To: | Nanomedical Diagnostics, Inc. (docketing@sheppardmullin.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88312766 - CARDEA BIO - 39PS-294522 |
Sent: | 5/14/2019 6:35:08 PM |
Sent As: | ECOM103@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88312766
MARK: CARDEA BIO
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CORRESPONDENT ADDRESS: SHEPPARD MULLIN RICHTER & HAMPTON LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Nanomedical Diagnostics, 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: 5/14/2019
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.
· Section 2(d) – Likelihood of Confusion Refusal
Section 2(d) – Likelihood of Confusion Refusal
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4505751, 2786724, and 2803213. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods.” 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)); see TMEP §1207.01.
Applicant’s mark is “CARDEA BIO” for “Scientific apparatus; scientific instruments for testing biological samples; biological sample test kits; drug kits; scientific apparatus in the nature of, computer hardware for diagnostic testing of body fluids, bio-samples, liquid samples, organic samples, non-organic samples, small biomolecules, biomolecule fragments, proteins, peptides, or aptamers”, in Class 9; and “Medical diagnostic instruments; medical instruments in the nature of electronic analyzers for the analysis of small biomolecules, biomolecule fragments, proteins, peptides, or aptamers; medical apparatus and instrument for diagnostic use, namely, electronic analyzers for medical diagnostic testing of body fluids, small biomolecules, biomolecule fragments, proteins, peptides, or aptamers”, in Class 10.
Registrant’s mark in U.S. Reg. No. 4505751 is “CARDEA” and design for “Medical devices, instruments, and apparatus, namely, electronic generators, and electrosurgical and electromechanical probes and catheters for the delivery of energy for diagnostic, therapeutic and/or surgical use in the mitigation or treatment of body organs and tissue”.
Registrant’s mark in U.S. Reg. No. 2803213 is “CARDIA” for “medical devices, namely, closures for treatment of defects of the heart and blood vessels, forceps for delivering the closures, and introducers”.
Registrant’s mark in U.S. Reg. No. 2786724 is “BIOCARDIA” for “Medical devices, namely, catheters for performing percutaneous procedures upon the heart; and catheters for performing myocardial revascularization, drug delivery, gene therapy, stent placement, angioplasty, and angiography”.
Comparison 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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Comparison of the Marks – U.S. Reg. No. 4505751
In the present case, applicant’s mark is “CARDEA BIO” and registrant’s mark is “CARDEA” and design.
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., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); 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., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In the case of the registered mark, the dominant portion of the mark is the wording “CARDEA”. Specifically, “CARDEA” appears as the only wording in the mark and is featured prominently in the mark. The design element, on the other hand, consists of a minimally stylized stethoscope, and does not dominate the overall commercial impression of the mark in the same way as the wording “CARDEA”. Therefore, “CARDEA” is more likely to be impressed upon the minds of consumers and used when calling for the goods.
In comparing the applied-for and registered marks, the marks are confusingly similar. Specifically, the entirety of the dominant portion of the registered mark appears as the first wording in the applied-for mark. 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., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); 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., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Moreover, 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 the instant case, the marks are identical in part.
Thus, the marks are similar in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods.
Therefore, the marks are confusingly similar.
Comparison of the Marks – U.S. Reg. No. 2803213
In the present case, applicant’s mark is “CARDEA BIO” and registrant’s mark is “CARDIA”.
In comparing the applied-for and registered marks, the marks are confusingly similar. Specifically, although spelled in a slightly different manner, the wording “CARDEA” and “CARDIA” nonetheless look similar and sound identical. Slight differences in the sound of similar marks 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).
Moreover, 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).
Because the term “BIO” is descriptive and must be disclaimed for the reasons set forth below, consumers are more likely to focus on the wording “CARDEA”; wording that is visually similar and aurally identical to the registered mark “CARDIA”.
Thus, the marks are similar in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods.
Therefore, the marks are confusingly similar.
Comparison of the Marks – U.S. Reg. No. 2786724
In the present case, applicant’s mark is “CARDEA BIO” and registrant’s mark is “BIOCARDIA”.
In comparing the applied-for and registered marks, the marks are confusingly similar. Specifically, confusion is likely between two marks consisting of reverse combinations of similar elements if they convey the same meaning or create substantially similar commercial impressions. TMEP §1207.01(b)(vii); see, e.g., In re Wine Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY OF AMERICA and design for wine club membership services including the supplying of printed materials likely to be confused with AMERICAN WINE SOCIETY 1967 and design for newsletters, bulletins, and journals); In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER for a rust-penetrating spray lubricant likely to be confused with BUST RUST for a penetrating oil).
In the instant case, although spelled in a slightly different manner, the marks nonetheless look similar and present a similar commercial impression. Additionally, the marks sound similar. Slight differences in the sound of similar marks 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).
Thus, the marks are similar in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods.
Therefore, the marks are confusingly similar.
In addition to the similarity of the marks themselves, the goods of the registrant and applicant are also similar.
Comparison of Goods
In the present case, applicant’s goods “Scientific apparatus; scientific instruments for testing biological samples; biological sample test kits; drug kits; scientific apparatus in the nature of, computer hardware for diagnostic testing of body fluids, bio-samples, liquid samples, organic samples, non-organic samples, small biomolecules, biomolecule fragments, proteins, peptides, or aptamers”, in Class 9; and “Medical diagnostic instruments; medical instruments in the nature of electronic analyzers for the analysis of small biomolecules, biomolecule fragments, proteins, peptides, or aptamers; medical apparatus and instrument for diagnostic use, namely, electronic analyzers for medical diagnostic testing of body fluids, small biomolecules, biomolecule fragments, proteins, peptides, or aptamers”, in Class 10.
Registrant’s goods in U.S. Reg. No. 4505751 are “Medical devices, instruments, and apparatus, namely, electronic generators, and electrosurgical and electromechanical probes and catheters for the delivery of energy for diagnostic, therapeutic and/or surgical use in the mitigation or treatment of body organs and tissue”.
Registrant’s goods in U.S. Reg. No. 2803213 are “medical devices, namely, closures for treatment of defects of the heart and blood vessels, forceps for delivering the closures, and introducers”.
Registrant’s goods in U.S. Reg. No. 2786724 are “Medical devices, namely, catheters for performing percutaneous procedures upon the heart; and catheters for performing myocardial revascularization, drug delivery, gene therapy, stent placement, angioplasty, and angiography”.
Thus, the goods are highly related, if not identical, and it is presumed that they move in all normal channels of trade and are available to all potential customers. 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).
In this case, the application uses broad wording to describe scientific apparatus and medical diagnostic instruments, which presumably encompasses all goods of the type described, including registrants’ more narrow medical apparatus. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). 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 goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Accordingly, because the marks are confusingly similar, and because the goods of the applicant and registrant travel in the same channels of trade, the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4505751, 2786724, and 2803213.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Supplemental Search Advisory
Applicant is advised that, due to the indefiniteness of the identification of goods and services, should applicant file a response to the instant Office action a supplemental search of the mark will be conducted to determine whether additional registered marks require citation.
Identification of Goods Indefinite
Class 9
The wording “Scientific apparatus” is unacceptable as indefinite. Applicant must identify the goods using their common commercial name (e.g. Scientific apparatus, namely, ________ {specify apparatus, e.g. scientific instruments in the nature of research laboratory analyzers for testing biological samples, namely, ________ {specify biological samples, e.g. blood, bodily fluids, etc.}).
The wording “scientific instruments for testing biological samples” is unacceptable as indefinite. Applicant must identify the goods using their common commercial name and specify what the biological samples are (e.g. scientific instruments in the nature of research laboratory analyzers for testing biological samples, namely, ________ {specify biological samples, e.g. blood, bodily fluids, etc.}).
The wording “biological sample test kits” is unacceptable as indefinite and misclassified. Applicant must clarify the nature of the goods, specify what is being tested, and classify accordingly (e.g. Diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents for use in disease testing, in Class 5; Diagnostic kits consisting primarily of probes, buffers and reagents for use in microbial testing, in Class 10).
The wording “drug kits” is unacceptable as indefinite and misclassified. Applicant must clarify the nature of the goods, what is being tested, and classify accordingly (e.g. Drug testing kits comprised of medical diagnostic reagents and assays for testing body fluids, Drug testing kits comprised of medical diagnostic reagents and assays that test for the presence of {indicate specific substance, e.g., alcohol, drugs, etc.}, in Class 5).
Class 10
The wording “Medical diagnostic instruments” is unacceptable as indefinite. Applicant must identify the goods using their common commercial name (e.g. Medical diagnostic instruments, namely, medical instruments in the nature of electronic analyzers for the analysis of small biomolecules, biomolecule fragments, proteins, peptides, or aptamers; medical apparatus and instrument for diagnostic use, namely, electronic analyzers for medical diagnostic testing of body fluids, small biomolecules, biomolecule fragments, proteins, peptides, or aptamers).
Suggested Identifications
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.
Applicant may adopt the following identification, if acceptable:
Class 5
Diagnostic kits consisting primarily of monoclonal antibodies, buffers, and reagents for use in disease testing; Drug testing kits comprised of medical diagnostic reagents and assays for testing body fluids, Drug testing kits comprised of medical diagnostic reagents and assays that test for the presence of {indicate specific substance, e.g., alcohol, drugs}
Class 9
Scientific apparatus, namely, scientific instruments in the nature of research laboratory analyzers for testing biological samples, namely, ________ {specify biological samples, e.g. blood, bodily fluids}; scientific apparatus in the nature of computer hardware for diagnostic testing of body fluids, bio-samples, liquid samples, organic samples, non-organic samples, small biomolecules, biomolecule fragments, proteins, peptides, or aptamers
Class 10
Medical diagnostic instruments, namely, medical instruments in the nature of electronic analyzers for the analysis of small biomolecules, biomolecule fragments, proteins, peptides, or aptamers; medical apparatus and instrument for diagnostic use, namely, electronic analyzers for medical diagnostic testing of body fluids, small biomolecules, biomolecule fragments, proteins, peptides, or aptamers; Diagnostic kits consisting primarily of probes, buffers and reagents for use in microbial testing
Multiclass Advisory
The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only two classes. 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 Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Disclaimer Required
Applicant must disclaim the wording “BIO” because it merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods, and thus is an unregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a).
The attached evidence from http://www.ahdictionary.com/word/search.html?q=bio shows this wording is an abbreviation of biology or biological. Therefore, the wording merely describes a feature or purpose of applicant’s goods; namely, scientific and medical apparatus for biological testing.
An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213.
If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).
Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “BIO” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.
Assistance
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.
/Daniel S. Stringer/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 103
571.272.8975
daniel.stringer@uspto.gov
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.