UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79101456
MARK: INVESTIGATOR
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Qiagen GmbH
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
INTERNATIONAL REGISTRATION NO. 1064034
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
DESIGNATION OF DOMESTIC REPRESENTATIVE:
The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/teas/index.html.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
LIKELIHOOD OF CONFUSION REFUSAL
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.
Similarity of Marks
The applicant has applied for the mark “INVESTIGATOR.” The registrant’s mark is “EVIDENCE INVESTIGATOR.” The word “investigator” is arbitrary in relation to the goods listed in the application and registration and thus creates a distinctive commercial impression. In addition, the degree of similarity between the marks need not be as great in the present instance because the goods are closely related.
Relatedness of Goods
The applicant’s goods are “Chemical, biochemical and biotechnological products used in industry and science; reagents and solvents, in particular for sample preparation, the modification and manipulation of cells, and for conducting, marking, separating, isolating, purifying, amplification and/or analysis methods for biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances; kits containing chemicals for sample preparation, the modification and manipulation of cells, and for the marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances, in particular nucleic acids from biological or biochemical material; Diagnostics; medical and veterinary preparations, in particular diagnostics, in particular for sample preparation, the modification and manipulation of cells, and for conducting marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances; chemical, biochemical and biotechnological preparations, in particular reagents and solvents, in particular for sample preparation, the modification and manipulation of cells, and for conducting marking, separating, isolating, purifying, amplification and/or analysis methods for biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances for diagnostic purposes; kits containing medical and veterinary diagnostic preparations, in particular for sample preparation, the modification and manipulation of cells, and for the marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances, in particular nucleic acids from biological or biochemical material.”
In this case, applicant’s goods and/or services are identified broadly. Therefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP §1207.01(a)(iii).
Because the marks are highly similar and the goods are closely related, confusion is likely in accordance with Section 2(d) of the Act. 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.
PRIORITY CLAIM INVALID
Therefore, the priority claim cannot be accepted because the U.S. application was filed more than six months after the filing date of the application that forms the basis for the priority claim.
IDENTIFICATION OF GOODS REQUIREMENTS
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The remainder of the identification is acceptable.
International Class 1:
International Class 5:
Chemical preparations for use in industry and science; Biochemical reagents for scientific use and for non-medical purposes; Biotechnologically-forms genes for use in the manufacture of agricultural seeds; reagents for research purposes and solvents for industrial use, in particular for sample preparation, the modification and manipulation of cells, and for conducting, marking, separating, isolating, purifying, amplification and/or analysis methods for biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances; kits containing chemicals for sample preparation, the modification and manipulation of cells, and for the marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances, in particular nucleic acids from biological or biochemical material, in international class 1
Diagnostic preparations for medical purposes; medical and veterinary preparations, in particular diagnostic preparations, in particular for sample preparation, the modification and manipulation of cells, and for conducting marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances; chemical, biochemical and biotechnological preparations, in particular reagents and solvents, in particular for sample preparation, the modification and manipulation of cells, and for conducting marking, separating, isolating, purifying, amplification and/or analysis methods for biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances for medical diagnostic purposes; kits containing medical and veterinary diagnostic preparations, in particular for sample preparation, the modification and manipulation of cells, and for the marking, separating, isolating, purifying, amplification and/or analysis of biopolymers, in particular nucleic acids, proteins, macromolecules and biologically active substances, in particular nucleic acids from biological or biochemical material, in international class 5
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.
/Khanh M. Le/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 113
(571) 272-9435
khanh.le@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.