To: | Flagship Labs 61, Inc. (cxltrademarks@wolfgreenfield.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88226337 - ENTEGRAL - F08202000000 |
Sent: | 5/6/2019 5:57:01 PM |
Sent As: | ECOM127@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 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88226337
MARK: ENTEGRAL
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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: Flagship Labs 61, Inc.
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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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 5/6/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
1. Section 2(d) Refusal – Likelihood of Confusion
2. Identification of Goods– Amendment Required
3. Advisory-Multiple-Class Application Requirements
1. SECTION 2(d) REFUSAL–LIKELIHOOD OF CONFUSION
The examining attorney refuses registration under Trademark Act Section 2(d), §1052(d), because the applicant’s mark so resembles the mark in U.S. Registration Nos. 3013749, 1842205, 4252224, 2691636, and 3954585 as to cause confusion, to cause mistake, or to deceive. See TMEP §§1207.01 et seq. See the enclosed registrations.
Applicant’s mark is ENTEGRAL for, in relevant part, “Agents for scientific and research use; agents for medical use; therapeutic preparations; pharmaceutical preparations; biological preparations; biosimilars; therapeutic and prophylactic vaccines; research and development in the field of pharmaceutical preparations, medicines, biotechnology, and medical devices; chemical and medical laboratory services in the field of biotechnology and pharmaceuticals” in International Class 05.
The registered marks, which are owned by the same registrant, are as follows:
1. The mark in Registration No. 3013749 is INTEGRAL DNA for, in relevant part, “Pharmaceutical preparations for use in the treatment of human skin ailments” in Class 05.
2. The mark in Registration No. 1842205 is INTEGRAL for use with, in relevant part, “adhesives in film form for use in industry” in Class 05.
3. The mark in Registration No. 4252224 is ENTEGRAL for use with “Implants for larynx; prostheses for larynxes; artificial larynxes” in Class 05.
4. The mark is Registration No. 2691636 is INTEGRAL MOLECULAR for use with “Drug discovery and development services for the biotechnology and pharmaceutical industries” in Class 42.
5. The mark in Registration No. 3954585 is INTEGRAL BIOSYSTEMS for “Consulting services in the fields of biotechnology, pharmaceutical research and development, laboratory testing, diagnostics, and pharmacogenetics” in Class 42.
Introduction to Section 2(d) Analysis
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).
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.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., __ F.3d __, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., __ F.3d at __, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, (Fed. Cir. 1997)).
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).
In this case, applicant’s mark and all of the registered marks are similar in appearance, sound, and meaning because they share the phonetic equivalent wording, “ENTEGRAL/INTEGRAL”, which conveys the same overall commercial impression of "essential or necessary for completeness." See http://www.ahdictionary.com/word/search.html?q=integral. Because this shared wording gives rise to a similar commercial impression when considered in connection with applicant’s and registrant’s goods, the marks are considered similar for purposes of the likelihood of confusion analysis.
Thus, the marks are confusingly similar.
Relatedness of the Services
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods 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).
In this case, the applicant uses broad wording to describe “pharmaceutical preparations” and “agents for scientific and research use”, which presumably encompasses all goods of the type described, including registrants’ more narrow “Pharmaceutical preparations for use in the treatment of human skin ailments” (Registration No. 4718852); “adhesives in film form for use in industry” (Registration No. 1842205); and “Implants for larynx; prostheses for larynxes; artificial larynxes” (Registration No. 4252224), which describe particular types of pharmaceutical preparations or particular types of agents that may be used for scientific and research purposes. Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the applicant uses broad wording to describe “chemical and medical laboratory services in the field of biotechnology and pharmaceuticals” which presumably encompasses all services of the type described, including registrants’ more narrow “Drug discovery and development services for the biotechnology and pharmaceutical industries” (Registration No. 2691636) and “Consulting services in the fields of biotechnology, pharmaceutical research and development, laboratory testing, diagnostics, and pharmacogenetics” (Registration No. 3954585), which describes particular types of laboratory services. Moreover, applicant’s, “Research and development in the field of pharmaceutical preparations, medicines, biotechnology, and medical devices” is closely related to the registrant’s “Consulting services in the fields of biotechnology, pharmaceutical research and development, laboratory testing, diagnostics, and pharmacogenetics” as types of technical services that consumers are accustomed to encountering in the same field of use and trade channels. See, e.g., attachments from third party companies Xyntek, Trustek, and Porsche Consulting. Thus, applicant’s and registrant’s services are considered related for likelihood of confusion purposes.
Further, in regard to the other goods recited in the application, these goods are generally similar to the registrant's (Registration No. 4718852) goods as types of scientific materials that consumers are accustomed to encountering in the same trade channels. See, e.g.,
1. http://www.fishersci.com/us/en/products/I9C8L70H/ph-meters.html and http://www.fishersci.com/shop/products/calcium-hydrogen-phosphate/50255699#?keyword=Calcium+Hydrogen+Phosphate+1+kg (showing Fisher Scientific offers agents for scientific and research use in the form of ph-meters and pharmaceutical preparations in the form of calcium hydrogen in the same trade channels).
2. http://www.sigmaaldrich.com/catalog/substance/5sulfosalicylicaciddihydrate25421596583311?lang=en®ion=US and http://www.sigmaaldrich.com/catalog/product/sigma/c7263?lang=en®ion=US (showing Sigma-Aldrich offers agents for scientific and research use in the form of Sulfosalicylic acid and pharmaceutical preparations in the form of calcium phosphate in the same trade channels).
3. http://www.spectrumchemical.com/OA_HTML/chemical-products_Dibasic-Calcium-Phosphate-Dihydrate-Powder-USP_CA160.jsp and http://www.spectrumchemical.com/OA_HTML/Chemicals_TCI-Organic-Chemicals_Biochemistry.jsp?minisite=10020&respid=22372 (showing Spectrum Chemical MFG Corp offers agents for scientific and research use in the form of biochemical compounds and pharmaceutical preparations in the form of calcium phosphate in the same trade channels).
The attached evidence establishes that the goods and services recited in the application and registrations frequently travel in the same channels of trade, and are offered to the same class of consumers in the same field of use. This evidence is probative in establishing that consumers are accustomed to seeing scientific materials and technical services attributed to and emanating from the same source.
In summary, the evidence and recitation of goods and services in the application and registration support the conclusion that the applicant's goods and services are similar, commercially related, and travel in the same trade channels as the registrants’ goods and services.
Therefore, applicant’s mark is not entitled to registration under Section 2(d) of the Trademark Act.
Response to Section 2(d) – Likelihood of Confusion Refusal
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
REQUIREMENT
2. IDENTIFICATION AND CLASSIFICATION OF GOODS—AMENDMENT REQUIRED
(a) Identification
Certain wording in the application's identification of goods is not sufficiently definite for registration purposes. An identification of goods must be specific, definite, and accurate. TMEP §1402.01. Therefore, the applicant must amend the Identification of goods to indicate, in an explicit manner, the nature of the goods in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce
The chart below identifies applicant’s indefinite and broad identification entries, the rationale explaining why the entries are unacceptable, and suggested definite and clear wording in bold which applicant may adopt, if accurate.
Applicant’s Original Language |
Issue |
Suggested ID |
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Agents for scientific and research use; |
Indefinite: identification does not specify the purported agents offered.
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Agents for scientific and research use, namely, biological tissues, blood, stem, cells, umbilical cords, and placentas. |
Agents for medical use; |
Indefinite. Identification does not specify the purported agents offered.
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Agents for medical use, namely, fungicides, placebo pills, and nitrous oxide. |
therapeutic preparations; |
Indefinite. Applicant must specify the type of therapeutic preparations offered.
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Therapeutic preparations, namely, aloe vera for therapeutic purposes. |
pharmaceutical preparations; |
Indefinite. Applicant must specify the type of pharmaceutical preparations offered.
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pharmaceutical preparations, namely, antivirals and antidepressants |
biological preparations; |
Indefinite. Applicant must specify the purpose of the biological preparations. |
Biological preparations for the treatment of cancer. |
Biosimilars; |
Indefinite. Applicant must specify the nature and purpose of the biosimilar. |
Biosimilars, namely, yeast or yeast extracts for medical, veterinary, and pharmaceutical purposes. |
Research and development in the field of pharmaceutical preparations, medicines, biotechnology, and medical devices; |
Indefinite: applicant must specify the nature of the subject matter that is being researched or developed.
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Scientific research and development in the field of pharmaceutical preparations, medicines, biotechnology, and medical devices; |
(b) Classification
The applicant has classified “agents for scientific and research use” in International Class 05; however, assuming “agents” refers to scientific material, the proper classification would be International Class 01. Additionally, applicant has classified “research and development in the field of pharmaceutical preparations, medicines, biotechnology, and medical devices” and “chemical and medical laboratory services in the field of biotechnology and pharmaceuticals” in International Class 05; however, the proper classification would be International Class 42. Therefore, applicant may respond by (1) adding International Classes 01 and 42 to the application and reclassifying these goods and services in the proper international classes, or (2) deleting “agents for scientific and research use” and “research and development in the field of pharmaceutical preparations, medicines, biotechnology, and medical devices” and “chemical and medical laboratory services in the field of biotechnology and pharmaceuticals” from the application. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action below.
Following is an example of acceptable Identifications of Goods and Services which the applicant may adopt, if accurate:
Class 1: Agents for scientific and research use, namely, biological tissues, blood, stem, cells, umbilical cords, and placentas
Class 5: Agents for medical use, namely, fungicides, placebo pills, and nitrous oxide; Therapeutic preparations, namely, aloe vera for therapeutic purposes; pharmaceutical preparations, namely, antivirals and antidepressants; Biological preparations for the treatment of cancer; Biosimilars, namely, yeast or yeast extracts for medical, veterinary, and pharmaceutical purposes; Therapeutic and prophylactic vaccines
Class 42: Scientific research and development in the field of pharmaceutical preparations, medicines, biotechnology, and medical devices; Chemical and medical laboratory services in the field of biotechnology and pharmaceuticals
Scope Advisory
An applicant’s goods and services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and services or add goods and services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and services will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
ID Manual Online
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
3. ADVISORY: MULTI-CLASS APPLICATION REQUIREMENTS
The application identifies goods in more than one international classes; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Sections 1(b).
(1) List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered class, e.g., 1, 5, 42.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Sections 1(b) application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Filing Fees for added classes
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). Here, since applicant’s goods and services can include two additional classes, the fee is $550. See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE GUIDELINE
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
ASSISTANCE
Barahona, Byron
/Byron Steve Barahona/
Examining Attorney
Law Office 127
Phone: (571)-270-5579
Byron.Barahona@uspto
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.