Notation to File

FOLLOW YOUR DNA

Helix OpCo, LLC

RE: Office Actions for 88134331, 88145986, and 88130277 (F&L Ref. 119383-1070, -1069, -1067) The proposed wording in the identifications is not acceptable and must be amended. The USPTO’s ID Manual reflects that it is rare for a testing kit to be in one class, and the exceptions are where the marketplace evidence is clear about what the goods are. For example, the “pregnancy test kits for home use” you mention clearly refers to one type of commonly available product for medical purposes, and it is in International Class 5 because those kits rely on antibody preparations to function, and antibody preparations for medical purposes are classified in International Class 5. The same rationale holds true for “first aid kits” and “in vitro gender prediction test kits,” as the USPTO has accepted that these types of kits have a readily-understood meanings as to what constitutes these kits. There is no evidence, however, that applicant’s “kits for genetic testing” and “kits for collecting biological samples” are equivalent to these types of kits. For example, the identification in Application Serial No. 88134331 (HELIX) states that the kits are “for scientific and research purposes” – these kits are not analogous to “pregnancy test kits for home use,” “first aid kits,” and “in vitro gender prediction test kits,” which are not goods for “scientific and research purposes.” Even if applicant’s goods could be considered analogous to the test kits it cites (which are all classified in International Class 5 because they are for medical purposes), applicant has not explained why the kits it offers “for medical purposes” in Application Serial Nos. 88130277 and 88145986 are classified in International Class 10 instead of International Class 5. In addition, it should be noted that the majority of relevant ID Manual entries for kits all show that a higher level of detail is needed for goods such as the applicant’s. For instance: 001 Testing kits containing peptide substrates used in analyzing and detecting certain toxins for laboratory or research use 005 Drug testing kits comprised of medical diagnostic reagents and assays that test for the presence of {indicate specific substance, e.g., alcohol, drugs, etc.} 010 Diagnostic kits consisting primarily of probes, buffers and reagents for use in microbial testing Concerning your statement that “TMEP 1401.05(a) expressly permits kits to be defined according to purpose,” this is true but incomplete. As clearly stated in that section: Although certain types of kits are deemed acceptable for identification and classification purposes without listing the individual components (e.g., face painting kits and teeth whitening kits in Class 3, and first aid kits and ovulation test kits in Class 5), in general, the identification must indicate the type of kit and its principal components. Kits that are deemed acceptable for identification and classification purposes without listing the individual components are included in the ID Manual and are generally classified according to purpose; other kits are classified on a case-by-case basis using the classification principles set forth below. As the highlighted language indicates, kits deemed acceptable by the USPTO based on solely on their purpose without need to indicate individual components are currently included in the ID Manual. Applicant’s kits do not appear in the ID Manual, and thus classification of applicant’s kits is not based on their purpose alone but also on the principals laid out in TMEP §1401.05(a). That section states that, except for kits that are for making a single object (which are not the kits applicant offers), all kits are classified based on the components of the kits in one way or another (e.g., the primary component of the kit controls classification, the component listed first controls classification). This was also stated in the final refusal: “Kits are classified based on the primary components of the kits. See TMEP §1401.05(a).” Therefore, pointing to different kits that appear in the ID Manual because they have been deemed acceptable by the USPTO to support applicant’s argument that its kits are acceptable as currently written is not persuasive. Finally, your statements concerning how applicant’s kits may change over time are not persuasive because applicant will be required to provide specimens showing actual use of the mark in commerce with the goods identified in the application at the time the allegations of use are filed. The use or display of a mark in the sale of goods before the goods are actually created or provided does not show use in commerce. See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a). Therefore, the fact that applicant may offer different kits in the future is irrelevant in this analysis: If applicant offers different kits in the future than the ones being used in commerce when the allegations of use are filed, then applicant must file new applications for those different kits as they are different goods not covered by the allegations of use. Consequently, applicant’s current wording will not be accepted. Applicant must comply with the USPTO requirements for a specific identification as laid out in the final Office action. Further informal discussions will not serve to clarify the identification requirements beyond what was already explained in the Office action and now in this email, and therefore no further communications concerning these requirements will be considered if made by either email or telephone. TMEP §709.05. To make any further arguments part of the record for consideration, they must be made as part of a formal, written request for reconsideration (and/or an appeal to the Trademark Trial and Appeal Board). Id. Sincerely, Andrew Leaser From: EConnolly@foley.com <EConnolly@foley.com> Sent: Wednesday, August 28, 2019 12:33 PM To: Leaser, Andrew C. <andrew.leaser@USPTO.GOV> Cc: JGekas@foley.com; JRodriguez@foley.com; smunoz@foley.com Subject: Office Actions for 88134331, 88145986, and 88130277 (F&L Ref. 119383-1070, -1069, -1067) Hi Andrew, I’m contacting you in relation to three outstanding office actions for HELIX (88/134,331), HELIX DNA DISCOVERY KIT (88/145,986), and FOLLOW YOUR DNA (88/130,277). Each of these applications includes in the description of goods in Class 9, the following:

NOTE TO THE FILE

SERIAL NUMBER: 88130277

DATE:    08/28/2019

NAME: aleaser

NOTE:

From: Leaser, Andrew C.
Sent: Wednesday, August 28, 2019 7:43 PM
To: EConnolly@foley.com
Cc: JGekas@foley.com; JRodriguez@foley.com; smunoz@foley.com
Subject: RE: Office Actions for 88134331, 88145986, and 88130277 (F&L Ref. 119383-1070, -1069, -1067)

The proposed wording in the identifications is not acceptable and must be amended.

The USPTO’s ID Manual reflects that it is rare for a testing kit to be in one class, and the exceptions are where the marketplace evidence is clear about what the goods are. For example, the “pregnancy test kits for home use” you mention clearly refers to one type of commonly available product for medical purposes, and it is in International Class 5 because those kits rely on antibody preparations to function, and antibody preparations for medical purposes are classified in International Class 5. The same rationale holds true for “first aid kits” and “in vitro gender prediction test kits,” as the USPTO has accepted that these types of kits have a readily-understood meanings as to what constitutes these kits. There is no evidence, however, that applicant’s “kits for genetic testing” and “kits for collecting biological samples” are equivalent to these types of kits. For example, the identification in Application Serial No. 88134331 (HELIX) states that the kits are “for scientific and research purposes” – these kits are not analogous to “pregnancy test kits for home use,” “first aid kits,” and “in vitro gender prediction test kits,” which are not goods for “scientific and research purposes.”

Even if applicant’s goods could be considered analogous to the test kits it cites (which are all classified in International Class 5 because they are for medical purposes), applicant has not explained why the kits it offers “for medical purposes” in Application Serial Nos. 88130277 and 88145986 are classified in International Class 10 instead of International Class 5.

In addition, it should be noted that the majority of relevant ID Manual entries for kits all show that a higher level of detail is needed for goods such as the applicant’s. For instance:

001        Testing kits containing peptide substrates used in analyzing and detecting certain toxins for laboratory or research use

005        Drug testing kits comprised of medical diagnostic reagents and assays that test for the presence of {indicate specific substance, e.g., alcohol, drugs, etc.}

010        Diagnostic kits consisting primarily of probes, buffers and reagents for use in microbial testing

Concerning your statement that “TMEP 1401.05(a) expressly permits kits to be defined according to purpose,” this is true but incomplete. As clearly stated in that section:

Although certain types of kits are deemed acceptable for identification and classification purposes without listing the individual components (e.g., face painting kits and teeth whitening kits in Class 3, and first aid kits and ovulation test kits in Class 5), in general, the identification must indicate the type of kit and its principal components. Kits that are deemed acceptable for identification and classification purposes without listing the individual components are included in the ID Manual and are generally classified according to purpose; other kits are classified on a case-by-case basis using the classification principles set forth below.

As the highlighted language indicates, kits deemed acceptable by the USPTO based on solely on their purpose without need to indicate individual components are currently included in the ID Manual. Applicant’s kits do not appear in the ID Manual, and thus classification of applicant’s kits is not based on their purpose alone but also on the principals laid out in TMEP §1401.05(a). That section states that, except for kits that are for making a single object (which are not the kits applicant offers), all kits are classified based on the components of the kits in one way or another (e.g., the primary component of the kit controls classification, the component listed first controls classification). This was also stated in the final refusal: “Kits are classified based on the primary components of the kits. See TMEP §1401.05(a).” Therefore, pointing to different kits that appear in the ID Manual because they have been deemed acceptable by the USPTO to support applicant’s argument that its kits are acceptable as currently written is not persuasive.

Finally, your statements concerning how applicant’s kits may change over time are not persuasive because applicant will be required to provide specimens showing actual use of the mark in commerce with the goods identified in the application at the time the allegations of use are filed. The use or display of a mark in the sale of goods before the goods are actually created or provided does not show use in commerce. See Couture v. Playdom, Inc., 778 F.3d 1379, 1380-82, 113 USPQ2d 2042, 2043-44 (Fed. Cir. 2015); In re Cedar Point, Inc., 220 USPQ 533 (TTAB 1983); TMEP §§904, 1301.03(a). Therefore, the fact that applicant may offer different kits in the future is irrelevant in this analysis: If applicant offers different kits in the future than the ones being used in commerce when the allegations of use are filed, then applicant must file new applications for those different kits as they are different goods not covered by the allegations of use.

Consequently, applicant’s current wording will not be accepted. Applicant must comply with the USPTO requirements for a specific identification as laid out in the final Office action. Further informal discussions will not serve to clarify the identification requirements beyond what was already explained in the Office action and now in this email, and therefore no further communications concerning these requirements will be considered if made by either email or telephone. TMEP §709.05. To make any further arguments part of the record for consideration, they must be made as part of a formal, written request for reconsideration (and/or an appeal to the Trademark Trial and Appeal Board). Id.

Sincerely,

Andrew Leaser

From: EConnolly@foley.com <EConnolly@foley.com>
Sent: Wednesday, August 28, 2019 12:33 PM
To: Leaser, Andrew C. <andrew.leaser@USPTO.GOV>
Cc: JGekas@foley.com; JRodriguez@foley.com; smunoz@foley.com
Subject: Office Actions for 88134331, 88145986, and 88130277 (F&L Ref. 119383-1070, -1069, -1067)

Hi Andrew,

I’m contacting you in relation to three outstanding office actions for HELIX (88/134,331), HELIX DNA DISCOVERY KIT (88/145,986), and FOLLOW YOUR DNA (88/130,277). Each of these applications includes in the description of goods in Class 9, the following:

·         kits for use in genetic testing for scientific and research purposes

·         kits for collecting biological samples for use in DNA analysis of humans for scientific and research purposes

You have suggested that the kits must be classified according to their components rather than purpose. But we are having trouble understanding your position and how best to address it, because TMEP 1401.05(a) expressly permits kits to be defined according to purpose. Similarly, the TM ID Manual includes numerous examples of kits defined according to purpose (“First aid kits,” “Pregnancy test kits for home use,” “In vitro gender prediction test kits,” etc.). Although we pointed out both the relevant TMEP section and the TM ID Manual examples in our latest communication, the office actions do not address either.

As you may know, the technology underlying the field of genetics and DNA analysis is constantly changing, such that the exact components and DNA collection means included in our client’s kit products will undoubtedly change over time. We are very concerned that if we are forced to specify in the ID the exact components included in the kit today, when the product is inevitably updated, our client will no longer be able to maintain certain portions of the registration. That can’t be the right outcome, because in the minds of consumers, an updated product will still be perceived as the same essential product, with the same purpose.

We believe it would be helpful if we could discuss these issues with you further. Please let us know if there is a time you would be available for a short call, or if you have any further thoughts on the identification of these goods.

Regards,

Eoin

Eoin (Owen) P. Connolly

Foley & Lardner LLP
3000 K Street, N.W. | Suite 600
Washington, DC 20007-5109
P 202.295.4160