United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90243059
Mark: RENEGADE THERAPEUTICS
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Correspondence Address: |
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Applicant: Heat Biologics, Inc.
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Reference/Docket No. 114358-0002
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: March 17, 2021
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
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
Applicant’s mark is the standard character mark RENEGADE THERAPEUTICS. Registrant’s marks are RENEGADE HEALTH (U.S. Reg. No. 5021191) and RENEGADE MEDICINALS (U.S. Reg. No. 5287467).
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, applicant’s mark is highly similar to registrant’s mark in appearance, sound, and commercial impression.
All marks share the same initial term—RENEGADE. The fact that the first term of the marks is the identical term is significant. 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, the additional terms in the marks are merely descriptive of the goods and services. 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, including disclaimed wording, 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 terms HEALTH in U.S. Reg. No. 5021191 and MEDICINALS in U.S. Reg. No. 5287467. As explained further in the disclaimer section below, the attached evidence shows that the wording THERAEPEUTICS in the applied-for mark is merely descriptive of or generic for applicant’s goods and services. See http://www.merriam-webster.com/dictionary/therapeutics (defining THERAPEUTICS as “a branch of medical science dealing with the application of remedies to diseases”). Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording RENEGADE the more dominant element of the marks.
Because the marks are identical in part, and the identical part of the marks is the dominant portion that creates a similar commercial impression in the marks, purchasers are likely to believe the goods and services emanate from the same source. Therefore, the marks are confusingly similar.
Comparison of the Goods and Services
Applicant’s goods and services are “Pharmaceutical products for the treatment or prevention of cancer and immune-related diseases” in Class 5 and “Research and development of pharmaceutical products” in Class 42.
Registrant’s services in U.S. Registration No. 5021191 are, in relevant part, “Providing a website featuring information about health, wellness and nutrition” in Class 44.
Registrant’s goods in U.S. Registration No. 5287467 are “Medicinal dietary and nutritional supplements” in Class 5.
See:
· Pfizer - http://www.pfizer.com/science/immunology-inflammation/research and http://www.pfizer.com/science/oncology-cancer/research (research and development of pharmaceutical products), http://www.pfizeroncologytogether.com/patient/medicines# (pharmaceuticals for treating cancer), http://www.pfizer.com/science/inflammation-immunology/pipeline (pharmaceuticals for treating immune-related diseases) http://www.pfizer.com/health-wellness/healthy-living (website featuring information about health, wellness, and nutrition), http://www.pfizer.com/products/product-detail/caltrate and http://www.caltrate.com/ (dietary supplements)
· Johnson & Johnson - http://www.jnj.com/healthcare-products/prescription (pharmaceutical research and development), http://www.janssencarepath.com/hcp/therapy-area/oncology (pharmaceutical products for treating cancer), http://www.janssencarepath.com/hcp/therapy-area/rheumatology#ta (pharmaceutical products for immune-related diseases), http://www.jnj.com/health-and-wellness (website featuring health and wellness information), http://www.nutraingredients-usa.com/Article/2018/07/30/Johnson-Johnson-acquires-Zarbee-s-Naturals (showing that Johnson & Johnson owns Zarbee’s Naturals supplements), and http://www.zarbees.com/products/vitamins-nutrients (dietary supplements)
· Glaxo-Smith Kline - http://www.gsk.com/en-gb/research-and-development/ (pharmaceutical research and development), http://www.gsk.com/en-gb/responsibility/our-people/health-and-wellbeing/ (website featuring health and well-being information), http://www.gsk.com/en-gb/products/our-consumer-healthcare-products/vitamins-minerals-and-supplements/centrum/ (showing that GSK makes the vitamin supplement Centrum), http://gskpro.com/en-us/products/#filter-type=productType&filter-value=Oncology (pharmaceuticals for treating cancer), http://gskpro.com/en-us/products/#filter-type=productType&filter-value=Immunology (pharmaceuticals for treating immune diseases)
The evidence shows that purchasers are accustomed to encountering the goods and services of the applicant and registrant offered under the same mark. Purchasers are likely to believe the goods and services emanate from the same source. Thus, applicant’s and registrant’s goods and services are 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 highly similar and the goods and services are closely related, there is a likelihood of purchaser confusion as to the source of the goods and services Therefore, registration is refused under Section 2(d) of the Trademark Act. 15 U.S.C. § 1052(d).
DISCLAIMER REQUIREMENT
The attached evidence from the American Heritage Dictionary shows this wording means “a branch of medical science dealing with the application of remedies to diseases.” See http://www.merriam-webster.com/dictionary/therapeutics. Applicant’s goods are pharmaceutical products for the treatment of cancer and immune-related diseases and research and development of pharmaceutical product. Thus, the wording merely describes applicant’s goods and services because it is the common commercial name of the branch of the medical science industry in which applicant operates, namely, researching, developing, and manufacturing products for treating and remedying certain diseases.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “THERAPEUTICS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response guidelines. 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.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Marynelle W. Wilson/
Marynelle W. Wilson
Examining Attorney
Law Office 113
Phone: 571-272-7978
Email: marynelle.wilson@uspto.gov
RESPONSE GUIDANCE