To: | FloDesign Sonics, Inc. (bj.kennedy@fdsonics.com) |
Subject: | U.S. Trademark Application Serial No. 88576830 - ACOUSTIC CELL PROCESSING - FDS-209US01 |
Sent: | November 27, 2019 08:34:52 PM |
Sent As: | ecom128@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88576830
Mark: ACOUSTIC CELL PROCESSING
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Correspondence Address:
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Applicant: FloDesign Sonics, Inc.
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Reference/Docket No. FDS-209US01
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: November 27, 2019
Introduction
Section 2(d) Likelihood of Confusion – Refusal
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). 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. 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.
The applied-for mark is “ACOUSTIC CELL PROCESSING” (in standard character form) for “Acoustic separation systems, namely, acoustic separation units for biological material separation, isolation, and purification; acoustic binding systems, namely, acoustic binding units for biological material separation, isolation and purification; scientific apparatus and instruments, namely, apparatus and columns for biological material separation, isolation, and purification, biological material enrichment and depletion, glassware, pumps, valves, beads for use in columns; compounds for use in acoustic separation and binding systems, namely, reagents and affinity compounds for beads; all of the aforesaid goods, for the separation of biological material; instruments and apparatus for biotechnological and scientific purposes, namely, chromatography columns for use in separation, isolation, purification, and analysis in the laboratory; scientific, electric and electronic apparatus and instruments, namely, controllers and software for acoustic separation and binding systems.”
The registered mark is “ACOUSTIX” (in standard character form) for “Scientific and laboratory equipment, namely, test tubes and containers for holding chemical and biological compounds and specimens; laboratory equipment, namely, test tubes, containers and container caps, test tube racks, and container racks for use in connection with laboratory storage and dispensing of chemical and biological compounds and specimens.”
Comparison of Marks
In a likelihood of confusion comparison, 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).
In the present case, applicant’s mark “ACOUSTIC CELL PROCESSING” and registrant’s mark “ACOUSTIX” are highly similar.
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).
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Here, both marks begin with the word “ACOUSTIC” or a novel spelling of the word in plural form, “ACOUSTIX.” A novel spelling or an intentional misspelling that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term. See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 526 & n.9, 205 USPQ 505, 507 & n.9 (C.C.P.A. 1980) (holding “QUIK-PRINT,” phonetic spelling of “quick-print,” merely descriptive of printing and photocopying services); In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017) (holding “SHARPIN”, phonetic spelling of “sharpen,” merely descriptive of cutlery knife blocks with built-in sharpeners); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (holding “URBANHOUZING,” phonetic spelling of “urban” and “housing,” merely descriptive of real estate services); TMEP §1209.03(j).
Here, applicant’s additional words “CELL PROCESSING” is descriptive of applicant’s goods. The attached evidence from Collins Dictionary and Wikipedia® shows that “biological material,” as used in the identification of goods is also called “cellular components,” and “cellular components” are “materials and substances of which CELLS are composed.” The attached evidence from Collins Dictionary also shows that “PROCESSING” means “the act or process of treating or preparing something by a special method.” Thus, as applicant’s goods are for separating, isolating and purifying, or processing, biological material, or components of CELLS, these words are merely descriptive of applicant’s goods. Thus, these words are less significant in terms of affecting the mark’s commercial impression and renders the wording “ACOUSTIC” the more dominant feature of applicant’s mark.
Therefore, for the reasons stated above, applicant’s “ACOUSTIC CELL PROCESSING” and registrant’s “ACOUSTIX” are confusingly similar.
Relatedness of Goods
In this case, the registration uses broad wording to describe “Scientific and laboratory equipment, namely, test tubes and containers” “for holding chemical and biological compounds and specimens” and “for use in connection with laboratory storage and dispensing of chemical and biological compounds and specimens” which presumably encompasses all goods of the type described, including application’s more narrow “Acoustic separation systems, namely, acoustic separation units for biological material separation, isolation, and purification.” 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.
Because the marks are confusingly similar and because the marks refer to closely related, if not the same, laboratory goods, consumers would be likely to mistakenly believe that the goods emanate from a single source. Accordingly, registration is refused under Trademark Section 2(d).
Applicant should note the following additional ground for refusal.
Section 2(e)(1) Merely Descriptive – Refusal
Registration is refused because the applied-for mark merely describes a feature, characteristic, purpose or function of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq. A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b).
Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods, the combination results in a composite mark that is itself descriptive and not registrable. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, applicant has applied to register the wording “ACOUSTIC CELL PROCESSING” as trademark for “Acoustic separation systems, namely, acoustic separation units for biological material separation, isolation, and purification; acoustic binding systems, namely, acoustic binding units for biological material separation, isolation and purification; scientific apparatus and instruments, namely, apparatus and columns for biological material separation, isolation, and purification, biological material enrichment and depletion, glassware, pumps, valves, beads for use in columns; compounds for use in acoustic separation and binding systems, namely, reagents and affinity compounds for beads; all of the aforesaid goods, for the separation of biological material; instruments and apparatus for biotechnological and scientific purposes, namely, chromatography columns for use in separation, isolation, purification, and analysis in the laboratory; scientific, electric and electronic apparatus and instruments, namely, controllers and software for acoustic separation and binding systems.”
The wording “ACOUSTIC” is descriptive of applicant’s goods as applicant uses this wording descriptively in its identification of goods, “Acoustic separation systems, namely, acoustic separation units for biological material separation, isolation, and purification; acoustic binding systems, namely, acoustic binding units for biological material separation, isolation and purification,” for example.
The wording “CELL” is descriptive of applicant’s goods. The attached evidence from Collins Dictionary and Wikipedia® shows that “biological material,” as used in the identification of goods, is also called “cellular components,” and “cellular components” are “materials and substances of which CELLS are composed.” Thus, as applicant’s goods are for separating, isolating and purifying biological material, or components of CELLS, this wording is descriptive of applicant’s goods.
The wording “PROCESSING” is descriptive of applicant’s goods. The attached evidence from Collins Dictionary defines “PROCESSING” as “the act or process of treating or preparing something by a special method” and “the activity of performing mathematical and logical operations on data according to programmed instructions in order to obtain the required information.” Thus, as applicant’s goods treat or prepare cells in a process by separating, isolating and purifying biological material, the wording “PROCESSING” is descriptive of applicant’s goods.
For the reasons explained above, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. The composite term “ACOUSTIC CELL PROCESSING” immediately conveys to consumers a feature or characteristic of applicant’s goods, namely, that applicant’s goods treat, or prepare by a special method, acoustic biological material, or “ACOUSTIC CELL PROCESSING.”
Accordingly, the proposed mark “ACOUSTIC CELL PROCESSING” is merely descriptive, and registration is properly refused on the Principal Register under Section 2(e)(1).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Identification of Goods – Amendment Required
Applicant has applied for the following identification of goods:
Class 9: Acoustic separation systems, namely, acoustic separation units for biological material separation, isolation, and purification; acoustic binding systems, namely, acoustic binding units for biological material separation, isolation and purification; scientific apparatus and instruments, namely, apparatus and columns for biological material separation, isolation, and purification, biological material enrichment and depletion, glassware, pumps, valves, beads for use in columns; compounds for use in acoustic separation and binding systems, namely, reagents and affinity compounds for beads; all of the aforesaid goods, for the separation of biological material; instruments and apparatus for biotechnological and scientific purposes, namely, chromatography columns for use in separation, isolation, purification, and analysis in the laboratory; scientific, electric and electronic apparatus and instruments, namely, controllers and software for acoustic separation and binding systems
The identification of goods is indefinite and must be clarified according to the explanations and suggestions below. See TMEP §§ 1402.01.
Applicant may adopt the following as its identification of goods, if accurate, providing additional specificity where indicated:
Class 9: Acoustic separation systems, namely, acoustic separation units for biological material separation, isolation, and purification; acoustic binding systems, namely, acoustic binding units for biological material separation, isolation and purification; scientific apparatus and instruments, namely, apparatus and columns for biological material separation, isolation, and purification, biological material enrichment and depletion, glassware, pumps, valves, beads for use in columns; compounds for use in acoustic separation and binding systems, namely, reagents and affinity compounds for beads; all of the aforesaid goods, for the separation of biological material; instruments and apparatus for biotechnological and scientific purposes, namely, chromatography columns for use in separation, isolation, purification, and analysis in the laboratory; scientific, electric and electronic apparatus and instruments, namely, controllers and {applicant must specify, e.g., downloadable, recorded, downloadable and recorded, otherwise delete} software for acoustic separation and binding systems
See TMEP §§1402.01, 1402.03.
An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
For assistance with identifying and classifying goods, please see the USPTO’s U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
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.
How to respond. Click to file a response to this nonfinal Office action
/Olivia S. Lee/
Olivia S. Lee
Trademark Examining Attorney
Law Office 128
olivia.lee@uspto.gov
(571) 272-6848
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