Overcoming Trademark Registration Refusal: The Refusal Lacks Supporting Evidence

EPIGENEWhen a trademark application is refused registration based on a likelihood of confusion with a prior registration, the examining attorney of the USPTO must support that refusal with evidence. If it is not, the refusal can be reversed by the Trademark Trial and Appeals Board (Board) as demonstrated in the following case.

Genebook LLC applied to register EPIGENE for the goods of “electronic database in the field of genes recorded on computer media.” The application was refused based on two prior registrations for the same mark EPIGENE. The goods listed in the prior registrations for EPIGENE where (1) Diagnostic preparations for medical purposes, and (2) Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing.

The examining attorney needed to support the refusal with evidence that the goods in the registrations and the goods in Genebook’s application were related in some manner and/or that the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source. But the Board found the evidence was lacking and reversed the refusal.

1. Similarity of the Goods

The examining attorney cited website evidence from numerous DNA testing companies to try to show that the goods where related. However, the Board said there was “no evidence in the record that any of these companies offer an ‘electronic database in the field of genes recorded on computer media’ with search and retrieval capability to their customers.” The DNA testing companies offered printed reports . Yet, the Board said, “While these printed reports ‘may’ be created via access to an electronic database, we have no basis for finding that these reports are themselves ‘databases’ as that term is defined and understood in this field.” Further, the sellers of genetic testing equipment did not offer gene databases or information from gene databases in connection with their products.

Therefore, there was a gap in evidence between the goods of the prior registrations and the applicant’s goods.

Further, the examining attorney can show the goods are related by showing they “have complementary uses, that they are often used together or that they are otherwise bought by the same purchasers for the same or related purposes, such that confusion would be likely if the goods were marketed under the same mark.” Yet, the Board found that there was little evidence of this.

2. Channels of Trade

The Board acknowledged the principle that “In the absence of meaningful limitations in either the application or the cited registrations, [we] properly presume[] that the [respective] goods travel through all usual channels of trade and are offered to all normal potential purchasers.” However the Board found that this presumption is “not a substitute for proof, which is absent here.”

As a result of the lack of evidence showing similarity of the goods or overlapping channels of trade, the Board reversed the refusal and allowed the application to proceed toward registration.

Identifying a lack of evidence supporting a trademark registration refusal is one possible path to overcoming a refusal and achieving registration.

Case: In re Genebook LLC, Serial No. 90269018 (TTAB Oct. 26, 2022).