87725909 (T.T.A.B. May. 12, 2021)

LumaCyte, LLC

Trademark Trial and Appeal BoardMay 12, 2021

87725909 (T.T.A.B. May. 12, 2021)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 12, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re LumaCyte, LLC _____ Serial Nos. 87725909 and 87725919 _____ Thomas Dunlap of Dunlap Bennett & Ludwig PLLC, for LumaCyte, LLC. Brendan McCauley, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Wellington, Greenbaum and Lebow, Administrative Trademark Judges. Opinion by Lebow, Administrative Trademark Judge: Applicant, LumaCyte, LLC, seeks registration of the proposed standard character marks LASER FORCE CYTOLOGY (CYTOLOGY disclaimed) and LUMACYTE on the Principal Register for “Providing scientific research and consultation services using microfluidics to characterize, sort and analyze microscopic fluids, bodies and microorganisms,” as amended, in International Class 42.1 Applicant has appealed the 1 Application Serial Nos. 87725909 (LASER FORCE CYTOLOGY) and 87725919 (LUMACYTE) were filed on December 19, 2017 based on Applicant’s allegation of a bona fide intention to use the marks in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Both applications originally identified goods in International Class 9. The Class 9 Serial No. 87725909 and 87725919 - 2 - Trademark Examining Attorney’s final refusal to register these marks under Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051 and 1127, on the ground that Applicant's specimens submitted with its statement of use fail to show the marks in use in commerce in connection with the identified services. Following its appeals, Applicant filed a motion to consolidate the appeals in these applications, which was granted in light of the similarity of the records and issues in these cases. We thus decide both appeals in a single opinion. The appeal is fully briefed. We affirm the refusals to register in both applications. I. Applicable Law Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a service mark is used in commerce “when it is used or displayed in the sale or advertising of services.” “To determine whether a mark is used in connection with the services described in the [application], a key consideration is the perception of the user.” In re JobDiva, Inc., 843 F.3d 936, 121 USPQ2d 1122, 1126 (Fed. Cir. 2016) (citation omitted). The question in this appeal is whether the evidence of Applicant’s use of its marks LASER FORCE CYTOLOGY and LUMACYTE creates an association between those marks and Applicant’s identified research and consultation services. Id. goods were deleted from the LASER FORCE CYTOLOGY application when Applicant filed its Statement of Use, but retained in the LUMACYTE application. Subsequent to its filing of its Statement of Use in the LUMACYE application, Applicant filed a Request to Divide, which was granted. The Class 9 goods are now covered by a child application (Serial No. 87982906), which is not at issue in this appeal. Page references to the application record are to the downloadable .pdf version of the USPTO's Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board's TTABVUE docket system. Serial No. 87725909 and 87725919 - 3 - An acceptable specimen of use must show “some direct association between the offer of services and the mark sought to be registered therefor.” In re Universal Oil Prods. Co., 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). While it need not explicitly refer to those services in order to establish the requisite direct association between the mark and the services, ‘there must be something which creates in the mind of the purchaser an association between the mark and the service activity.’” In re Way Media, 118 USPQ2d 1697, 1698 (TTAB 2016) (quoting In re Johnson Controls, Inc., 33 USPQ2d 1318, 1320 (TTAB 1994). See also JobDiva, 121 USPQ at 1126. Additionally, if a “specimen shows use of the mark in connection with goods rather than the identified services, the specimen must be refused for failure to show service- mark use in commerce in connection with the identified services.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1301.04(g)(i) (Oct. 2018). An applicant may explain the nature of the mark's use or the way the services are advertised or rendered. See In re Metriplex, Inc., 23 USPQ2d at 1316 (finding the submitted specimens acceptable based, in part, on applicant’s explanation that the specimens showed the mark as it appeared on a computer terminal in the course of rendering the services). TMEP § 1301.04(f)(ii) (Oct. 2018) notes that “[d]irect association may be indicated by the context or environment in which the services are rendered, or may be inferred based on the consumer ’s general knowledge of how certain services are provided or from the consumer ’s prior experience in receiving the services” (citing In re Metriplex, Inc., 23 USPQ2d at 1316; In re WAY Media, Inc., 118 USPQ2d at 1698)). TMEP § 1301.04(f)(ii) mentions that “it may ... be helpful for the Serial No. 87725909 and 87725919 - 4 - applicant to provide an explanation regarding industry practice concerning the use of the mark during the rendering of such services and how the applicant’s use comports with such practice.” II. Evidence and Analysis Some of Applicant’s specimens are overlapping with respect to the marks LASER FORCE CYTOLOGY and LUMACYTE. We will therefore review each specimen by type, analyzing how each of the proposed marks are used therein. A. Website Specimens 1. LASER FORCE CYTOLOGY Applicant contends that the “Lumacyte ‘Technology’ webpage” on its website “clearly references and discusses Applicant’s Cytometer Instruments, namely its Radiance brand device, which is an instrument for Laser Force Cytology.”2 Excerpts from this webpage are shown below:3 2 9 TTABVUE 16 (Applicant’s Brief). 3 July 8, 2019 Specimens of Use, TSDR 1. Serial No. 87725909 and 87725919 - 5 - The first sentence in the first excerpt of this specimen explains that Applicant’s core product “is Radiance, a Laser Force Cytology (LFC)™ instrument.” The paragraph goes on to explain how Applicant’s Radiance “device” can be used in various research applications. Notably absent from the explanation about the Radiance device is the offering of any scientific research or consultation services, or any services for that matter, under the mark LASER FORCE TECHNLOGY. Instead, the implication is that one may purchase Applicant’s Radiance device, also known as Serial No. 87725909 and 87725919 - 6 - “a Laser Force Cytology (LFC)™ instrument,” to perform one’s own research. See In re Universal Oil Prods. Co., 177 USPQ at 457 (“The requirement that a mark must be ‘used in the sale or advertising of services ’ to be registered as a service mark is clear and specific.”). The second excerpt also fails to show the mark LASER FORCE TECHNLOGY used in the sale or advertising of scientific research or consultation services. It simply shows that the underlying technology of Applicant’s Radiance device is what Applicant refers to as “Laser Force Cytology,” a purported “novel approach to single cell analysis.” Accordingly, purchasers or prospective purchasers of Applicant’s Radiance device will simply view LASER FORCE TECHNOLOGY as the process or technology supporting that device, and not as a source-indicator for scientific or consultation services, which are not even alluded to by the specimen. See In re Universal Oil Prods. Co., 177 USPQ at 457 (The requirement showing use in the sale of advertising of services “is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor.”); In re Osmotica Holdings Corp., 95 USPQ2d at 1669 (finding that, although the submitted specimens referenced the identified consulting services, the applied-for mark, as used on the specimens, would be perceived by the relevant public Serial No. 87725909 and 87725919 - 7 - as identifying only applicant’s drug technology and thus the specimens failed to establish the required association between the mark and the identified services) . The last relevant excerpt from this webpage specimen invites prospective purchasers “[t]o speak with one of our laser force cytology experts about product information and product support.” Here again, there is no offer to sell or provide scientific research or consultation services. However, one may contact one of Applicant’s experts, versed in the underlying technology of “laser force technology” to find out more about Applicant’s products, or to obtain product support for Applicant’s products that use that technology. According to Applicant: Just because the applicant’s scientific research and consultation services happen to revolve around a particular new research technology that has created a new research tool vastly improving cell research procedures does not mean that applicant is not providing a scientific research service in the field of cytology. In fact, the applicant’s whole business, from the development of the technology through to the commercialization of this technology into a product that studies cells is all scientific research and scientific knowledge that the applicant is offering to the science community who are its consumers. That this knowledge is advancing how cells are studied rather than what is learned about the studied cells should not be determinative of whether or not this is scientific research. Applicant’s argument is unpersuasive because the web page does not advertise scientific research or consultation services. Applicant merely uses the term LASER FORCE TECHNOLOGY to reference the underlying technology of its Radiance device; there are no services that “happen to revolved around a particular new technology,” as Applicant contends. Applicant’s further contention that its “whole business, from the development of the technology through to the commercialization Serial No. 87725909 and 87725919 - 8 - of this technology into a product that studies cells is all scientific research and scientific knowledge that the applicant is offering to the science community who are its consumers” (emphasis added) is equally unmoving. By Applicant’s logic, all companies that sell goods also provide research services in the nature of the goods provided, which is absurd. All companies that manufacture scientific instruments either develop or utilize technologies that they incorporate into their products. The fact that consumers of Applicant’s products can use them to conduct their own research and consultation does not mean that Applicant is a provider of such services. 2. LUMACYTE For this mark, Applicant purportedly provided “a printout of its entire website from the home page,”4 but it appears that only four of at least nine pages from the website were actually provided: Home Page; Resources Page; TheCyte Page; and Contact Us Page.5 a. Home Page A first excerpt from Applicant’s home page is shown below:6 … … 4 9 TTABVUE 14 (Applicant’s Brief). 5 Specimens of use, TSDR 3-6. 6 Id. at 3. Serial No. 87725909 and 87725919 - 9 - … … … Serial No. 87725909 and 87725919 - 10 - The first excerpt shown is from the top of Applicant’s home page, which summarizes the different pages that can be accessed on Applicant’s website. Notably, there is no link to a page for any services provided by Applicant to others.7 Below the second excerpt, which shows the mark LUMACYTE and its accompanying tagline, “lighting the way to cell discovery,” is the third excerpt shown above, which explains that “[t]he discovery of new knowledge will come from an unbiased tool, one that is based on the intrinsic properties of the cells of interest” (emphasis added). Thus, according to Applicant, it is important to have the right tool (e.g., device) to discover new knowledge when doing cellular research. The fourth excerpt explains that “Lumacyte™ [Applicant] produces instruments that enable cell biologists, biomedical researchers, pharmaceutical and biotechnology companies to characterize, select, and sort mammalian cell samples without the use of antibody labels.” The same page, in the fourth excerpt, then goes on to identify Applicant’s Radiance device which, in the aforementioned manner, provides “label - free single cell analysis,” explaining what that means and why instruments that enable that type of analysis are advantageous. The last excerpt from the webpage lists five categories—Vaccines, Biomanufacturing, Rapid Viral Titers, Cell Therapy, and Cancer—without further explanation. Underneath, visitors are encouraged to visit Applicant’s blog (TheCyte) 7 Instead, there is the Home page providing general information about Applicant (discussed here); a “Products” page (not provided); an “Applications” page (not provided); a “Resource” page (discussed infra); a “Support” page (not provided); a blog page (“TheCyte”) (discussed infra); an “About Us” page (not provided); and a “Contact Us” page (discussed infra). Serial No. 87725909 and 87725919 - 11 - for news, information, article reviews, and tech notes. Applicant does not present any specific argument as to why the home page of its website shows use of the mark LUMACYTE in connection with scientific research or consultation services. Indeed, we find nothing on this webpage that could be construed as offering to provide scientific research or consultation services. At most, LUMACYTE is used on that page as a mark to identify the instruments Applicant produces to enable various other professionals (biologists, researchers, biotechnology companies and the like) to do their own research. b. Resource Page The resource page of Applicant’s website lists and provides links to various scientific articles and papers in the field of cell research, including one titled “Rapid Quantification of Vesicular Stomatitis Virus in Vero cells using Laser Force Cytology.” To provide context for this webpage specimen, Applicant refers to an article titled “How to Conduct Scientific Research” from the National Center for Biotechnology Information, a division of the United Nations Educational, Scientific and Cultural Organization (UNESCO), which defines “scientific research” as “systematic and creative actions taken to increase knowledge about humans, culture, and society and to apply it in new areas of interest.”8 According to Applicant, this webpage “essentially is a bibliography citing Applicant’s sources for its research into its cytometer technology,” and that [T]he point of this specimen … is that it consists of citations to research performed not by the applicant but by third parties 8 August 14, 2020 Request for Reconsideration, TSDR 27-29. Serial No. 87725909 and 87725919 - 12 - who established a foundation for the technology being offered by the applicant. As such, these sources of research are nothing less than sources of third-party research relevant to the technology that the applicant is offering to the scientific community as a useful starting point to build upon the Applicant’s Research Services. This is precisely the multiple-step process that is referenced in the aforecited UNESCO article as a defining point of scientific research and therefore clearly a reference to the Applicant’s scientific research services.9 Applicant’s argument is unconvincing. The fact that scientific research may be a multiple-step process hardly relieves Applicant from producing a specimen of use that shows the sale or advertising of scientific research and consultation services under the mark LUMACYTE, which this web page does not show. Rather, as Applicant is forced to admit, the page simply provides links to articles regarding past research that third-parties have conducted, not Applicant. And one of the third-party articles, as mentioned above, refers to Laser Force Cytology as a technology, not a service. While they may be “nothing less than sources of third-party research relevant to the technology that the applicant is offering,” as Applicant notes, they also constitute nothing more. c. Applicant’s “TheCyte” Blog Applicant’s blog page on its website has various blog postings including the couple shown below under the main heading of the page:10 9 9 TTABVUE 15 (Applicant’s Brief). 10 June 17, 2019 Specimens of Use, TSDR 5. Serial No. 87725909 and 87725919 - 13 - As seen, LUMACYTE appears at the top of the page, followed by the name of the blog, and an explanation of the purpose of the blog: “LumaCyte’s [Applicant’s] blog site for news, information, article reviews, and tech notes related to single cell analysis.” According to Applicant, “the blog contains content discussing the research surrounding the LASER FORCE CYTOLOGY technology and Lumacyte’s scientific research services.” We disagree. The blog makes no reference to, or even mentions, scientific research or consultation. It is simply a blog about Applicant’s RADIANCE device and/or the research that went into its development, Serial No. 87725909 and 87725919 - 14 - which is a far cry from the sale or advertisement of scientific research and consultation services. d. Applicant’s “Contact Us” Page Show below are excerpts from Applicant’s Contact Us page:11 … … With respect to this specimen page, Applicant argues that While applicant’s customers are highly sophisticated and intelligent microbiological scientists, their knowledge of the relevant science is not necessarily knowledge of the latest and best research tools and methodologies for studying microorganisms. These scientists could want to consult “about LumaCyte’s transformative Laser Force Cytology instrument” in order to learn how best to structure their research given the particular systems and operations of the applicant’s new research tool. Therefore, at the very least, this web page specimen could show a sufficient nexus to the “scientific consultation” services identified in the application. 11 Id. at 6. Serial No. 87725909 and 87725919 - 15 - Moreover … the page shows the mark in the rendering of the services because customers see this mark while they complete a form or use the contact info to request applicant’s consultation services. A statement on that page reads, “Do you have product technical questions? Would you like to learn more about LumaCytes transformative laser force cytology instrument? Just fill out the form below and one of our laser force cytology experts will get back to you.”12 Applicant’s argument is far-fetched. The fact that Applicant’s microbiologist customers “could” want to contact Applicant to learn how to structure research is fanciful speculation at best, and the potential needs of a consumer hardly translates to an offer by Applicant to provide scientific research and consultation services. There is nothing in Applicant’s website pages of record that even hints at the provision of scientific research and consultation services, much less offering to provide them under the proposed marks. Consumers are invited to ask “technical” questions, not scientific questions, and can choose to learn more about Applicant’s product from Applicant’s employees, who are versed in laser force cytology technology. There is no offering of scientific research or consultation. B. Marketing Presentation Slides Applicant also submitted a 17-page slide presentation entitled ‘Laser Force Cytology’ as a specimen for both marks.13 The following excerpts are representative: 12 9 TTABVUE 16 (Applicant’s Brief) (emphasis added). 13 15 TTABVUE 10-16 (Applicant’s Request for Remand). The slide presentation was provided by Applicant with its Statement of Use in the LUMACYTE application. It was also provided during prosecution of the LUMACYTE application, but not as a verified specimen with the Statement of Use. Following briefing, Applicant filed a request for remand of the LUMACYTE application to provide it as verified specimen, 15 TTABVUE, which was granted, 16 TTABVUE. The slide presentation specimen was rejected as a suitable specimen by the Examining Attorney in his Reconsideration Letter. 17 TTABVUE. We therefore also consider this specimen in the LUMACYTE application. Serial No. 87725909 and 87725919 - 16 - Page 1 Page 2 Serial No. 87725909 and 87725919 - 17 - Page 3 Page 4 Serial No. 87725909 and 87725919 - 18 - Page 5 Page 7 Serial No. 87725909 and 87725919 - 19 - Applicant argues that “the first or title page slide” of the presentation “prominently displays the LASER FORCE CYTOLOGY mark. All of the subsequent slides support and elaborate on the first few slides and, in particular, explain what is LASER FORCE CYTOLOGY. As such, the entire slide deck is a specimen that both prominently displays the mark and references and describes the services.”14 We disagree. Each of the 17 slides provided in the presentation fails to show use of either proposed mark in connection with scientific research and consultation services. As with Applicant’s other specimens, Applicant uses the term LUMACYTE, at most, to identify its company and a scientific research device or instrument (Radiance), and the term LASER FORCE CYTOLOGY (“The Technology Powering Radiance”) as the technology powering that device or instrument that may be used in vaccine research and development, biomanufacturing, heat immune response studies, oncology and immunotherapy, and drug studies. There is no offering of scientific research or consultation services to others that could reasonably be inferred from this presentation. In an attempt to downplay the significance of its reference to LASER FORCE CYTOLOGY as a “technology” in the specimen, Applicant argues that it is: using these slides to both teach the technology and teach new cytology research procedures, both a function of the Applicant’s scientific research services. The prominent display of the mark could be both advertising the services (displaying the mark and explaining about the research services) and also displaying the mark during the rendering of the research services, namely presenting on the new technology. Since the slides clearly display the LUMACYTE house mark on each slide, Applicant respectfully submits that these slides equally 14 9 TTABVUE 17 (Applicant’s Brief). Serial No. 87725909 and 87725919 - 20 - support the use of the LUMACYTE mark on the scientific research services and requests that the presentation also be considered as a specimen in the LUMACYTE application.15 This is yet another implausible argument in a line of implausible arguments already presented by Applicant. Simply put, there are no scientific research or consultation services promoted in this specimen, under the proposed marks or otherwise. C. Product Specification Sheets The final specimen provided by Applicant in support of the LASER FORCE CYTOLOGY application comprises what Applicant refers to in its brief as “product specification sheets.”16 An excerpt of which is depicted below:17 Page 1 15 Id. at 17-18. 16 Id. at 18. 17 July 8, Specimens of Use, TSDR 19-20. Serial No. 87725909 and 87725919 - 21 - Page 2 As the Examining Attorney notes, this specimen “includes a picture and information related to applicant’s Radiance LumaCyte machine with the applied-for mark at the top of the first sheet” and “indicates that the machine enables detection of novel cell phenotypes and reduces total analysis time and cost. While this machine may be used for the purpose of scientific and research consultation, this specimen fails to show use of the mark in connection with applicant’s actual scientific research and consultation services for others.”18 We agree. The specimen merely promotes Applicant’s Radiance-branded product. 18 11 TTABVUE 12 (Examining Attorney’s Brief). Serial No. 87725909 and 87725919 - 22 - Applicant contends, however, that “the reference to an instrument does not preclude or foreclose the notion that research services are being offered by the applicant.”19 Referring to the multi-step process involved in scientific research according to the record definition from UNESCO, Applicant asserts that “[t]he invention, promotion, provision and teaching of the Cytometer Instrument is a ‘systematic and creative action taken to increase knowledge, ’ namely microorganism functioning, and derives from previously discovered facts that advanced knowledge.”20 We agree with Applicant that the specimen’s failure to depict the mark in connection with scientific research or consultation services “does not preclude or foreclose the notion” that Applicant is providing such services. To the extent that Applicant does provide them, they are not shown here. D. Third-Party Registrations Finally, Applicant provided USPTO database printouts from the file histories of seven third-party registrations for different marks that also identify scientific research and consultation services21 “[a]s additional support that Applicant’s specimens of record sufficiently evidence use of its mark on scientific research and consultation services” and “illustrate common industry practices for how marks are used in the field of scientific research.”22 Apart from the fact that the specimens of 19 9 TTABVUE 18 (Applicant’s Brief). 20 Id. 21 Id. 22 Id. at 12. Serial No. 87725909 and 87725919 - 23 - use at issue in those cases are different from those provided by Applicant in this case and thus do not establish any industry standard for the provision of specimens in such cases, it is well-settled that “the prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Board. See In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. III. Conclusion For the reasons discussed, Applicant’s specimens of use fail to show use of the designations LASER FORCE CYTOLOGY and LUMACYTE as service marks for scientific research and consultation services. Decision: The refusals to register are affirmed.