.
In Electronic Design & Sales, 21 USPQ2d 1388.
Applicant fails to see how a general discussion of biological sciences points to the relatedness of the goods at issue. None of the articles discuss that tissue enlargers and iris scanners are
related to equipment for DNA analysis, nor do they show that such goods would be marketed or used together.
a. The Wikipedia article on "Genotyping" does not refer to or allude to the cited registrant's goods or the cited prior applicant's goods. It is not
possible to determine the genotype of an individual by simply enlarging biological tissue as related to cited registrant's goods nor by scanning the iris of an individual as related to cited prior
applicant's goods.
b. The Wikipedia article on "Biometrics" is a general discussion of a broad science and does not refer to the goods or either party. It may relate to the
general science behind the goods of the cited prior applicant as the discussion is primarily about using biometrics for security purposes, but does not specifically relate to the goods of the other
parties nor show any relationship between them.
c. The Wikipedia article on "Nucleic Acid," is again a general discussion and does not refer to or allude to the cited registrant's goods or the cited prior
applicant's goods.
d. The Wiktionary definition of "biometrics" is a general definition and does not in any way indicate any relatedness between any of the goods at issue.
e. The Free Dictionary definition of "diagnostic assay" is a simple definition. That the page lists what the authors of the dictionary determine to be related
words, which also do not refer to any of the subject goods, is not sufficient to prove relatedness of the same. Furthermore, this source is not a publisher of a commonly recognized dictionary
and the reliability of the content is questionable. The Board has been reluctant to take judicial notice of such evidence for precisely these reasons. In re Total
Quality Group, Inc., 51 USPQ2d 1474 (TTAB 1999); In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006).
f. The Free Dictionary definition of "genotype" is similarly vague and does not indicate any relatedness of the goods.
Applicant is further concerned about the reliance by the Examining Attorney on Wikipedia and similar resources that not only are general discussions and do not indicate that the goods at issue are
related nor marketed or used together, but that are not authority on the discussions contained therein. That such heavy reliance is placed on such voluminous yet marginal discussions and
questionable authority suggests that no real or credible evidence exists that would show a likelihood of confusion. See generally,
In re IP Carrier Consulting Group,
84 USPQ2d 1028 (TTAB 2007), and
In re Total Quality Group, Inc., 51 USPQ2d 1474, 1475-1476 (TTAB 1999).
The Examining Attorney also submitted records of third party registration and additional web print outs that she alleges suggest that the subject goods may emanate from or be sold by a single
source.
g. The printout from Applicant's own web page does not refer to any of the goods of the cited registration or prior cited applicant as Applicant does not produce
or sell such goods.
h. The printout from GeneTyper is for molecular level genetic consulting services and does not refer to the goods at issue nor does it suggest that the goods of the various parties
may emanate from a single source. It is possible that the Examining Attorney is concerned with the use of the term "tissue" in the printout. However, such use relates to "cre excision,"
which is an established method of knocking out a gene (or allele), referring to the targeted inactivation of genes in genome. The reference to "tissue-specific" refers not to imaging of biological
tissue, but to how the genes can be inactivated in the genomes of cells in some tissues but not in others (thus "conditional"). The assay refers to detection of changes at the level of DNA
sequences and their effect on genes. Such use in no way relates to the goods of the cited prior registrant or prior cited applicant.
i. The printout from BD does not identify any of the goods at issue and thus makes no suggestion that the goods at issue may emanate from a single source.
j. The printout from PulmoLab does not list any of the goods at issue and is, as with much of the other evidence, entirely inapplicable.
k. The printout from Mossman Associates does not refer to any of the goods at issue and thus cannot be used to suggest that the goods at issue may emanate from a single source.
l. Reg. No. 2356798, owned by Lomo, is primarily for optical equipments such as microscope and other types of scopes. Lomo is a well-known optical and camera company and does
not make equipment for analysis, but only for viewing. The registration does not list Applicant's goods. If anything, if one were looking at the goods in a vacuum, the registration
indicates that the cited registrant's goods may emanate from the same source of the cited prior applicant. And since there is no confusion between those two marks, there is likewise no
confusion between those two marks and the subject mark.
m. Reg. No. 2399470 is just another version of the prior registration and our same comments apply.
n. Reg. No. 2539719 is similar to the two above and our same comments apply.
o. Reg. No. 2676014 is for pregnancy tests and has no relevance in the present case.
p. Reg. No. 2643982 is a diagnostic system not specific enough to relate to the goods of any of the parties and in no way suggests that the goods of the parties would emanate from
the same source.
q. Reg. No. 2609413 is just another version of the above and our same comments apply.
r. Reg. No. 3157007 is for silicon tubing and stoppers, does not identify any of the goods at issue and thus in no way suggests that the goods of the parties would emanate from the
same source.
s. Reg. No. 3200589 is just another version of the above and our same comments apply.
The evidence made of record by the Examining Attorney in this case is wholly insufficient and inapplicable to show that either the trade or purchasers would be confused by the marks at issue or would
think that the goods emanate from the same source. The fact that the Examining Attorney obviously spent a great deal of time looking for evidence of relatedness, yet found no reasonable
evidence, tends to show that the marks at issue are not confusingly similar. The Examining Attorney cannot refuse registration based on the mere speculation that the proposed mark is
confusingly similar to the cited registration.
Bongrain Int'l (Am.) Corp. v. Delice de France, Inc., 1 USPQ2d 1775, 1779 (Fed. Cir. 1987) (The "statute refers to
likelihood, not the mere possibility, of confusion"). Consequently, the Examining Attorney's refusal must be withdrawn.
In light of the above, it is submitted that the application is in condition for publication. Applicant respectfully requests that the mark be passed to publication. If the Examining
Attorney requires any additional information, please feel free to contact the undersigned.
EVIDENCE
Evidence in the nature of web print outs and a brochure regarding the nature of the goods of cited prior registrant and cited prior applicant has been attached.
Original PDF file:
evi_69239101136-152011288_._Article_1_BioI.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Original PDF file:
evi_69239101136-152011288_._BioImagene_product.pdf
Converted PDF file(s) (3 pages)
Evidence-1
Evidence-2
Evidence-3
Original PDF file:
evi_69239101136-152011288_._Dual_Iris_Capture_web.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_69239101136-152011288_._I_SCAN_iris_brochure.pdf
Converted PDF file(s) (2 pages)
Evidence-1
Evidence-2
Original PDF file:
evi_69239101136-152011288_._Iris_recognition_-_Wikipedia.pdf
Converted PDF file(s) (4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 009 for Laboratory equipment comprised of lasers, optics, detector and sample carrier for detection, quantitation, and analysis of genotyping, diagnostic assays, and nucleic
acid sequencing reactions
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection
with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).
Proposed: Class 009 for 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
Filing Basis: Section 1(b), Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection
with the identified goods and/or services as of the filing date of the application. (15 U.S.C. Section 1051(b)).
SIGNATURE(S)
Response Signature
Signature: /GAHolley/ Date: 08/27/2008
Signatory's Name: Gabrielle Holley
Signatory's Position: Attorney of Record
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and
other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.
attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a
signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney
appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this
matter.
Serial Number: 77445376
Internet Transmission Date: Wed Aug 27 15:44:28 EDT 2008
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-200808271544283
39333-77445376-43010a67794177e25ac731424
deebeba828-N/A-N/A-20080827152011288691
