Offc Action Outgoing

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2745035. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

The applicant’s mark CAPELLA is similar to registrant’s mark CAPELLA 400 because they are similar in sound, appearance, connotation and overall commercial impression. The marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP §1207.01(b). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii). In the present case, the word CAPELLA is the whole of applicant’s mark and the dominant term in registrant’s mark. Therefore, CAPELLA is the dominant feature of the marks which creates the commercial impression of a single source of ownership that a likelihood of confusion would result among purchasers.

Moreover, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i). Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source. In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

Applicant’s goods and services, “Genomic imaging system in the nature of a device that records images of chemiluminescent reactions and sends these images to a computer which transforms the information into a readable format and then analyzes the data for the purposes of scientific research, medical research or laboratory research, agriculture, agritech or genetically modified plants; Plates, glass slides or chips having multi-well arrays that can be used in chemical analysis, biological analysis or patterning for scientific, laboratory or medical research use; Computer software used in the field of agriculture, agritech or genetically modified plants; Genomic imaging system in the nature of a device that records images of chemiluminescent reactions and sends these images to a computer which transforms the information into a readable format and then analyzes the data for the purposes of medical diagnosis; Diagnostic reagents for clinical or medical laboratory use; Diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology; Diagnostic reagents for medicinal use; Medical diagnostic reagents; Medical diagnostic reagents and assays for testing of body fluids; Reagents and media for medical and veterinary diagnostic purposes; Nucleic acid sequences and chemical reagents for medical and veterinary purposes; Assays and reagents for use in genetic research; Chemical solutions and preparations consisting of pre-mixed reactants and reagents for scientific and research use in connection with amplification, analysis or labeling of nucleic acid; Diagnostic preparations or reagents for scientific or research use; Reagents for research purposes; Reagents for scientific or medical research use; Research reagents for industrial use including process control, process monitoring and quality control; Reagent for chemical analyzes; Genetic identity tests comprised of reagents; reagents for use in the field of agriculture, agritech or genetically modified plants; Manufacture of chemical reagents, diagnostic reagents and reagents for analysis and research purposes, scientific research, medical research, laboratory research and medical diagnosis to order and/or specification of others; Development and testing of chemical reagents, diagnostic reagents and reagents for analysis and research purposes, scientific research, medical research, laboratory research and medical diagnosis”, are closely related to registrant’s goods, “capillary electrophoresis systems comprised of software, hardware and reagents for use in dna and/or protein analysis, and instruction and user manuals sold as a unit” because the applicant’s identification of goods and services is broad enough to include the more specific identification of the applicant’s. Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

In this case, applicant’s goods and services are identified broadly. Therefore, it is presumed that the application encompasses all goods and services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).

Since the marks are similar and the goods and services closely related, there is a likelihood of confusion as to the source of applicant’s goods and services. Therefore, applicant’s mark is not entitled to registration.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

INSUFFICIENT FEES FOR MULTIPLE CLASS APPLICATION

The application identifies goods and services that are classified in at least 6 classes; however, the fees submitted are sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) submit the fees for the additional classes.

The filing fee for adding classes to an application is as follows:

(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; or

(2) $375 per class, when the fees are submitted with a paper response.

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

IDENTIFICATION AND CLASSIFICATION OF GOODS

The identification of goods and services in Classes 01, 10, 40 and 42 are accepted.

Applicant may adopt the following identification of goods, if accurate:

Assays and reagents for use in genetic research; Chemical solutions and preparations consisting of pre-mixed reactants and reagents for scientific and research use in connection with amplification, analysis or labeling of nucleic acid; Diagnostic preparations or reagents for scientific or research use; Reagents for research purposes; Reagents for scientific or medical research use; Research reagents for industrial use including process control, process monitoring and quality control; Reagent for chemical analyzes; Genetic identity tests comprised of reagents; Reagents for use in the field of agriculture, agritech or genetically modified plants; Diagnostic reagents for clinical or medical laboratory use; Diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology in International Class 01.

~~Diagnostic reagents for clinical or medical laboratory use; Diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology;~~ Diagnostic reagents for medicinal use; Medical diagnostic reagents; Medical diagnostic reagents and assays for testing of body fluids; Reagents and media for medical and veterinary diagnostic purposes; Nucleic acid sequences and chemical reagents for medical and veterinary purposes in International Class 05.

Diagnostic reagents for clinical or medical laboratory use; Diagnostic reagents for in vitro use in biochemistry, clinical chemistry and microbiology belong in Class 01.

Genomic imaging system in the nature of a device that records images of chemiluminescent reactions and sends these images to a computer which transforms the information into a readable format and then analyzes the data for the purposes of scientific research, medical research or laboratory research, agriculture, agritech or genetically modified plants; Plates, glass slides or chips having multi-well arrays that can be used in chemical analysis, biological analysis or patterning for scientific, laboratory or medical research use; Computer software used in the field of agriculture, agritech or genetically modified plants for [specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use] in International Class 09.

Computer software used in the field of agriculture, agritech or genetically modified plants—must specify a function.

See TMEP §1402.01.

Additions to Identification Not Permitted

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or services, adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

Section 1(b) Requirements for Combined Applications

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; and

(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

See 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

/william T. Verhosek/

USPTO

LO 114

571-272-9464

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.

Offc Action Outgoing

CAPELLA

High Throughput Genomics, Inc

Offc Action Outgoing

OFFICE ACTION

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