United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88492519
Mark: RESOLUTION BIOSCIENCE
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Correspondence Address: |
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Applicant: RESOLUTION BIOSCIENCE, INC.
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Reference/Docket No. 790146.201
Correspondence Email Address: |
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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: September 19, 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.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
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).
Here, applicant seeks to register the mark “RESOLUTION BIOSCIENCE” in standard characters.
Registration No. 4524859 is “RESOLUTION” in standard characters.
Registration No. 3968606 is “RESOLUTION” in standard characters.
Further, 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). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, the attached evidence shows that the word “BIOSCIENCE” in the applied-for mark is merely descriptive of or generic for applicant’s goods and/or services. The word “BIOSCIENCE” refers to an area of scientific study that relates to living things, for example, biology or biochemistry. Applicant’s goods and services are used for the purpose of researching, developing, testing, detecting and/or diagnosing in the field of biology, biotechnology and biochemistry. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording RESOLUTION the more dominant element of the mark.
For the foregoing reasons, the marks are confusingly similar.
Comparison of the Goods
Applicant seeks to register its mark for use on or in connection with
“Assays; medical diagnostic reagents and assays for testing tissue and body fluids” in Class 5.
“Laboratory devices for detecting genetic sequences; next generation sequencing (NGS) devices, equipment, instruments and other technologies” in Class 9.
“Medical devices and equipment for diagnostic use; diagnostic apparatus for the detection of cancer” in Class 10.
“Research and development in the field of biotechnology; custom design and development of chemical reagents and biochemical assays; research and development in the field of Next Generation Sequencing Technologies; software as a service (SaaS) services featuring software for scientific analysis of genetic sequences” in Class 42.
“Diagnostic services; diagnostic services in the fields of medicine, biotechnology; cancer diagnostics” in Class 44.
Registration No. 4524859 is used on or in connection with “Scientific instruments, namely, genomic analysis bio chips for the detection of pathogens and other microorganisms for non-medical purposes; systems for detecting pathogens and other microorganisms comprising primarily genomic analysis bio chips and including reagents sold as a unit for non-medical purposes; microfluidic devices in the nature of electronic analyzers for the transport and analysis of fluid samples by using microfluidic and nanofluidic channels formed on or in a substrate.”
Registration No. 3968606 is used on or in connection with “Chemical reagents for use in medical and veterinary diagnostics; Anatomic pathology specimen collection and diagnostic kits for use in medical diagnostics comprising chemical reagents for medical purposes, collection materials, namely, vials, centrifuge tubes and bottles, coated microscope slides and pipettes.”
The attached Internet evidence, consisting of screenshots from sciencedirect.com, annualreviews.com, 10xgenomics.com, qiagen.com, illumina.com, and ncbi.nln.nih.gov, establishes that the goods and/or services are similar or complementary in terms of purpose and function. The evidence establishes relatedness of applicant’s “laboratory devices for detecting genetic sequences and next generation sequencing (NGS) devices, equipment, instruments and other technologies, as well as medical devices and equipment for diagnostic use, diagnostic apparatus for the detection of cancer” on the one hand and Registration No. 4524859 identification of “scientific instruments, namely, genomic analysis bio chips for the detection of pathogens and other microorganisms for non-medical purposes; systems for detecting pathogens and other microorganisms comprising primarily genomic analysis bio chips and including reagents sold as a unit for non-medical purposes; microfluidic devices in the nature of electronic analyzers for the transport and analysis of fluid samples by using microfluidic and nanofluidic channels formed on or in a substrate” on the other hand. See also attached registrant’s website connecting applicant’s assays, devices and software to registrant’s goods.
Further, the attached Internet evidence, consisting of screenshots from sworddiagnostics.com, calibrescientific.com, quarkbiosciences.com, nanostring.com, thermofisher.com, criver.com, pathogenetix.com, rndsystems.com, illumina.com, intuitivebio.com, mdbbiosciences.com and zen-bio.com, establishes that the same entity commonly provides the relevant goods and/or services. For example, applicant’s assays, medical diagnostic reagents and assays for testing tissue and body fluids, research and development in the field of biotechnology, custom design and development of chemical reagents and biochemical assays, research and development in the field of Next Generation Sequencing Technologies, software as a service (SaaS) services featuring software for scientific analysis of genetic sequences, and diagnostic services on the one hand and the identification of “chemical reagents for use in medical and veterinary diagnostics, anatomic pathology specimen collection and diagnostic kits for use in medical diagnostics comprising chemical reagents for medical purposes” in Registration No. 3968606, on the other hand.
For the foregoing reasons, applicant’s and registrants’ goods and/or services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
Because the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Accordingly, applicant’s mark is not entitled to registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
IDENTIFICATION AND CLASSIFICATION OF GOODS AND SERVICES
Applicant may substitute the following wording, if accurate (change indicated in bold):
“Medical diagnostic reagents and assays for testing body fluids for microorganisms; medical diagnostic reagents and assays for testing tissue and body fluids” in Class 5.
“Laboratory devices for detecting genetic sequences; next generation sequencing (NGS) {specify device, equipment and/or instruments in Class 9 e.g. devices, namely, data processors for non-medical use}” in Class 9.
“Medical devices and equipment for diagnostic use, namely {specify devices and equipment}; diagnostic apparatus for the detection of cancer” in Class 10.
“Research and development in the field of biotechnology; custom design and development of chemical reagents and biochemical assays; research and development in the field of Next Generation Sequencing Technologies; software as a service (SaaS) services featuring software for scientific analysis of genetic sequences” in Class 42.
“Medical diagnostic testing, monitoring and reporting services; Medical diagnostic testing, monitoring and reporting services in the fields of medicine, biotechnology; Cancer diagnostic testing, monitoring and reporting services” in Class 44.
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.
MULTIPLE-CLASS APPLICATION ADVISORY
(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 6 classes; however, applicant submitted a fee(s) sufficient for only 5 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 provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the word “BIOSCIENCE” because it is not inherently distinctive. As discussed above in the Section 2(d) Refusal, this unregistrable term at best is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). Thus, the wording merely describes applicant’s goods and/or services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BIOSCIENCE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
CONTACT INFORMATION
How to respond. Click to file a response to this nonfinal Office action
/Molly Segal/
Molly Segal
Trademark Examining Attorney
Law Office 105
(571) 272-6490
Molly.Segal@uspto.gov
RESPONSE GUIDANCE