| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 86028397 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/86028397/mark.png |
| LITERAL ELEMENT | EXCITE |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examining Attorney has refused registration of the Mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that the Mark is likely to be confused with the registered mark XSITE (U.S. Registration No. 2,792,590) (the “Cited Registration”). For the reasons set forth below, we respectfully submit that there is no likelihood of confusion between the Applicant’s Mark and the mark in the Cited Registration. 1. The Services are Dissimilar In accordance with the standards established by In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), the TMEP provides a number of factors for determining whether a likelihood of confusion exists between two marks. One important factor to be considered in determining whether a likelihood of confusion exists between two marks is “the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.” T.M.E.P. § 1207.01(a); DuPont, 467 F.2d at 1361. As described in the Application, the Applicant’s services relate to the conduct of clinical trials and to providing information to the research community about clinical trials. The services in the Cited Registration, by contrast, are limited to “scientific research services, namely, analysis of active proteins.” Although the Examining Attorney stated in the Office Action that the services described in the Cited Registration fall within the broader scope of the Applicant’s services, the Applicant must respectfully disagree. The Cited Registration addresses chemical analysis services conducted in a laboratory and used at the earliest stage of drug discovery, to test large numbers of molecules for certain characteristics. The Applicant’s services, by contrast, relate to clinical trials, or the testing of a single drug or molecule for the treatment of a specific disease or condition in human or animal subjects. Clinical trials occur in the clinic and involve the observation of patients (or subjects) and their response to taking a medication, as compared to a placebo. Unlike the protein analysis services of Activ X, which are carried out in a laboratory by research chemists, the Applicant’s services are related to the observation of patients taking a medication or a placebo in a clinical setting. The Specimen recently submitted by Activ X Biosciences in connection with the renewal of its registration describes XSITE as “a high information content mass spectrometry platform that permits identification and quantification of probe labeled proteins in proteomic samples.” A copy of the Specimen is attached for ease of reference. Clearly, the services of Activ X are not intended for anyone other than scientists with highly specialized knowledge of chemistry who are working in a laboratory setting. As such, the services described in the Cited Registration differ significantly from the Applicant’s clinical trial-related services. In light of these differences between the Applicant’s services and the services associated with the mark in the Cited Registration, the Applicant respectfully submits that confusion between the marks is not likely. 2. The Services Travel in Different Trade Channels Another of the DuPont factors used in determining whether a likelihood of confusion exists between two marks is “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” TMEP § 1207.01. As discussed below, the fact that two marks are used in entirely different channels of trade often indicates that there is no likelihood of confusion between the marks, even when the marks are similar or identical. Several courts have specifically stated that, even when two marks are identical, confusion is not likely when the goods or services in question do not compete or are marketed in different manners such that the public is not likely to assume the goods come from the same source. See e.g., Electronic Design & Sales, Inc. v., Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992). Similarly, the Trademark Trial and Appeal Board has allowed the registration of identical, or nearly identical, marks when the marks are used in different channels of trade. See, e.g., In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783, 1786 (T.T.A.B. 1993); In re Unilever Ltd., 222 U.S.P.Q. 981, 982-83 (T.T.A.B. 1984). As previously discussed, the Applicant’s services are targeted to a different consumer base than are the services associated with the Cited Registration. As such, the marks travel in markedly different trade channels. The Applicant provides clinical research data and trial-related information to health care professionals and to medical research professionals working in a clinical setting. In contrast, the owner of the Cited Registration provides high-volume protein analysis to chemists or scientists working in a laboratory setting to analyze the characteristics of a large number of molecules. Based on the differences in the services provided, the owner of the mark in the Cited Registration directs its marketing efforts toward different groups and by different means than will the Applicant. The owner of the Cited Registration directs its services to laboratory scientists with a specific knowledge of chemistry. As evidence of this, the Applicant challenges the Examining Attorney, or anyone speaking non-scientific English, to explain or interpret the marketing phrase utilized by Activ X: “a high information content mass spectrometry platform that permits identification and quantification of probe labeled proteins in proteomic samples.” By contrast, the Applicant’s clinical research information is primarily disseminated through medical journals, research publications, medical conferences and other methods of reaching medical practitioners, for the purpose of showing the efficacy of the Applicant’s medical treatments. A case from the United States Court of Appeals for the Tenth Circuit is illustrative of the distinction between trade channels. In Coherent, Inc. v. Coherent Technologies, Inc., 935 F.2d 1123 (10th Cir. 1991), the court held that similarity of marks is not alone sufficient grounds to establish likelihood of confusion when the products at issue are marketed in different channels of trade. Id. at 1125. In that case, one party’s goods were marketed through catalogs, and orders for the other party’s goods were solicited on an individual basis. Id. Both parties, however, used the identical mark, “COHERENT,” for closely related goods. Id. at 1124. The Coherent court stated that in spite of the identity of the marks, the dissimilarity in channels of trade eliminated any likelihood of confusion in that case. Id. As in Coherent, the dissimilarity between the channels of trade in which the Applicant’s clinical trial-related services travel (i.e., in clinical settings and via medical and research publications, and continuing education programs) and the channels of trade in which the services covered by the Cited Registration travel (i.e., to laboratory research scientists) ensures that consumers of the services of each will not be confused as to their source. 3. The Services are Provided to Careful, Sophisticated Purchasers Another factor relevant in assessing whether there is a likelihood of confusion between two marks is the nature of the consumers at issue. That is, consumers who, by their nature, are sophisticated or are careful about their purchasing decision are less likely to be confused than consumers who are either less careful or less sophisticated. In the instant case, the Applicant’s clinical research information is available to healthcare professionals and researchers in the specialized area of drug development. That is, Applicant’s services are provided only to persons, who by the nature of their profession and training, are considered sophisticated consumers. This information is provided through trade journals and medical information programs not typically seen by the general public. Similarly, consumers of the protein analysis services of Activ X must be highly trained and possess a scientific background. Research chemists are highly specialized scientists, who possess significant education and sophistication. Because consumers utilizing services associated with both the Application and the Cited Registration are careful and sophisticated, confusion is unlikely. 4. The Marks are Dissimilar Another important factor to be considered in determining whether a likelihood of confusion exists between two marks is “[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” T.M.E.P. § 1207.01; Dupont at 1361. In the instant case, the marks viewed in their entireties are distinct in commercial impression and appearance and, as such, are not confusingly similar. The mark in the Cited Registration consists of the letter “X,” combined with “Site.” “Site” is understood by consumers to relate to a web site, or to a location. Thus, the connotation of the mark in the Cited Registration is to identify a specific location (as in “X Marks the Spot”) on a protein – to “X” the “Site.” The Applicant’s Mark, by contrast, raises associations with a verb – “to excite” or “to stimulate,” and the Applicant’s mark connotes energy and enthusiasm for new treatments to improve the condition of patients. 5. Conclusion The Applicant respectfully submits that the targeted customers for the services of the Applicant and those of the owner of the Cited Registration are unrelated. Further, these distinct services are not promoted or sold in such a way that they would be encountered in the same trade channels or by the same consumers in the marketplace. The consumers of both the Applicant and the owner of the Cited Registration are careful and sophisticated. Based on the foregoing, the Applicant respectfully submits that there is no likelihood of confusion between the Applicant’s Mark and the Cited Registration and therefore respectfully requests that the Application, as amended by this response, be reconsidered and approved for publication in the Official Gazette. If you should have further questions or need additional information, please feel free to contact me. Your assistance in this matter is greatly appreciated. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_24106198198-125730573_._EXCITE_Exhibit.pdf |
| CONVERTED PDF FILE(S) (4 pages) |
\\TICRS\EXPORT16\IMAGEOUT16\860\283\86028397\xml4\ROA0002.JPG |
| \\TICRS\EXPORT16\IMAGEOUT16\860\283\86028397\xml4\ROA0003.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\283\86028397\xml4\ROA0004.JPG | |
| \\TICRS\EXPORT16\IMAGEOUT16\860\283\86028397\xml4\ROA0005.JPG | |
| DESCRIPTION OF EVIDENCE FILE | the specimen submitted by Activ X Biosciences in connection with the renewal of the cited registration |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 042 |
| DESCRIPTION | |
| Medical and scientific research in the field of diabetes and clinical trials to medical and research professionals; Providing medical and scientific research information in the field of clinical trials | |
| FILING BASIS | Section 1(b) |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 042 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Medical and scientific research in the field of diabetes and conducting clinical trials for medical and research professionals; Providing medical and scientific research information in the field of clinical trials | |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Maury M. Tepper, III/ |
| SIGNATORY'S NAME | Maury M. Tepper, III |
| SIGNATORY'S POSITION | Attorney of Record, NC Bar Member |
| SIGNATORY'S PHONE NUMBER | 919-861-8903 |
| DATE SIGNED | 04/23/2014 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Apr 23 13:41:36 EDT 2014 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20140423134136594467-8602 8397-500a647868f272bdc37f 34fdba096c275f76d2b32fb86 b326db3b6cf96fbe9d43-N/A- N/A-20140423125730573863 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 07/31/2017) |
The Examining Attorney has refused registration of the Mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that the Mark is likely to be confused with the registered mark XSITE (U.S. Registration No. 2,792,590) (the “Cited Registration”). For the reasons set forth below, we respectfully submit that there is no likelihood of confusion between the Applicant’s Mark and the mark in the Cited Registration.
1. The Services are Dissimilar
In accordance with the standards established by In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), the TMEP provides a number of factors for determining whether a likelihood of confusion exists between two marks. One important factor to be considered in determining whether a likelihood of confusion exists between two marks is “the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.” T.M.E.P. § 1207.01(a); DuPont, 467 F.2d at 1361.
As described in the Application, the Applicant’s services relate to the conduct of clinical trials and to providing information to the research community about clinical trials. The services in the Cited Registration, by contrast, are limited to “scientific research services, namely, analysis of active proteins.” Although the Examining Attorney stated in the Office Action that the services described in the Cited Registration fall within the broader scope of the Applicant’s services, the Applicant must respectfully disagree. The Cited Registration addresses chemical analysis services conducted in a laboratory and used at the earliest stage of drug discovery, to test large numbers of molecules for certain characteristics. The Applicant’s services, by contrast, relate to clinical trials, or the testing of a single drug or molecule for the treatment of a specific disease or condition in human or animal subjects. Clinical trials occur in the clinic and involve the observation of patients (or subjects) and their response to taking a medication, as compared to a placebo. Unlike the protein analysis services of Activ X, which are carried out in a laboratory by research chemists, the Applicant’s services are related to the observation of patients taking a medication or a placebo in a clinical setting.
The Specimen recently submitted by Activ X Biosciences in connection with the renewal of its registration describes XSITE as “a high information content mass spectrometry platform that permits identification and quantification of probe labeled proteins in proteomic samples.” A copy of the Specimen is attached for ease of reference. Clearly, the services of Activ X are not intended for anyone other than scientists with highly specialized knowledge of chemistry who are working in a laboratory setting. As such, the services described in the Cited Registration differ significantly from the Applicant’s clinical trial-related services.
In light of these differences between the Applicant’s services and the services associated with the mark in the Cited Registration, the Applicant respectfully submits that confusion between the marks is not likely.
2. The Services Travel in Different Trade Channels
Another of the DuPont factors used in determining whether a likelihood of confusion exists between two marks is “[t]he similarity or dissimilarity of established, likely-to-continue trade channels.” TMEP § 1207.01. As discussed below, the fact that two marks are used in entirely different channels of trade often indicates that there is no likelihood of confusion between the marks, even when the marks are similar or identical.
Several courts have specifically stated that, even when two marks are identical, confusion is not likely when the goods or services in question do not compete or are marketed in different manners such that the public is not likely to assume the goods come from the same source. See e.g., Electronic Design & Sales, Inc. v., Electronic Data Systems Corp., 21 U.S.P.Q.2d 1388 (Fed. Cir. 1992). Similarly, the Trademark Trial and Appeal Board has allowed the registration of identical, or nearly identical, marks when the marks are used in different channels of trade. See, e.g., In re Albert Trostel & Sons Co., 29 U.S.P.Q.2d 1783, 1786 (T.T.A.B. 1993); In re Unilever Ltd., 222 U.S.P.Q. 981, 982-83 (T.T.A.B. 1984).
As previously discussed, the Applicant’s services are targeted to a different consumer base than are the services associated with the Cited Registration. As such, the marks travel in markedly different trade channels. The Applicant provides clinical research data and trial-related information to health care professionals and to medical research professionals working in a clinical setting. In contrast, the owner of the Cited Registration provides high-volume protein analysis to chemists or scientists working in a laboratory setting to analyze the characteristics of a large number of molecules.
Based on the differences in the services provided, the owner of the mark in the Cited Registration directs its marketing efforts toward different groups and by different means than will the Applicant. The owner of the Cited Registration directs its services to laboratory scientists with a specific knowledge of chemistry. As evidence of this, the Applicant challenges the Examining Attorney, or anyone speaking non-scientific English, to explain or interpret the marketing phrase utilized by Activ X: “a high information content mass spectrometry platform that permits identification and quantification of probe labeled proteins in proteomic samples.”
By contrast, the Applicant’s clinical research information is primarily disseminated through medical journals, research publications, medical conferences and other methods of reaching medical practitioners, for the purpose of showing the efficacy of the Applicant’s medical treatments.
A case from the United States Court of Appeals for the Tenth Circuit is illustrative of the distinction between trade channels. In Coherent, Inc. v. Coherent Technologies, Inc., 935 F.2d 1123 (10th Cir. 1991), the court held that similarity of marks is not alone sufficient grounds to establish likelihood of confusion when the products at issue are marketed in different channels of trade. Id. at 1125. In that case, one party’s goods were marketed through catalogs, and orders for the other party’s goods were solicited on an individual basis. Id. Both parties, however, used the identical mark, “COHERENT,” for closely related goods. Id. at 1124. The Coherent court stated that in spite of the identity of the marks, the dissimilarity in channels of trade eliminated any likelihood of confusion in that case. Id.
As in Coherent, the dissimilarity between the channels of trade in which the Applicant’s clinical trial-related services travel (i.e., in clinical settings and via medical and research publications, and continuing education programs) and the channels of trade in which the services covered by the Cited Registration travel (i.e., to laboratory research scientists) ensures that consumers of the services of each will not be confused as to their source.
3. The Services are Provided to Careful, Sophisticated Purchasers
Another factor relevant in assessing whether there is a likelihood of confusion between two marks is the nature of the consumers at issue. That is, consumers who, by their nature, are sophisticated or are careful about their purchasing decision are less likely to be confused than consumers who are either less careful or less sophisticated.
In the instant case, the Applicant’s clinical research information is available to healthcare professionals and researchers in the specialized area of drug development. That is, Applicant’s services are provided only to persons, who by the nature of their profession and training, are considered sophisticated consumers. This information is provided through trade journals and medical information programs not typically seen by the general public.
Similarly, consumers of the protein analysis services of Activ X must be highly trained and possess a scientific background. Research chemists are highly specialized scientists, who possess significant education and sophistication.
Because consumers utilizing services associated with both the Application and the Cited Registration are careful and sophisticated, confusion is unlikely.
4. The Marks are Dissimilar
Another important factor to be considered in determining whether a likelihood of confusion exists between two marks is “[t]he similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” T.M.E.P. § 1207.01; Dupont at 1361. In the instant case, the marks viewed in their entireties are distinct in commercial impression and appearance and, as such, are not confusingly similar.
The mark in the Cited Registration consists of the letter “X,” combined with “Site.” “Site” is understood by consumers to relate to a web site, or to a location. Thus, the connotation of the mark in the Cited Registration is to identify a specific location (as in “X Marks the Spot”) on a protein – to “X” the “Site.”
The Applicant’s Mark, by contrast, raises associations with a verb – “to excite” or “to stimulate,” and the Applicant’s mark connotes energy and enthusiasm for new treatments to improve the condition of patients.
5. Conclusion
The Applicant respectfully submits that the targeted customers for the services of the Applicant and those of the owner of the Cited Registration are unrelated. Further, these distinct services are not promoted or sold in such a way that they would be encountered in the same trade channels or by the same consumers in the marketplace. The consumers of both the Applicant and the owner of the Cited Registration are careful and sophisticated. Based on the foregoing, the Applicant respectfully submits that there is no likelihood of confusion between the Applicant’s Mark and the Cited Registration and therefore respectfully requests that the Application, as amended by this response, be reconsidered and approved for publication in the Official Gazette.
If you should have further questions or need additional information, please feel free to contact me. Your assistance in this matter is greatly appreciated.
