Genescreen, Inc.

Trademark Trial and Appeal Board

May 18, 2001

No. 75600523 (T.T.A.B. May. 18, 2001)

5/18/01
Paper No. 12
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Genescreen, Inc.
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Serial No. 75/600,523
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R. Darryl Burke of McKool Smith for Genescreen, Inc.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Daniel Vavonese, Acting Managing Attorney).
_______
Before Simms, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Genescreen, Inc. has appealed the final refusal of the
Trademark Examining Attorney to register SOFTOUCH for
“laboratory sample collection system for DNA analysis
comprising sponge-tipped swab, plastic tube and cap, sample
box and sample shipping envelope” in Class 9, and
“collecting, analyzing and laboratory testing of cell
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/600,523
2
samples for DNA analysis” in Class 42.1 Registration has
been refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark SOFT TOUCH, previously registered for
“lancet device for extracting blood for blood test,”2 that
when used in connection with applicant’s identified goods
and services, it is likely to cause confusion or mistake or
to deceive.
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
We affirm the refusal of registration with respect to
both classes.
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
1 Application Serial No. 75/600,523, filed December 1, 1998, and
asserting first use and first use in commerce in May 1996.
2 Registration No. 2,099,102, issued September 23, 1997 to
Boehringer Mannheim Corporation, assigned to Roche Diagnostics
Corporation.
Ser. No. 75/600,523
3
Turning first to the marks, they are virtually
identical. They are identical in pronunciation and
connotation, with both marks suggesting that the respective
products are gentle and not painful to the party from whom
the blood or buccal cells are being obtained. The marks
are also extremely similar in appearance. Both are for the
words SOFT TOUCH. The only difference is that in
applicant’s mark the words are telescoped into SOFTOUCH.
However, the impression of this mark as being the words
SOFT TOUCH is not changed by this telescoping. Applicant
has applied for its mark as a typed drawing, which means
that its protection would not be limited to a particular
type style. Further, we note that as actually used,
applicant depicts its mark as “SofTouch”, thus emphasizing
the fact that it is made up of the two words.
This brings us to a consideration of the registrant’s
goods and applicant’s goods and services. As the Examining
Attorney has pointed out, it is not necessary that the
goods and/or services of the parties be similar or
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods and/or services or
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
Ser. No. 75/600,523
4
goods and/or services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
In this case, applicant’s laboratory sample collection
system for DNA analysis is clearly related to the
registrant’s lancet device for extracting blood for blood
tests. Although the products obtain the samples in
different manners, the question is not whether consumers
are able to tell the products apart, but whether they will
assume that they emanate from the same source if sold under
confusingly similar marks. In this case, both products
have the same purpose, i.e., to obtain cell samples,
applicant’s by means of a sponge-tipped swab for buccal
cells within the cheek, and registrant’s by means of a
lancet to draw blood. Further, both products can be used
to obtain cell samples for use in DNA analysis. In fact,
applicant’s own specimens show that it “utilizes blood as
the preferred sample for the DNA analysis procedures.”
Applicant also has conceded “that blood can be used for
genetic testing, ... and lancets are sometimes used to
extract blood, the goods and services are not totally
Ser. No. 75/600,523
5
unrelated.” Brief, p. 8. Applicant has also acknowledged
that a lancet may be used to gather samples for genetic
analysis. Id.
Applicant asserts, however, that the registrant’s
lancets are not in fact used to obtain samples for DNA
analysis, and that the purposes for which the blood is
drawn is undefined. We agree that the registration does
not limit the uses for the blood samples, but cannot accept
applicant’s position that this creates a meaningful
difference. Because the identification is for “lancet
device for extracting blood for blood test,” we must deem
the lancets to be used for blood tests for all purposes.
See In re Elbaum, 211 USPQ 639 (TTAB 1981) (where there are
no limitations in the identification of goods in a cited
registration as to their nature, type, etc., it is presumed
that the scope of the registration encompasses all goods of
the nature and type described). One purpose of blood
tests, as shown by applicant’s own statements and
materials, as well as the NEXIS evidence of record,3 is for
3 See, for example, “By measuring variations in DNA structure
from blood samples,” Drug Discovery/Technology News, March 1999;
“A variety of sources can be used for the original DNA sample,
including ... whole blood,” Medical Laboratory Observer,
February 1, 1999; “be detected by screening a sample of the DNA
from blood cells or cells collected from the cheek walls of the
mouth” National Women’s Health Report,” October 31, 1996.
Ser. No. 75/600,523
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DNA analysis, the same purpose for which applicant’s swab
sample collection system is used.
We also find that applicant’s services of “collecting,
analyzing and laboratory testing of cell samples for DNA
analysis” are related to the registrant’s identified goods.
Because lancets are used to collect blood samples, they are
an integral component of the cell sample collecting
process. Applicant’s own evidence shows that it offers
both its identified services and materials for obtaining
blood samples, including needles. Moreover, the Examining
Attorney has made of record third-party registrations which
suggest that blood collection kits and medical testing
services may be offered by an entity under a single mark.4
Applicant also attempts to distinguish the channels of
trade and classes of consumers for its goods and services
and the goods of the registrant by asserting that its
services are used for legal purposes such as paternity
determinations and forensic testing in criminal matters,
that its products are sold in conjunction with its
services, and that its customers are, inter alia, social
services agencies and law enforcement organizations. It
4 See, for example, Registration No. 2,283,546 for, inter alia,
kits consisting primarily of needles, tubes, and bags, for use in
blood collection and, clinical medical laboratory services in
connection with drug testing of insurance applicants, and medical
testing of employees at their work sites.
Ser. No. 75/600,523
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further asserts that registrant sells its products to
“sophisticated medical purchasers charged with acquiring
medical supplies in bulk and specialized medical equipment
for doctor’s offices, hospitals or research laboratories.”
Brief, p. 9.
The primary problem with applicant’s argument is that
it seeks to impose limitations on both its own and the
registrant’s identifications that are simply not there.
Applicant’s goods and services are not limited to social
service agencies and law enforcement organizations, and
there is nothing in the identification that would restrict
it to such channels of trade or customers. Certainly DNA
analysis can be used in situations other than determining
paternity or identifying criminals. Nor, again, is the
registrant’s identification restricted to the doctor’s
offices, hospitals and research laboratories claimed by
applicant to be registrant’s customers, nor does the
identification exclude use of the lancet for obtaining
blood samples for DNA analysis.
As noted above, it is well established that, in the
absence of any restrictions in the identifications of goods
and services, it must be presumed that the goods and/or
services are sold in all channels of trade which are
appropriate for those goods and services, and to all
Ser. No. 75/600,523
8
appropriate customers. See In re Davis-Cleaver Produce
Company, 197 USPQ 248 (TTAB 1977); In re Elbaum, supra.
See also, Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, N.A., 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987)
(the question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-à-
vis the goods and/or services recited in an opposer’s
registration, rather than what the evidence shows the goods
and/or service to be).
Applicant also argues, at pages 9 and 10 of its brief,
that the purchasers of its goods and services and the
registrant’s goods are sophisticated purchasers who are
discerning and careful. Inexplicably, however, in the
following paragraph applicant asserts that applicant’s
customers “typically do not know, much less care, which
medical products are used” to answer questions of
paternity, and “it is extremely doubtful that the source of
such medical products would be of any interest to them.”
Brief, p. 10. Applicant also states, at page 7 of its
brief, that “a lancet is a low-tech, low-cost item.” Even
if we accept applicant’s initial statement that the
purchasers of its goods and services and of registrant’s
are sophisticated and careful, the marks involved are so
Ser. No. 75/600,523
9
nearly identical that even careful purchasers are likely to
confuse them. And given the evidence that lancets and
sponge-tipped swabs may both be used for DNA analysis, and
that companies which provide collecting and laboratory
testing of cell samples also provide equipment for
obtaining the cell samples, including needles for drawing
blood, even sophisticated purchasers would be likely to
assume a connection between applicant’s products and
services and registrant’s products if they were sold under
the virtually identical marks SOFTOUCH and SOFT TOUCH.5
Our decision that confusion is likely is not based on
a finding that the registrant’s mark is famous; indeed, we
have no information regarding registrant’s sales and
advertising from which we could draw such a conclusion.
However, we can say that there is no evidence in this
5 We note, in this connection, that applicant has submitted
evidence from registrant’s website which shows that registrant
sells a wide variety of medical products, including products used
for analysis such as reagents and devices for the isolation and
purification of DNA. Applicant recognizes that registrant sells
a wide variety of medical products, as indicated at page 7 of its
brief (molecular biochemicals used for such activities as protein
analysis, cell isolation, and pathology; laboratory systems, such
as sample analyzers, heterogeneous ammunoassay analyzers, and
assays covering oncology, retrovirus, hepatitis, TORCH, thyroid,
fertility, and H. pylori tests; and patient care products, such
as blood glucose monitoring system, reflectance photometers, and
visual test strips). Sophisticated professionals, knowing the
very breadth of medical products offered by registrant, would be
even more likely to assume that the sponge-tipped swab collection
system, and the collecting and analysis and testing of DNA, would
be products and services likely to be offered by registrant.
Ser. No. 75/600,523
10
record that any third parties are using SOFT TOUCH, or any
variation of that mark, which would lead us to conclude
that the mark is entitled to only a limited scope of
protection.
Finally, we address applicant’s point that there is no
evidence as to any actual confusion. Aside from pointing
out the obvious, which is that the statute speaks of
likelihood of confusion, applicant’s mark has been used for
a relatively limited time, since May 1996. The fact that
applicant had not encountered any instances of confusion as
of July 2000, when applicant submitted the declaration of
its Director of Sales and Marketing, or as of November
2000, when its brief was filed, cannot be considered a
significant period of time. Further, we have no
information from applicant, including from the declaration
of its Director of Sales and Marketing, as to its sales, or
the amount of money spent on advertising. As such, we
cannot conclude from the lack of actual confusion that
there has been an opportunity for confusion to occur. This
is especially true because applicant, although its
identification is not so restricted, has limited its sales
and advertising to law enforcement and government agencies,
to be used for specific purposes. Therefore, although this
duPont factor minimally favors applicant, the other duPont
Ser. No. 75/600,523
11
factors, and in particular the similarity of the marks and
the goods/services, strongly favor a finding of likelihood
of confusion.
Decision: The refusal of registration is affirmed.