Gene Link, Inc.v.Genelink, Inc.

Trademark Trial and Appeal Board

Mar 30, 2004

No. 92030200 (T.T.A.B. Mar. 30, 2004)

Hearing: Mailed:
December 3, 2003 March 30, 2004
Paper No. 16
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Gene Link, Inc.
v.
Genelink, Inc.
________
Cancellation No. 92030200
against Registration No. 1956014
_______
Douglas W. Wyatt and John J. Caslin, Jr. of Wyatt Gerber &
O’Rourke, L.L.P. for Gene Link, Inc.
John Lezdey and David Lammey of John Lezdey & Associates for
Genelink, Inc.
_______
Before Hohein, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Genelink, Inc. owns a registration on the Principal
Register for the service mark as shown below:
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92030200
- 2 -
registered for “DNA testing and storage of DNA material for
medical diagnostics and identity testing,” in International
Class 42.1
Gene Link, Inc. seeks cancellation of this registration
based upon its allegations of having adopted the trademark
GENE LINK prior to any date on which the respondent made use
of its GENELINK mark, and has used it continuously “for
services and products for DNA synthesis, gene identification
(testing), mutation analysis, gene localization, gene
mapping, gene construction, gene mutagenesis, DNA
sequencing, cloning and all other areas of genetic research
and development including instrumentation, computing and
software.” Petitioner argues that respondent’s mark so
resembles its previously used mark as to be likely, when
used on or in connection with the services of the
registrant, to cause confusion, or to cause mistake, or to
deceive.
Respondent, in its answer, has denied all the salient
allegations of the petition to cancel.
The record includes the pleadings; the file of the
involved registration; and, as petitioner’s case-in-chief:
1 Reg. No. 1956014 issued on February 13, 1996 from an
application filed on December 15, 1994 which sets forth dates of
first use anywhere and in commerce at least as early as November
29, 1994.
Cancellation No. 92030200
- 3 -
the testimony deposition, with exhibits, of Ali A. Javed,
petitioner’s chairman of the board; and a notice of reliance
upon, inter alia, respondent’s annual report filed with the
Securities and Exchange Commission; and as respondent’s case-
in-chief, the trial testimony deposition, with attached
exhibits, of respondent’s chairman of the board, chief
executive officer and president, John R. DePhillipo.
At oral hearing, and in its brief, petitioner
complained about not being served with a copy of the
transcript of Mr. DePhillipo’s testimony. While respondent
clearly should have served petitioner in a timely manner
with a copy of the transcript of this testimony,2 we find
that petitioner has waived its right to so object by not
timely filing a motion for relief under 37 C.F.R. §2.125(a).
As a preliminary matter, respondent argues that “[t]he
Section 8 and 15 affidavit for Respondent’s registration
GENELINK has been accepted by the Patent and Trademark
Office so as to be incontestable.” (Respondent’ brief, p.
2 Trademark Rule 2.125(a) provides in relevant part that:
“One copy of the transcript of testimony … shall be served on
each adverse party within thirty days after completion of the
taking of that testimony. If the transcript with exhibits is
not served on each adverse party within thirty days or within
an extension of time for the purpose, any adverse party which
was not served may have remedy by way of a motion to the …
Board to reset such adverse party’s testimony and/or briefing
periods, as may be appropriate….”
Cancellation No. 92030200
- 4 -
2). However, this appears to be neither a correct statement
of the facts nor an accurate reading of the law.
Whenever a party seeks to cancel a mark registered on
the Principal Register, under Section 14 of the Trademark
Act, 15 U.S.C. §1064, the petitioner must raise priority of
use and likelihood of confusion in a petition filed within
five years of the date of registration. Accordingly,
inasmuch as the five-year anniversary of the issuance of the
involved registration was February 13, 2001, the instant
cancellation petition was timely filed on March 28, 2000.
Finally, any questions related to incontestability have
nothing to do with petitioner’s grounds for cancellation of
the involved registration. Moreover, we note that the
papers that respondent filed on February 20, 2001 contained
a combined Section 8 declaration of continued use in
commerce as well as a Section 9 renewal application – not a
Section 15 affidavit or declaration of incontestability.
The issues to be decided in this proceeding are which
party has priority of use of its mark and, if priority lies
with petitioner, whether there is a likelihood of confusion
from contemporaneous use of the parties’ marks in connection
with their respective goods and/or services.
We find that petitioner has established its priority
but has failed to demonstrate a likelihood of confusion.
Cancellation No. 92030200
- 5 -
Turning first to the determination of priority, the
record shows that petitioner has continuously used its GENE
LINK mark in connection with products used by genetics
researchers and scientists (e.g., custom oligonucleotide
products synthesized for gene identification, DNA sequencing
and analysis, mutation analysis, gene mutagenesis, cloning,
etc.), since January 1994 when it adopted and commenced use
thereof with respect to a shipment of product to the
Winifred Masterson Burke Medical Research Institute in White
Plains, NY. (Javed Trial Deposition at 15 – 17, Exhibit 5)
This followed immediately on the heels of the incorporation
of Gene Link, Inc. in December 1993. (Javed Trial
Deposition at 13 – 14, Exhibit 3) The record shows that
petitioner had sales of more than $141,000 during the year
1994 with a continuous stream of product sales to research
universities, hospitals and pharmaceutical companies.
(Javed Trial Deposition at 17 – 53, 78 - 79) Over the years
since 1994, petitioner has added an ever-growing array of
products, and then in the year 1999, added services by
providing its customers with customized products.
Respondent argues that petitioner’s early use was only
as a trade name, not as a trademark for its goods:
Petitioner’s early use of the term GENE LINK
was as a firm name only and functioned only
to identify the producer of the chemical
Cancellation No. 92030200
- 6 -
compounds. The term was not used for the
purpose of identifying the source of the
goods. Petitioner instead used either
Linkmer, Fragile X Gene Probe, GENEMER and
catalog numbers. The term GENE LINK as used
by Petitioner was to distinguish the
Petitioner from other producers rather than
for the purpose of naming a source of the
good so that it was merely tradename [sic]
use. (See In re Walker Process Equipment
Inc., 233 F.2d 329, 110 USPQ 41 (1956)).
(Respondent’s trial brief at pp. 4 – 5) We disagree with
this contention. Dr. Javed’s testimony and accompanying
product labels show valid trademark usage on each tube of
product sent out from the very beginning of petitioner’s
business. From 1994 through 1999, petitioner sold only
products, all of which contained labels having its GENE LINK
trademark along with its accompanying logo:
Then, beginning in 1999, petitioner began offering custom
DNA sequencing – a service – under its GENE LINK mark.
Petitioner continued to offer both goods and services under
its GENE LINK mark through the time the record closed in
this proceeding, achieving annual gross revenues of $1.7
million by the years 2000 and 2001.
On the other hand, in the fall of 1994, while
respondent possessed proto-type kits for the non-invasive
collection of human DNA, and was engaged in a dialogue with
Cancellation No. 92030200
- 7 -
Mr. William Parisi about becoming a distributor for its
kits, the record fails to document any sales of its kits
during 1994, or of any other incidents of its services of
providing for the collection and storage of DNA materials.
Specifically, Mr. DePhillipo testified to respondent’s
initial sales in September of 1994, as follows:
Q. (Mr. Lezdey): Was there a time when you
made a sale in 1994?
A. (Mr. DePhillipo): Yes, we did. We sold
5,000 kits to a William Parisi.
Q. Can you tell us at the time when the sale
was made?
A. The sale -- well, I have -- the sale was
made in September 20th, 1994.
(DePhillipo Trial Deposition at 7 – 8) However, Mr.
DePhillipo’s letter of September 20, 1994 to Mr. Parisi
contains the following as its penultimate paragraph:
The minimum order we discussed is 5,000 Kits,
at our agreed price to you of $65.00 per kit,
with a suggested retail price of $175.00.
Upon signing of the agreement and payment,
Kits will be shipped within 60 days.
(DePhillipo Trial Deposition Exhibit 102) The record
contains no evidence of the signed agreement or payment, and
DePhillipo’s testimony and accompanying documents show that
Parisi executed a confidentiality agreement resulting in
respondent sending Parisi a single sample kit during October
1994. Correspondence between DePhillipo and Parisi about
test marketing the kits to two hundred birth hospitals in
Cancellation No. 92030200
- 8 -
New York, New Jersey and Pennsylvania demonstrates no more
progress toward a signed agreement, payment or the shipment
of an order of goods. While respondent’s mark is shown on
letterhead during this period, the record is totally devoid
of any proof of actual sales of the kits in 1994, or of any
other incidents of its services of providing for the testing
and storage of DNA materials.
In fact, the claimed date of first use (November 29,
1994) contained in the application papers that resulted in
the involved registration is not supported anywhere in this
record, and on cross-examination, respondent’s primary
witness was unable to provide any support for its claimed
first use date:
Q. (Mr. Wyatt): Your trademark application
indicates your date of first use. Do
you recall what those dates were?
A. (Mr. DePhillipo): No, I don’t, counselor.
Q. Okay. Then let me refresh your
recollection by showing you your
answers to your interrogatories …. I’m
going to show -- these are – I’m
handing you what are copies of your
answers to the first set of
interrogatories, and in answer to
Interrogatory Number 2, the question
is: Describe the nature of
respondent’s business from the date of
the adoption by respondent of the mark
GeneLink, and any invariance [sic]
thereof, which may be earlier to the
present. Answer: Services in
connection with DNA testing and storage
of DNA material for medical diagnostics
and identity testing. And then you
Cancellation No. 92030200
- 9 -
say: Document December 8th, 1994,
trademark application, filing receipt
for trademark application listing date
of first use of 11/29/94.
A. Uh-huh.
Q. Do you remember that date?
A. Well, I’m reading. I don’t recall it,
but it’s seven years ago, but I assume
that’s correct.
Q. Is that a correct date as far as you’re
concerned?
A. Yes.
Q. Okay. How was it used at that time?
A. How was our –
Q. How did you use the mark GeneLink at that
time --
A. Well --
Q. -- 11/29/94?
A. Well, if we start – I’ll start with
these. We had a logo designed, and I’m
holding up the October 24, ’94 letter
to William Parisi. We used our name in
various letters to potential
distributors. We used our name to
various press organizations. We used
our name in soliciting the government's
offices for DNA -- for the military’s
DNA storage. We had written to several
funeral -- the funeral industry. We
used our name there on a national basis
to many different states where there
were known large funeral homes; private
practice physicians; dentists;
hospitals; insurance companies; DNA
testing laboratories; adoption
agencies….
(DePhillipo Trial Deposition at 38 –40) On cross-
examination, Mr. DePhillipo admitted that he had no
documentation to support the storage of any DNA materials at
the University of North Texas Health Science Center prior to
June 21, 1995. (DePhillipo Trial Deposition at 77 – 79)
Cancellation No. 92030200
- 10 -
We find, in light of the above, that there is no
question from this record but that petitioner has priority
of use of its marks in connection with its products.
We turn then to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. This determination
must be based upon an analysis of all of the probative facts
in evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
With respect to the marks, we find that the trademarks
of the parties are substantially identical. While the
registered mark has a design feature where an image of a
baby in a stroller is “linked” to the representations of
each parent with a design feature representing a double
helix strand of DNA material, the only portion of the mark
that can be spoken is the term GENELINK. In most instances
Cancellation No. 92030200
- 11 -
where respondent’s mark appears in the record, it is shown
as a word mark. In addition to the obvious visual
similarity between the parties’ marks, the sound of the two
marks is therefore identical.
As to meaning, respondent explained the origins of the
LINK portion of its mark as stressing that genetics “link”
each individual to one’s family’s medical histories. This
is reinforced by the design imagery. Petitioner explains
linkage in the context of scientific analyses of how
specific genetic disorders may be tied to separate gene
markers near or within a gene of interest. However, in
either case, the connotation suggests the process of using
human genetics to track heritable traits within a family.
Hence, judging by the sight, sound and meaning trilogy, we
find that each comparison results in a finding of
confusingly similar marks.
With respect to the goods and services of the parties,
the record reveals that petitioner is a biotechnology
company that directs its products and services to genetics
researchers and scientists located in universities, research
institutes, pharmaceutical companies and research hospitals.
According to a press release contained in the record:
Gene Link is a leading supplier of custom
oligonucleotides for use in PCR, sequencing,
cloning, ligation, and sequence mutagenesis.
Cancellation No. 92030200
- 12 -
GeneLink offers all modifications, as well as
a wide variety of other molecular biology
products such as linkers, adaptors, etc.
GeneLink also has a research and development
department dedicated to discovering new
techniques and methods leading to better
quality products.
Gene Link is in the process of developing
research products to aid scientists with
detection of genetic disorders ….
(Javed Trial Deposition at 72 – 74, Exhibit 40) As shown by
petitioner’s records, generally research scientists submit
orders for goods or services directly to petitioner via
email, fax, etc. Upon shipment of the goods or provision of
the services, petitioner sends invoices to the institutions
that employ the research scientists. At some later point,
petitioner receives payment from the university, research
institute, pharmaceutical company or research hospital.
(Javed Trial Deposition at 18 - 53, Exhibits 6 - 26)
Petitioner has advertised its goods and services in
periodicals such as Biotechniques Journal, Genetics
Engineering News, Cell and Nature Genetics. All of these
magazines are directed to bioresearchers. (Javed Trial
Deposition at 65, 75 - 77, Exhibits 36 & 42) Petitioner has
made appearances at the New York Human Genetics Club, the
American Society of Human Genetics and the International
Society of Human Genetics. (Javed Trial Deposition at 66 -
68, Exhibits 37 - 38) Throughout its entire history,
Cancellation No. 92030200
- 13 -
petitioner’s goods and services have been directed to
biomedical research – not medical diagnosis.
Respondent offers its DNA collection and banking
services to individuals who are members of the general
public. Its most successful sales efforts to date have been
the sale of its kits through the cemetery and cremation
markets. The purchase of a DNA collection kit includes the
storage of DNA material for an agreed-upon period of time.
Respondent is able to offer to its customers long-term
storage of an individual’s DNA through a contract with a
medical laboratory facility in Texas – the University of
North Texas Health Science Center at Fort Worth. To the
extent that customers want to have the stored DNA analyzed
at some later date, this is a new service for which
additional fees are required, but at that point respondent
makes the stored DNA sample available for genetic testing
and analysis by DNA labs such as Athena Diagnostics or
Myriad Genetics. (DePhillipo Trial Deposition at 99)
At first blush, these goods and/or services appear to
be related inasmuch as the technologies involved herein are
both tied closely to genetic testing of human DNA.
Petitioner provides technology support for genetic testing
in the field of biotechnology while respondent provides for
the collection of DNA samples so that families can later
Cancellation No. 92030200
- 14 -
utilize gene technologies to secure medical and genetic
information. Both parties’ services contain the
capabilities of detecting alterations related to a heritable
disorder.
We note that petitioner does not discuss in detail why
these services and goods are closely related, nor does
petitioner specify the class of common purchasers who are
likely to be confused. Rather, petitioner argues that the
issue of likelihood of confusion must be determined on the
basis of the services as they are identified in the involved
registration, rather than on what any evidence may show as
to the actual nature of the goods, their channels of trade
and/or classes of purchasers. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987); and In re Elbaum, 211 USPQ 639 (TTAB
1981). It is true that respondent’s registration has a
recital of services broader than the evidence reviewed above
shows its actual scope of services to be: “DNA testing and
storage of DNA material for medical diagnostics and identity
testing.” Apart from the specific context of respondent’s
actual business operations, its recited service of providing
“DNA testing for medical diagnostics” appears to be somewhat
related to petitioner’s gene testing, mutation analysis,
gene mutagenesis, and other areas of genetic research.
Cancellation No. 92030200
- 15 -
Petitioner would seem to be equipped to do much the same
kind of genetic testing and analysis being done for
respondent’s customers by DNA labs such as Athena
Diagnostics or Myriad Genetics. Conversely, respondent’s DNA
banking facility at the University of North Texas Health
Science Center at Fort Worth would appear to be a primary
target audience for petitioner’s marketing of its goods and
services. Respondent’s specimens of record and petitioner’s
press release (Exhibit 40, supra) both refer to “PCR”
(polymerase chain reaction) technologies.
On the other hand, there are glaring differences
between the parties’ goods and services. Petitioner’s goods
involve cutting-edge technology directed to molecular
biologists. While focused totally on medical research,
petitioner is clearly not involved in medical diagnosis. By
contrast, respondent’s kits each involve half-a-dozen
cotton-tipped swabs and the promise of freezer storage of a
loved one’s DNA material for some potential utility in the
future. There is no evidence that respondent’s collection
kits would be sold to, or used by, genetic researchers to
collect DNA samples. The sale of respondent’s kits seems
inextricably tied into the later, long-term storage of the
DNA materials. Petitioner markets its goods to research
scientists while respondent markets its goods to grieving
Cancellation No. 92030200
- 16 -
family members through a funeral director. Accordingly, as
to the similarity or dissimilarity and nature of the goods
or services as described in the registration and in
connection with which the prior mark is in use, based upon
all the evidence contained in this record, we find that
petitioner’s goods and services are not so closely related
that confusion would be likely from contemporaneous use of
these virtually identical marks.
As for the du Pont factor having to do with instances
of actual confusion, petitioner has documented a number of
misdirected inquiries intended for respondent. These
misdirected emails and other correspondence provide some
support for petitioner’s arguments that the marks are
confusingly similar. On the other hand, most of the emails
involved the concerns of respondent’s anxious investors who
contacted petitioner at www.genelink.com, not prospective
customers of either party. In most of the instances where
misdirected letters reached petitioner, petitioner’s
chairman was able to discern quickly from the context that
the correspondence had been misdirected. Hence, this
evidence does not weigh strongly in petitioner’s favor.
As to the similarity or dissimilarity of established,
likely-to-continue trade channels, as noted above, the
channels of trade appear to be quite different. Petitioner
Cancellation No. 92030200
- 17 -
markets its goods and services to biomedical researchers and
scientists who are looking for very specific, high-
technology tools. Respondent appears to rely almost
exclusively on funeral directors to market its decidedly
lower-technology goods to grieving family members.
As to the conditions under which and buyers to whom
sales are made, it seems that petitioner’s customers are the
prototype of careful, sophisticated purchasers. If
perchance one of them were to encounter respondent’s
services at the local mortuary, we find nothing in this
record that would make us conclude that they would form the
mistaken impression that this service originated with, or
had the imprimatur of, petitioner.
In conclusion, we find that petitioner has met its
burden of demonstrating that it has a priority of use.
However, in spite of the virtual identity of the marks at
issue, upon consideration of the other pertinent du Pont
factors, we also find that petitioner has failed to
demonstrate by a preponderance of the evidence that
confusion as to source or sponsorship from contemporaneous
use of the parties’ marks in connection with their
respective goods and services is likely to occur.
Decision: The petition to cancel is denied.