Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 12, 2019

This FINAL Office Action is in response to applicant’s communication filed August 12, 2019.  Applicant provided evidence and submitted arguments refuting the 2(d) Likelihood of Confusion Refusal citing MISEQ in U.S. Registration No. 4042598, and MISEQ FGX in U.S.  Registration No. 5324062, under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The trademark examining attorney has carefully reviewed applicant’s evidence, and read it arguments, but does not find it persuasive.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 4042598 and 5324062.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b); Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

 

SUMMARY OF ISSUES:

• REFUSAL – 2(d) Likelihood of Confusion
• Proper Response to Final Action

 

 

1. REFUSAL – 2(d) Likelihood of Confusion

In the Office Action issued September 24, 2019, the trademark examining attorney refused  registration of the applied-for standard character mark, MGISEQ is refused because of a likelihood of confusion with the standard character marks, MISEQ in U.S. Registration No. 4042598, and MISEQ FGX in U.S.  Registration No. 5324062, under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Registrations previously provided in the record.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); TMEP §1207.01.

 

The applied-for standard character mark, MGISEQ is used with Analysers for genome information; Nucleic acid sequencer for scientific purposes; Gene amplification instrument; Protein sequence analysis equipment (laboratory apparatus); DNA chips; Diagnostic apparatus for the detection of pathogens for laboratory or research use; Automatic chromatographic apparatus for laboratory use; Computer programs for biological data mining; Computer programs for developing bioinformatics database for others; Data processing apparatus; Bio-chips for research or scientific purposes, in International Class 009.

 

The cited U.S. Registrations with the same owner:

1)     U.S. Registration No. 4042598, for the mark, MISEQ is used with

Scientific instruments, namely, nucleic acid sequencers, imaging devices, namely, electronic imaging apparatus for detecting images and optical signals, and for processing images and optical signals into data, for use in genotyping and sequencing; equipment for sample preparation, amplification, mixing, hybridization, incubation, and washing, namely, sample containers, and reagent holders, carrying multiple reagents, and sample containers and hollow chambers having chemically modified surfaces; automated laboratory equipment and systems, namely, robotic equipment in the nature of a mechanical arm for positioning and moving containers for samples or adding reagents thereto, and barcode readers; computer systems comprised of computer hardware, computer operating systems, computer software, data files, modems and computer peripheral devices for collecting, storing, analyzing and reporting biological information, and for sample tracking and managing projects, laboratory workflow and data, all the foregoing for use in the fields of scientific and clinical research , in International Class 009

2) U.S.  Registration No. 5324062, for the mark MISEQ FGX is used with:

 

International Class 001           Reagents, enzymes, and nucleotides for use in scientific research, forensics, and human identification; reagents, enzymes, and nucleotides for nucleic acid sequencing for scientific research, forensics, and human identification purposes

 

International Class 009           Nucleic acid sequencers for scientific research, forensics, and human identification purposes; scientific instruments for use in genetic analysis; computer software for the analysis of genetic sequences

 

a.      Similarity in the Marks

 

Applicant’s mark, MGISEQ and registrant’s mark, MISEQ

Applicant’s proposed mark, MGISEQ, encompasses registrant’s mark, MISEQ and is similar in appearance, sound and commercial impression.    The letters, SEQ in both marks is an abbreviation for sequence and conveys the same commercial connotation. See attached evidence from ACRONYM FINDER , provided in the record, see TSDR, page 8 of 10, Office Action Outgoing 02/12/2019   

 

While applicant argues it “does not agree with the Examining Attorney’s reasoning that the letters “SEQ”, regardless of its context, must be an abbreviation for sequence”, See the record,  TSDR, p. page 7, Applicant also “submits that the letters “SEQ” are intended to be understood as an abbreviation of ‘sequencing’, noting that the goods under Class 9 covered by the Applicant’s mark is related to its business in gene sequencing.”  See the record, TSDR, p.6, No. 16. 

 

Applicant provided copies of third party registrations and further argues, “after the registration of the cited marks, the USPTO has frequently allowed the registration of word marks incorporating ‘SEQ’ covering similar goods and services as those under the Applicant’s mark and the cited marks”.  Third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.”  In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

 

Marks may be confusingly similar in appearance where similar terms appear in the compared marks and create a similar overall commercial impression, as in this case, where applicant’s mark is MGISEQ and registrant’s mark is MISEQ.  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); TMEP §1207.01(b)(ii)-(iii). Furthermore, slight differences in the sound of similar marks, as in this case, where applicant’s mark contains the additional letter, “G”, e.g., MGISEQ and MISEQ, will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).   Therefore, confusion is likely.

 

Applicant’s mark, MGISEQ and registrant’s mark, MISEQ FGX

Applicant’s proposed mark, MGISEQ, contains the identical dominant terms in registrant’s mark, MISEQ and is similar in appearance, sound, and commercial impression. Marks may be confusingly similar in appearance where similar terms  appear in the compared marks and create a similar overall commercial impression.  In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).   Furthermore, the letters FGX in registrant’s mark MISEQ FGX does not diminish the similarity in the marks, because consumers are generally more inclined to focus on the first word or letters in any trademark .  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).  

 

Applicant, however, argues that “the ‘FGX’ portion carries just as much weight (if not more than) ‘MISEQ’ in the cited mark”.  “With ‘FGX’ as part of its distinctive element, the two marks have very different connotations and create substantially different visual and commercial impressions”.    The trademark examining attorney respectfully disagrees”. 

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).    Therefore, confusion is likely.

 

 

2. Comparison of the Goods

Applicant MGISEQ goods, and registrant MISEQ goods

 

Applicant’s provides the following goods in IC 009,  Scientific instruments, namely, nucleic acid sequencers, imaging devices, namely, electronic imaging apparatus for detecting images and optical signals, and for processing images and optical signals into data, for use in genotyping and sequencing; equipment for sample preparation, amplification, mixing, hybridization, incubation, and washing, namely, sample containers, and reagent holders, carrying multiple reagents, and sample containers and hollow chambers having chemically modified surfaces; automated laboratory equipment and systems, namely, robotic equipment in the nature of a mechanical arm for positioning and moving containers for samples or adding reagents thereto, and barcode readers; computer systems comprised of computer hardware, computer operating systems, computer software, data files, modems and computer peripheral devices for collecting, storing, analyzing and reporting biological information, and for sample tracking and managing projects, laboratory workflow and data, all the foregoing for use in the fields of scientific and clinical research,  while registrant provides Nucleic acid sequencers for scientific research, forensics, and human identification purposes; scientific instruments for use in genetic analysis; computer software for the analysis of genetic sequences, in IC 009.

 

Applicant and registrant both provide the identical scientific instruments being nucleic acid sequencers for use in genetic analysis, and computer software used therewith.  Applicant also provides scientific equipment used with genetic sequencing which is also complementary to registrant’s goods in the same field. See attached evidence from Medical Product Guide

 

Applicant also concurs and states, “Applicant does not dispute that the goods covered by the Applicant’s mark and the cited marks may be similar to each other, that is, because some of the above-mentioned goods are essential products in the field of gene sequencing.”  See the record,  page 5, No. 10 TSDR   Therefore, the goods of the parties are partially identical and related and may be found in the same channels of trade, and used by the same classes of consumers.

 

Applicant MGISEQ goods, and registrant MISEQ FGX goods

Applicant’s provides the following goods in IC 009,  Scientific instruments, namely, nucleic acid sequencers, imaging devices, namely, electronic imaging apparatus for detecting images and optical signals, and for processing images and optical signals into data, for use in genotyping and sequencing; equipment for sample preparation, amplification, mixing, hybridization, incubation, and washing, namely, sample containers, and reagent holders, carrying multiple reagents, and sample containers and hollow chambers having chemically modified surfaces; automated laboratory equipment and systems, namely, robotic equipment in the nature of a mechanical arm for positioning and moving containers for samples or adding reagents thereto, and barcode readers; computer systems comprised of computer hardware, computer operating systems, computer software, data files, modems and computer peripheral devices for collecting, storing, analyzing and reporting biological information, and for sample tracking and managing projects, laboratory workflow and data, all the foregoing for use in the fields of scientific and clinical research, while registrant provides reagents, enzymes, and nucleotides for use in scientific research, forensics, and human identification; reagents, enzymes, and nucleotides for nucleic acid sequencing for scientific research, forensics, and human identification purposes and nucleic acid sequencers for scientific research, forensics, and human identification purposes; scientific instruments for use in genetic analysis; computer software for the analysis of genetic sequences.

 

Registrant’s goods in IC 001, reagents, enzymes, and nucleotides for use in scientific research, forensics, and human identification; reagents, enzymes, and nucleotides for nucleic acid sequencing for scientific research, forensics, and human identification purposes and nucleic acid sequencers for scientific research, forensics, and human identification purposes are chemical agents used with applicant’s and registrant’s identical scientific instruments being nucleic acid sequencers for use in genetic analysis, and computer software used therewith.  Therefore registrant’s chemical agents are complementary to applicant’s scientific instruments, namely, nucleic acid sequencers, as the chemical agents and applicant’s scientific instruments are both used in genetic analysis; (see attached evidence from Medical Product Guide) and registrant’s goods in IC 009 are partially identical and related to applicant’s goods.  Here, again, the goods of the parties are partially identical and related and may be found in the same channels of trade, and used by the same classes of consumers.

 

Where the goods of an applicant and registrant are “closely related,” and partially identical in this case, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  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).  

 

Again, the applicant acknowledges and concedes, “Applicant does not dispute that the goods covered by the Applicant’s mark and the cited marks may be similar to each other, that is, because some of the above-mentioned goods are essential products in the field of gene sequencing.”   Therefore, the goods of the parties are partially identical and related and may be found in the same channels of trade, and used by the same classes of consumers.

 

In this case, applicant’s mark, MGISEQ is similar in appearance, sound and commercial impression to registrant’s marks, MISEQ and MISEQ FGX,  and the goods are partially identical and related, such that, if found in the marketplace, confusion is likely among consumers as to the single source of the goods.

 

For these reasons, registration is finally refused of applicant’s mark, MGISEQ. 37 C.F.R. §2.63(b).

 

 

2. Proper Response to Final Action

An applicant may respond to a final action by timely filing (See TMEP 715.01):

1)      a notice of appeal to the Trademark Trial and Appeal Board (see TMEP §§1501–1501.07);

2)     a request for reconsideration that seeks to overcome the substantive refusal to register and comply with any outstanding requirement.   

 

Filing a request for reconsideration does not stay or extend the deadline for filing a notice of appeal or petition to the Director under 37 C.F.R. §2.63(b)(2). 37 C.F.R. §2.63(b)(3); TMEP §715.03.

 

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 $125 per 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.  

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

If the Applicant has questions about its application or needs assistance in responding to this FINAL Office action, please telephone the assigned Trademark Examining Attorney directly at the number below, or email.

 

/Odessa Bibbins/

Attorney-Advisor

Law Office 118

Odessa.Bibbins@USPTO.GOV (informal questions only)

571-272-9425 Telephone

571-273-9425 Fax

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 12, 2019 for

U.S. Trademark Application Serial No. 88064051

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Odessa Bibbins/

Attorney-Advisor

Law Office 118

Odessa.Bibbins@USPTO.GOV (informal questions only)

571-272-9425 Telephone

571-273-9425 Fax

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from October 12, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”