To: | Advanced Orthomolecular Research, Inc. (cspierer@harrisbeach.com) |
Subject: | U.S. Trademark Application Serial No. 88294025 - MYBLUEPRINT - N/A |
Sent: | December 02, 2019 02:11:54 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 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88294025
Mark: MYBLUEPRINT
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Correspondence Address: 333 EARLE OVINGTON BLVD., SUITE 901
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Applicant: Advanced Orthomolecular Research, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 02, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In the present case, applicant seeks to register MYBLUEPRINT in standard characters for “Apparatus for DNA and RNA testing for medical purposes; Kits for use in genetic identity testing for medical purposes comprising a saliva collection tube, swabs, vials, sealable bags, collection envelopes, boxes, instruction manuals, caps for the tube and mailing packaging for use in DNA testing of humans” in Class 10.
The mark in Registration No. 5772042 is BLUEPRINT GENETICS in standard characters for “Science software for scientific analysis of genetic sequences; software for use in genetic testing and diagnosis” in Class 9; “Science and technology services, namely, research and development of genetic testing and diagnosis, testing of DNA for inherited disorders, and providing information to others relating to genetic testing and diagnosis” in Class 42; and “Human healthcare services; medical services for the diagnosis of conditions of the human body; medical and healthcare services; providing medical information in the healthcare sector” in Class 44.
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 and/or services 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 and/or services. 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 [or services] 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).
Here, applicant’s mark is MYBLUEPRINT in standard characters and registrant’s mark is BLUEPRINT GENETICS in standard characters. The wording BLUEPRINT in Applicant’s mark is identical in sound, appearance and commercial impression to the wording BLUEPRINT in the cited registration. Moreover, this wording conveys the same meaning of “something which acts as a plan, model, or template for others”. See attached dictionary evidence.
The addition of the wording MY in the application and GENETICS in the cited registration does not obviate the similarities between the marks. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); 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). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Here, the wording “Genetics” is disclaimed in the cited registration. Additionally, the wording “BLUEPRINT” in applicant’s mark “MYBLUEPRINT” is clearly the more distinctive term than the word “MY” in applicant’s mark, making “BLUEPRINT” the dominant feature of the mark. In the present case, the marks are identical in part.
Applicant argues that when viewed as a whole, the entirety of the marks “MYBLUEPRINT” and “BLUEPRINT GENETICS” do not look or sound alike. However, as noted above, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. In this case, the dominant feature of both Applicant’s and Registrant’s marks is the wording “BLUEPRINT”, not the wording “MY” or “GENETICS” as Applicant argues, because of the reasons set forth above.
Applicant additionally argues that “where the common element of conflicting marks is ‘weak’ in the sense that such portion is descriptive, highly suggestive, or is in common use by many sellers in the market, then this reduces the likelihood of confusion.” Applicant argues that because third parties use the term “blueprint” in connection with similar goods and services, that the registered mark has little or no source-identifying significance because it is descriptive or generic in relation to registrant’s goods and/or services. Trademark Act Section 7(b), however, provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of a registered mark. 15 U.S.C. §1057(b). The validity of a cited registration “cannot be challenged in an ex parte proceeding.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016). Thus, applicant’s argument is not being considered because to do so would fail to give the cited registered mark the validity to which it is entitled. In re Fat Boys Water Sports LLC, 118 USPQ2d at 1517 (citing In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007)).
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
Because the dominant portion of applicant’s mark is identical in sound, appearance and meaning to the dominant portion of the registrant’s mark, consumers are likely to believe the marks identify the same source of goods and services.
Therefore, the marks are confusingly similar.
Relatedness of the Goods and Services
Here, applicant’s genetic testing kits and DNA testing apparatus are related to registrant’s genetic testing software and genetic testing services.
Specifically, this evidence shows that DNA testing kits and apparatus, DNA testing services, and software for use in genetic testing and diagnosis are all marketed and used together in DNA testing services in that many DNA testing providers provide consumers with kits, test consumers’ DNA for medical issues, and then allow them to review and analyze the results using specific software, all of which is marketed under a single brand.
Accordingly, when consumers encounter applicant’s goods and registrant’s services offered under highly similar marks, they are likely to be confused as to the source of the goods and services.
In summary, the marks are confusingly similar and the goods and services are related. Therefore, consumers are likely to be confused as to the source of the goods and services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
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.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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 nonfinal Office action.
Samantha Moskowitz
/Samantha J. Moskowitz/
Trademark Examining Attorney
Law Office 127
samantha.moskowitz@uspto.gov
571-272-3183
RESPONSE GUIDANCE