UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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.

 

ISSUE/MAILING DATE:

 

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:

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3132196.  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.

 

Similarity of Marks

 

Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

 

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

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 a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii). 

 

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

 

The application includes a claim of priority.  The application that forms the basis for priority was filed on June 24, 2010, and the filing date of the U.S. application is June 29, 2011.  A claim of priority is accepted only if the U.S. application filed under Trademark Act Section 66(a) is filed within six months of the filing date of the application that forms the basis for the priority claim.  15 U.S.C. §1141g; 37 C.F.R. §7.27; TMEP §§806.01(e), 1904.01(e).

 

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:

 

The wording “Chemical, biochemical and biotechnological products used in industry and science” in the identification of goods is indefinite and must be clarified because it may include many different kinds of goods.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Applicant must clarify the words “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” in the identification of goods by specifying the intended purpose of the goods.  See TMEP §1402.01.

 

International Class 5:

 

The wording “diagnostics” in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Applicant must clarify the word “diagnostics” in the phrase “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” by specifying that they are “preparations.”  See TMEP §1402.01.

 

Applicant must clarify the words “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” in the identification of goods by specifying the purpose with greater specificity.  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate. The suggested amendments appear in bold:

 

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

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

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.

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another.  37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c). 

 

 

 

 

/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.