To: | Driver Group, LLC (trademarks@wsgr.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87147485 - DRIVER - 50198-TM1008 |
Sent: | 11/30/2016 6:56:07 AM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87147485
MARK: DRIVER
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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: Driver Group, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 11/30/2016
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
DRIVER describes a certain type of genetic alteration/mutation present in cancer progression. Advances in the identification of driver genetic alterations in cancer will lead to the development of therapeutic targets for cancer treatment. See http://www.kumc.edu; www.nature.com; www.stsiweb.org.
Applicant intends to use its mark in connection with software and non-downloadable software for gene sequencing, genomic research and cancer research and treatment. Presumably, applicant’s software is used in connection with the identification of driver genetic alterations/mutations. The term, therefore, is descriptive of a significant feature of applicant’s goods and services.
Applicant should note the following additional ground for refusal.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and services. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Additionally, the goods and services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
- Comparison of Marks
Registrant is using BIODRIVER. Applicant intends to use DRIVER. Each mark contains the term DRIVER. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Furthermore, applicant has simply deleted the prefix BIO from registrant’s mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.
- Comparison of Goods and Services
The respective goods and services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
Registrant is using its mark on “electrical equipment for the genetic modification of cells for research purposes” and “laboratory devices for detecting genetic sequences.” Applicant intends to use its mark in connection with “downloadable and non-downloadable software for performing gene sequencing research, visualization and analysis and for providing information about gene sequencing.” Each party is using its mark on goods for the detection and analysis of gene sequences. Furthermore, the goods of each party would be used by the same type of consumers, those performing gene sequencing and genomic research, and in the same channels of trade. The goods, therefore, are highly related. The similarities between the marks, therefore, and the relatedness of the goods create a substantial likelihood that consumers may be confused as to the source of the goods.
IDENTIFICATION OF GOODS AND SERVICES
- Goods
The identification of goods is indefinite and must be clarified to provide further information about the software. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The underlined goods are acceptable as filed. The remaining goods require further information as noted.
Applicant may adopt the following identification, if accurate:
“Downloadable software for consumers to access an interactive database in the field of genomic research; downloadable software for consumers to access an interactive database for storing and searching genomic research; downloadable software for accessing an interactive database in the field of genomic research for healthcare patients to self-report genomic and clinic data; downloadable software for performing gene sequencing research, visualization, and analysis; downloadable software for providing information on gene sequencing, cancer research, and cancer treatment; computer software for [specify, e.g., providing access to an interactive database in the field of genomic research],” in Class 9.
- Services
Applicant may adopt the following identification, if accurate: .
“Providing temporary use of non-downloadable software for consumers to access an interactive database in the field of genomic research; providing temporary use of non-downloadable software for consumers to access an interactive database for storing and searching genomic research; providing temporary use of non-downloadable software for accessing an interactive database in the field of genomic research for healthcare patients to self-report genomic and clinic data; providing temporary use of non-downloadable software for use in extracting and analyzing data in the fields of gene sequencing, cancer research, and cancer treatment; design and development of computer software,” in Class 42.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
INFORMATION ABOUT GOODS/SERVICES REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re AOP LLC, 107 USPQ2d at 1651 (citing In re Cheezwhse.com, Inc., 85 USPQ2d at 1919; In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814). Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
SUMMARY OF ISSUES:
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
/Kathleen M. Vanston/
Examining Attorney
Law Office 107
(571) 272-9235
kathy.vanston@uspto.gov [for informal inquiries]
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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.