Invitek Gesellschaft Fur Biotechnik & Biodesign GmbH

Trademark Trial and Appeal Board

Jul 22, 2011

No. 77710376 (T.T.A.B. Jul. 22, 2011)

Mailed:
July 22, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Invitek Geselleschaft Für Biotechnik & Biodesign GmbH
________

Serial No. 77710376
_______

Joyce Von Natzmer of Pequignot + Myers LLC for Invitek
Geselleschaft Für Biotechnik & Biodesign GmbH.

Carol Spils, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Bucher, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Invitek Geselleschaft Für Biotechnik & Biodesign GmbH
(“applicant”) has appealed from the final refusal of the
trademark examining attorney for the registration of a use-
based application for the mark INVITEK, in standard
character form, for goods and services ultimately identified
as follows:
Chemicals for use in life science;
laboratory chemicals, namely, reagents
for nucleic acid isolation for the
detection of genes and/or the detection
of gene expression for research and
in vitro diagnostic use, in Class 1;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77710376
2

Scientific measuring instruments,
namely, liquid level sensors for liquid
level detection during nucleic acid
isolation for diagnostic and
biotechnology uses, in Class 9; and

Chemical and biotechnological laboratory
consultation services, namely,
scientific laboratory consultation in
the field of chemical and
biotechnological research for reagent
selection for nucleic acid sample
preparation for research or in vitro
diagnostic use, in Class 42.

The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark so resembles the two
previously-registered marks owned by the same entity set
forth below:
1. Registration No. 2534882 for the mark INVETECH and
design, shown below, for “design services relating to the
development of biomedical and scientific instrumentation,
product development and industrial design related services
and design services relating to factory automation,” in
Class 42;1 and

1 Issued January 29, 2002; Section 8 declaration accepted.
Ser No. 77710376
3
2. Registration No. 3185590 for the mark INVETECH
BRINGING IDEAS TO LIFE, in standard character form, for the
following services:
Business management, business administration,
business operation and business functions—
namely, cost price analysis services;
advisory services for business management;
commercial and industrial management
assistance; professional business management
and organization consultancy; business
investigation and research; economic
forecasting; efficiency expertise; personnel
management consultancy; market research and
studies; business planning and supervision;
providing trade information and consultation;
business appraisals; compilation and
systemization of information into computer
databases; computerized database management;
business management of industrial facilities
of technical operations, namely, biomedical
and industrial manufacturing and process
facilities, in Class 35;

Consultation in the field of environmental
protection, namely, waste disposal, in Class
37;

Treatment of materials, particularly, custom
assembling of materials for others,
decontamination of hazardous materials,
hazardous waste management, consultation in
the field of environmental protection,
namely, soil, waste, hazardous waste and/or
water treatment, in Class 37;

Education and providing of training, namely,
arranging and conducting of conferences,
seminars and lectures in the fields of
biomedicine, chemistry, geology, physics,
medicine, scientific research, science and
technology, computers, patents, intellectual
property, inventions and product development;
computer education training; training
services offered via the Internet and other
computer networks in the fields of
Ser No. 77710376
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biomedicine, chemistry, geology, physics,
medicine, scientific research, science and
technology, computers, patents, intellectual
property, inventions and product development;
providing information relating to education,
in Class 41; and

Scientific and technological services,
namely, research in the fields of
biomedicine, chemistry, geology, physics,
medicine, scientific research, science and
technology, computers, patents, intellectual
property, inventions and product development;
design for others in the fields of
biomedicine, chemistry, geology, physics,
medicine, scientific research, science and
technology, computers, patents, intellectual
property, inventions and product development;
technical consultation in the nature of
industrial analysis and research services in
the field of biomedicine, chemistry, geology,
physics, medicine, scientific research,
science and technology, computers, patents,
intellectual property, inventions and product
development; design and development of
computer hardware and software used for
scientific and industrial research,
bacteriological research, biological
research, chemical analysis and research,
chemistry services, material testing,
mechanical research, physics research,
geological research, technical project
studies and research including new technology
impact market studies; calibration and
measuring; quality control for others;
product research and development for others;
engineering; industrial design; packaging
design for others; construction drafting for
factory and manufacturing layout; computer
programming, namely, computer software
programming; repair, maintenance, updating
and installation of computer software;
computer database design services; design and
development of computer systems and computer
networks; computer systems analysis, computer
time sharing services, consultancy in the
field of computer hardware, networking and
software; scientific, industrial, and
Ser No. 77710376
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engineering consultation research services;
technical consultation and research services
in the fields of biomedicine, chemistry,
geology, physics, medicine, scientific
research, science and technology, computers,
patents, intellectual property, inventions
and product development. [sic] intellectual
property consultancy, licensing of
intellectual property services, customized
searching services, namely, providing
information at the specific request of end-
users by means of telephone or global
computer networks, in Class 42.2

Preliminary Issue
The Internet evidence submitted by
the examining attorney is not probative.

In her February 2, 2010 Office Action, the examining
attorney submitted a list of search results from the GOOGLE
search engine and a website excerpt from an entity in the
Czech Republic to show that the goods and services in the
application and cited registrations are related. With
respect to the list of search results from the GOOGLE search
engine, the list of results has little, if any probative
value, because the list does not show the context in which
the search terms are used on the listed web pages. See In
re Bayer Aktiengesellschaft, 488 F.3d 960, 967, 82 USPQ2d
1828, 1833 (Fed. Cir. 2007) (GOOGLE search results that
provided very little context of the use of ASPIRINA deemed
to be “of little value in assessing the consumer public
perception of the ASPIRINA mark”); In re Tea and Sympathy,

2 Issued December 19, 2006.
Ser No. 77710376
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Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008) (truncated Google
search results entitled to little probative weight without
additional evidence of how the searched term is used); In re
Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board rejected an
applicant’s attempt to show weakness of a term in a mark
through citation to a large number of GOOGLE “hits” because
the “hits” lacked sufficient context); In re King Koil
Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006); In re
Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002); In re Fitch
IBCA Inc., 64 USPQ2d 1058 (TTAB 2002). A review of the list
of search results confirms that they are not helpful in
understanding whether the goods and services are related.
Furthermore, the examining attorney did not explain how the
search results were probative.
The excerpt from the website submitted by the examining
attorney appears to be from an industrial park in the Czech
Republic that provides “subsidized rental and consulting
services for start-up companies.” The examining attorney
did not explain how the website was probative in either her
Office Action or her appellate brief.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
Ser No. 77710376
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in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods and services offered
Ser No. 77710376
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under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June
5, 1992).
While marks must be compared in their entireties, it is
not improper to accord more or less weight to a particular
feature of a mark. In re National Data Corp., 753 F.2d
1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). The dominant
element of the registered marks is the word “Invetech.” In
the case of marks consisting of words and a design, the
words are normally given greater weight because they would
be used by consumers to request the products or services.
In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB
1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554
(TTAB 1987). Thus, the word “Invetech” is the dominant
portion of the registered mark INVETECH and design.
With respect to the mark INVETECH BRINGING IDEAS TO
LIFE, the word INVETECH would be perceived as the dominant
element because it is the name of registrant (i.e., Invetech
Pty. Ltd.) and the term “Bringing Ideas to Life” is in the
nature of advertising tagline. For example,

Ser No. 77710376
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INVETECH
Bringing Ideas To Life3
The significance of the name “Invetech” as the dominant
element of INVETECH BRINGING IDEAS TO LIFE is further
reinforced by its location as the first part of the mark.
See Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part
of a mark which is most likely to be impressed upon the mind
of a purchaser and remembered”); see also Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent
part of the mark VEUVE CLICQUOT because “veuve” is the first
word in the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the
identical lead word).
Although the marks are not identical, the dominant
element of the registered mark, INVETECH, is visually

3 The rights associated with a mark in standard character form
reside in the wording and not in any particular display. In re
RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); TMEP
§1207.01(c)(iii) (7th ed. 2010). Thus, the depictions of such
marks may vary in font, style, size and color.
Ser No. 77710376
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similar to applicant’s mark INVITEK. Also, consumers are
likely to pronounce both marks as ĭn vě těk.4
While both INVETECH and INVITEK appear to be fanciful
terms, because they are so similar in appearance and sound,
they convey the same commercial impression.
There are differences between applicant’s mark INVITEK
and registrant’s marks INVETECH and design and INVETECH
BRINGING IDEAS TO LIFE. However, when these marks are
compared in their entireties, giving appropriate weight to
their components, we find that applicant’s mark INVITEK is
similar in appearance, sound, meaning and commercial
impression to the registered marks INVETECH and design and
INVETECH BRINGING IDEAS TO LIFE.
B. The similarity or dissimilarity and nature of the goods
described in the application and the services in the
registration, the likely-to-continue channels of trade
and the classes of consumers.

In analyzing the similarity of the goods and services,
the issue is not whether the goods and services will be
confused with each other, but rather whether the public will
be confused as to the source of the goods and services.
Safety-Kleen Corp. v. Dresser Indus. Inc., 518 F.2d 1399,
186 USPQ 476, 480 (CCPA 1975). It is sufficient to find the

4 While a trademark owner cannot ensure that its mark will be
correctly pronounced or control how a mark will be pronounced, we
do not hesitate to find that most consumers will pronounce the
marks at issue as indicated above.
Ser No. 77710376
11
goods and services to be related where the circumstances
regarding their marketing are such that they would be
encountered by the same potential purchasers under
circumstances that would give rise to the mistaken belief
that they originate from the same source. On-line Careline
Inc., v. American Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
(Fed. Cir. 2000).
As indicated above, applicant is seeking to register
its mark for the following services:
Chemicals for use in life science;
laboratory chemicals, namely, reagents
for nucleic acid isolation for the
detection of genes and/or the detection
of gene expression for research and
in vitro diagnostic use, in Class 1;

Scientific measuring instruments,
namely, liquid level sensors for liquid
level detection during nucleic acid
isolation for diagnostic and
biotechnology uses, in Class 9; and
Chemical and biotechnological laboratory
consultation services, namely,
scientific laboratory consultation in
the field of chemical and
biotechnological research for reagent
selection for nucleic acid sample
preparation for research or in vitro
diagnostic use, in Class 42.

To properly analyze the goods and services, we must
first discuss what they are. The following definitions are
necessary to understand applicant’s goods and services.
Ser No. 77710376
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1. “Life science” is defined as “any science that
deals with living organisms, their life processes, and their
interrelationships, as biology, medicine, or ecology.”5
2. The term “reagents” is defined as “a substance
that, because of the reactions it causes, is used in
analysis and synthesis.”6
3. “In vitro” is defined as “made to occur in a
laboratory vessel or other controlled experimental
environment rather than within a living organism or natural
setting.”7
4. “Nucleic acid” is defined as “any group of long,
linear macromolecules, either DNA or various types of RNA,
that carry genetic information directing all cellular
functions: composed of linked nucleotides.”8
5. “Biotechnology” is defined as “the use of living
organisms or other biological systems in the manufacture of

5 The Random House Dictionary of the English Language
(Unabridged), p. 1111 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
6 Id. at 1607. “Synthesis” is defined as “the forming or building
of a more complex substance or compound from elements or simpler
compounds.” Id. at 1929.
7 Id. at 1004.
8 Id. at 1329. “Nucleotides” are defined as any group of
molecules that, when linked together, form the building blocks of
DNA or RNA.” Id. “DNA” is the main component of chromosomes and
is the material that transfers genetic characteristics. Id. a
576. “RNA” is “a class of single-stranded molecules transcribed
from DNA.” Id. at 1662.
Ser No. 77710376
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drugs or other products or for environmental management, as
in waste recycling: includes the use of bioreactors in
manufacturing, microorganisms to degrade oil slicks or
organic waste, genetically engineered bacteria to produce
human hormones, and monoclonal antibodies to identify
antigens.”9
Accordingly, applicant’s goods and services include the
following:
Class 1:

Chemicals for use in biology, medicine or ecology.
Chemicals for isolating genetic materials for research
and diagnostic use.

Class 9:

Liquid level sensors for liquid detection during the
isolation of genetic materials for diagnostic use and
for manufacturing drugs and other materials.

Class 42:

Scientific laboratory consultation in the field of
selecting genetic materials for research and diagnostic
use.

The registrant’s services reference the term
“biomedicine.” “Biomedicine” is defined as “the application
of the natural sciences, esp. the biological and
physiological sciences to clinical medicine” and “the
science concerned with the effects of the environment on the

9 Id. at 211.
Ser No. 77710376
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human body, esp. environments associated with space
travel.”10
In view of the foregoing, INVETECH and design is used
for, inter alia, “design services relating to the
development of [biological or physiological] and scientific
instrumentation,” in Class 42.
INVETECH BRINGING IDEAS TO LIFE is used for, inter
alia, the following services:
Class 35:

Business management of industrial facilities of
technical operations, namely, biomedical and industrial
manufacturing and process facilities

Class 41:

Education and providing of training, namely, arranging
and conducting of conferences, seminars and lectures in
the fields of biomedicine; training services offered
via the Internet and other computer networks in the
fields of biomedicine, chemistry, and medicine

Class 42:

Research in the fields of biomedicine, chemistry, and
medicine; design for others in the fields of
biomedicine, chemistry, and medicine; industrial
analysis and research services in the field of
biomedicine, chemistry, and medicine; design and
development of computer hardware and software used for
bacteriological research, biological research, chemical
analysis and research; technical consultation and

10 Id. at 210. “Biomedical” is the adjectival form of the word.
The term “physiological” is defined as pertaining to physiology
[the branch of biology dealing with the functions and activities
of living organisms and their parts, including all physical and
chemical processes]” and “consistent with the normal functioning
of an organism.” Id. 1462.
Ser No. 77710376
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research services in the fields of biomedicine,
chemistry, and medicine.

Excerpts from the registrant’s website further clarify
and explain the nature of registrant’s services.11
Registrant promotes its “extensive experience in Life
Sciences,” including genomics, molecular diagnostics, stem
cell research, cellular processing and liquid handling from
nano to macro.12 Registrant has the capability of “handling
a range of samples (blood, cells, tissue, other bodily
fluids) and reagents.”
Registrant’s “design and development of computer
hardware and software used for bacteriological research,
biological research, chemical analysis and research
(INVETECH BRINGING IDEAS TO LIFE) are also related to
applicant’s scientific measuring instruments, namely, liquid
level sensors for liquid level detection during nucleic acid
isolation for diagnostic and biotechnology uses,” in Class
9, because such services would be necessary for use in
designing and operating the liquid level sensors. Thus,
these goods and services would move in the same channels of
trade and be offered to the same classes of consumers.

11 October 20, 2010 Office Action.
12 “Genomic” is the adjectival form of the word “genome” which is
defined as “a full set of chromosome: all the inheritable traits
of an organism.” The Random House Dictionary of the English
Language (Unabridged), p. 797.

Ser No. 77710376
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Registrant’s “research in the fields of biomedicine,
chemistry and medicine” and “technical consultation and
research services in the fields of biomedicine, chemistry,
and medicine” (INVETECH BRINGING IDEAS TO LIFE) are broad
enough to encompass applicant’s “scientific laboratory
consultation in the field of selecting genetic materials for
research and diagnostic use,” in Class 42. Since
registrant’s Class 42 services encompass applicant’s Class
42 services, those services would move in the same channels
of trade and be offered to the same classes of consumers.
Likewise, registrant’s above-noted services are
sufficiently related to applicant’s “chemicals for use in
biology, medicine or ecology and for isolating genetic
materials for research and diagnostic use,” in Class 1,
because those chemicals would be used in connection with the
research services. Accordingly, applicant’s chemicals in
Class 1 would move in the same channels of trade and be
offered to the same consumers are registrant’s Class 42
services.
With respect to registrant’s “design services relating
to the development of biomedical and scientific
instrumentation” (INVETECH and design), we find that those
services are related to applicant’s “scientific measuring
instruments, namely, liquid level sensors for liquid level
Ser No. 77710376
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detection during nucleic acid isolation for diagnostic and
biotechnology uses,” in Class 9. Liquid level sensors for
use in nucleic isolation for diagnostic and biotechnology
uses are obviously complex devices. Registrant advertises
that it “partners with clients to develop innovative new
research platforms and commercial production systems,” to
develop, inter alia, “liquid handling from nano to macro,”
“microfluidic devices,” and “on-site safety labs for
handling biological samples.” Thus, registrant’s design
services could include products such as liquid level sensors
for liquid level detection during nucleic acid isolation for
diagnostic and biotechnology uses. Under these
circumstances, we find that registrant’s design services and
applicant’s liquid level sensors could be marketed under
circumstances likely to give rise to the mistaken belief
that, because of the similarity of the marks, the goods and
services emanate from a single source.
C. The conditions under which and buyers to whom sales are
made (i.e., impulse vs. careful, sophisticated
purchasing).

Applicant contends that its clients may be
characterized as “a highly sophisticated, careful purchaser
who may head a biotech laboratory or at least involved
significant purchasing decisions”13 and that such

13 Applicant’s Brief, p. 8.
Ser No. 77710376
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sophisticated consumers can distinguish between applicant’s
life sciences goods and services and registrant’s industrial
analyses, research and design services.14 One problem with
applicant’s analysis is that it is based on the false
premise that registrant’s services are limited to the field
of industrial analyses, research and design services. As
discussed above, registrant’s services also include the
field of biomedicine, chemistry, and medicine which overlap
with applicant’s field of life sciences.
Nevertheless, we acknowledge that the clients of both
applicant and registrant exercise a high degree of care when
selecting either applicant’s goods and services or
registrant’s services. Even assuming that those clients
exercise a high degree of care, that does not outweigh the
similarity of the marks and the relatedness of the goods and
services. Being expert or skilled in field of life sciences
does not mean that applicant’s and registrant’s personnel
are equally skilled in analysis of trademarks under which
these products are marketed. Medtronic, Inc. v. Medical
Devices, Inc., 204 USPQ 317, 326 (TTAB 1979). See also
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories
even of discriminating purchasers ... are not infallible.").

14 Id.
Ser No. 77710376
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E. Balancing the factors.
Based on our review, we find that the marks, the goods
and services, the channels of trade and the classes of
consumers are similar. Accordingly we find that applicant’s
mark INVITEK for the goods in Class 9 is likely to cause
confusion with the mark INVETECH and design for the services
in Class 42. Also, we find that applicant’s mark INVITEK
for the goods and services in Classes 1, 9 and 42 is likely
to cause confusion with the mark INVETECH BRINGING IDEAS TO
LIFE for the services in Class 42.
Decision: The refusal of register is affirmed.