Dx Biosciences, Inc.

Trademark Trial and Appeal Board

Jun 6, 2013

No. 85226234 (T.T.A.B. Jun. 6, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dx Biosciences, Inc.
_____

Serial Nos. 85226232, 85226234, 85226237, and 85226238
_____

Benjamen E. Kern, Benesch Friedlander Coplan & Aronoff LLP, for Dx Biosciences,
Inc.

Verna B. Ririe, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
_____

Before Zervas, Kuczma, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On January 26, 2011, applicant Dx Biosciences, Inc. filed four applications to
register the marks DX BIOSCIENCES and DX BIOSOLVE, in standard character
form, for two different types of goods, which after amendment are identified as:
• DX BIOSCIENCES, with “BIOSCIENCES” disclaimed, for “chemical
preparations for medical and veterinary purposes for solubilizing
tissue for cosmetic purposes” in International Class 51 and “medical
apparatuses and instruments for solubilizing tissue for cosmetic uses”2
in International Class 10; and

1 Serial No. 85226232.
2 Serial No. 85226234.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
2

• DX BIOSOLVE, for identical goods: “chemical preparations for medical
and veterinary purposes for solubilizing tissue for cosmetic purposes”
in International Class 53 and “medical apparatuses and instruments
for solubilizing tissue for cosmetic uses” in International Class 10.4
Each of the four applications was filed pursuant to Trademark Act Section 1(b), 15
U.S.C. § 1051(b) (intent to use).
The examining attorney has refused both of the applications to register
DX BIOSCIENCES on the ground that they are merely descriptive of the identified
goods pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Each of
the applications to register DX BIOSOLVE has been refused on two grounds: failure
to accept a required disclaimer of “DX” pursuant to Section 6(a) of the Trademark
Act, 15 U.S.C. § 1056(a), and likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d). Requests for reconsideration were denied as to each
refusal, and the appeals are fully briefed.
Appeals Consolidated
We have considered all arguments and evidence in each case, even if not
specifically addressed herein. The Board granted the examining attorney’s motions
to consolidate the appeals for Applications Serial Nos. 85226232 and 85226237,5
and, separately, the appeals for Applications Serial Nos. 85226234 and 85226238.6
Because the refusals to register are based on common issues of law and fact and
similar records and briefs, we consolidate all four appeals and decide each herein.

3 Serial No. 85226237.
4 Serial No. 85226238.
5 Board Order of January 24, 2013.
6 Board Order of October 11, 2012.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
3

The Significance of “DX” in Association with Applicant’s Goods
The examining attorney’s refusal to register the mark DX BIOSCIENCES
(with BIOSCIENCES disclaimed) and requirement that the applicant disclaim “DX”
from the mark DX BIOSOLVE are both based on the ground that “DX” is merely
descriptive of applicant’s goods pursuant to Section 2(e)(1).
A. Refusal to Register DX BIOSCIENCES (Applications Serial Nos. 85226232
and 85226234) as merely descriptive, in its entirety7
A term is merely descriptive within the meaning of Section 2(e)(1) if it
immediately conveys knowledge of a quality, characteristic, function, feature,
purpose or use of the goods with which it is used. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a particular term is merely descriptive must be determined not in
the abstract, but in relation to the goods for which registration is sought, the
context in which the term is used, and the possible significance that the term is
likely to have to the average purchaser encountering the goods in the marketplace.
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Eng’g
Sys. Corp., 2 USPQ2d 1075, 1076 (TTAB 1986). That a term may have other
meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). It is settled that “[t]he question is not whether
someone presented with only the mark could guess what the goods or services are.

7 The evidence of record for these two applications is identical, but the appeal briefs are not.
Thus, citations in this discussion refer to the records of both applications addressed, Serial
Nos. 85226232 and 85226234.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
4

Rather, the question is whether someone who knows what the goods or services are
will understand the mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Applicant voluntarily disclaimed exclusive rights in the term
“BIOSCIENCES” apart from the mark as a whole,8 and does not argue against the
common, descriptive nature of that term on appeal. In addition, the examining
attorney submitted dictionary definitions of “bioscience” (which include “biology” or
“life science”), demonstrating the descriptive nature of that term.9 We therefore
consider the remaining component of the mark, “DX,” and its significance in the
mark DX BIOSCIENCES as a whole in connection with applicant’s goods.
The examining attorney submitted evidence establishing that “DX” is a
common descriptive medical abbreviation for “diagnosis.” This evidence includes:
• a definition of DX as “Medical abbreviation for diagnosis”;10
• the abbreviation “Dx” defined as “Diagnosis”;11
• an online discussion of the origin of the abbreviation “Dx” for
diagnosis;12
• “Dx: Abbreviation standing for diagnosis, the determination of the
nature of a disease. Dx may alternatively be written DX or dx.”13

8 November 1, 2011 response to Office action.
9 November 30, 2011 Office action at 49-55.
10 May 2, 2011 Office action at 2, retrieved from www.rxlist.com.
11 November 30, 2011 final Office action at 2, retrieved from www.all-acronyms.com.
12 Id. at 3-6, retrieved from www.englishforums.com.
13 Id. at 7-12, retrieved from MedicineNet.com, www.medterms.com.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
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• “Dx Definition: Abbreviation for diagnosis. May be used as a word
(pronounced, DEE-ex or DEE-ex’d), e.g., ‘My dx was a shock.’ ‘I was
dx’d last year’ would mean diagnosed last year.”14
• “In medical terminology, ‘dx’ means ‘diagnosis.[’]”15
• “Dx/dx – diagnosis.”16
The examining attorney submitted 18 third-party registrations in which the term
“DX” is disclaimed,17 as well as examples of third-party use of “DX,” in association
with diagnostic goods and services.18 In addition, the examining attorney provided
evidence that applicant’s business is developing diagnostic technologies.19
In its appeal briefing, applicant does not argue against the descriptive
significance of “DX” in association with diagnostic goods and services.20 Nor does
applicant dispute that its business includes diagnostic technologies. Instead,
applicant states:
The Examining Attorney cited to various websites
indicating that Applicant is developing non-invasive
diagnostic technologies to extract biomarkers from tissue
samples. Denial of RFR. Applicant does indeed provide
such goods. However, Applicant previously amended its

14 Id. at 13, retrieved from phoenix5.org/glossary.
15 Id. at 14-15, retrieved from Answers.com.
16 Id. at 56-62, retrieved from neurotalk.com.
17 May 2, 2011 Office action at 5-33; November 30, 2011 final Office action at 16-18, 41-48;
June 28, 2012 denial of request for reconsideration at 55-60, 66-68.
18 June 28, 2012 denial of request for reconsideration at 21-42.
19 See id. at 12-14. See also November 30, 2011 final Office action at 65-67 (screenshots
from Bloomberg Businessweek.com giving the following company overview of applicant: “Dx
Biosciences, Inc. develops non-invasive diagnostic technologies to extract biomarkers from
tissue samples.”); June 28, 2012 denial of request for reconsideration at 15-16 (screenshots
with DFJ Frontier Portfolio Company Information stating that applicant: “Develops novel,
non-invasive diagnostic technologies to extract biomarkers from tissue samples.”).
20 See Reply Brief, Application Serial No. 85226232, at 9-10.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
6

identification of goods to remove those goods relating to
diagnostic uses.21
The thrust of applicant’s argument is that the examining attorney has failed to
consider that its identified goods, as amended, are not for diagnostic but for
cosmetic purposes; that is, “chemical preparations for medical and veterinary
purposes for solubilizing tissue for cosmetic purposes” and “medical apparatuses
and instruments for solubilizing tissue for cosmetic uses.”
The examining attorney responds that solubilizing tissue, for which
applicant’s remaining goods are used, is a step in diagnosis:
Though the applicant’s current identification describes
the goods as being for “cosmetic purposes,” chemical
preparations for medical and veterinary purposes for
solubilizing tissue are also commonly used for diagnostic
purposes. The excerpt from www.thefreedictionary.com
attached to the Denial of the Request for Reconsideration
dated June 28, 2012 at p. 19 defines “solubilize” as “[t]o
make (a substance such as a fat or lipid) soluble or more
soluble, especially in water, by the action of a detergent or
other agent.” The article entitled “One-step Acquisition of
Functional Biomolecules from Tissues,” retrieved on June
18, 2012 from the website www.pnas.org and attached to
the Denial of the Request for Reconsideration dated June
28, 2012 at pp. 2-11, shows that solubilizing tissue is part
of the diagnostic process. In particular, a[s] set forth in
the abstract and subsequent details, the article describes
an enhanced tissue solubilization method with
applications including molecular diagnostics.
Accordingly, chemical preparations for solubilizing tissue
would be used for medical diagnosis, or “DX,” purposes.
While it may also inform users that the applicant’s goods
may be useful in treating a cosmetic condition, the
addition of the wording “for cosmetic purposes” in
applicant’s identification does not change the function or

21 Appeal Brief, Application Serial No. 85226232, at 7 n.1.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
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primary purpose of chemical preparations used for
solubilizing tissue.22
Applicant, in turn, characterizes this argument as “incomplete to the point of
inaccuracy” because: “Tissue can be subject to diagnosis through means outside of
solubilization (e.g., it can be excised and placed under a microscope).”23
Applicant represented during prosecution that its products
will be marketed to laypersons seeking an alternative and
minimally invasive procedure for treating dermatological
disorders and removal of tissue masses, to name a few.
For example, Applicant will market its product to
laypersons as a means to remove warts. The removal of
warts by a layperson has nothing to do with any
diagnostic purpose or process.24
Our analysis must be based on the goods as currently identified, which are for
cosmetic rather than diagnostic purposes. We find that the single journal article
does not establish that goods used to solubilize tissue must necessarily be diagnostic
in nature and the term “DX” therefore descriptive of them. See In re Vaughan
Furniture Co., 24 USPQ 2d 1068, 1070 (TTAB 1992) (cannot conclude CRAFTS or
PINE CRAFTS merely descriptive for household furniture from one reference). The
record before us does not establish that diagnosis is “a central and inextricably
intertwined element” of the purpose or nature of applicant’s goods. In re Reed
Elsevier Props. Inc., 77 USPQ2d 1649, 1656 (TTAB 2005) (finding LAWYERS.COM
generic despite deletion of word “lawyers” from the identification of services), aff’d,
482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007).

22 Examiner’s brief, Application Serial No. 85226232, at unnumbered p. 5-6.
23 Appeal Brief, Application Serial No. 85226232, at 8.
24 November 1, 2011 response to Office action.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
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To the extent that we have any doubt as to the asserted descriptive nature of
the mark, we resolve such doubt in applicant’s favor and pass the applications to
publication. In re The Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994)
(“When doubts exist as to whether a term is descriptive as applied to the goods or
services for which registration is sought, it is the practice of this Board to resolve
doubts in favor of the applicant and pass the mark to publication with the
knowledge that a competitor of applicant can come forth and initiate an opposition
proceeding in which a more complete record can be established.”). Accordingly, the
refusals to register Applications Serial Nos. 85226232 and 85226234 under Section
2(e)(1) are reversed.
B. Requirement to Disclaim “DX” (Applications Serial Nos. 85226237 and
85226238)25
A similar analysis applies to disclaimer of the term “DX” from the mark
DX BIOSOLVE for “chemical preparations for medical and veterinary purposes for
solubilizing tissue for cosmetic purposes” and “medical apparatuses and
instruments for solubilizing tissue for cosmetic uses.” Merely descriptive or generic
terms are unregistrable under Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1), and
therefore are subject to disclaimer if the mark is otherwise registrable. If an
applicant does not provide a required disclaimer, registration of an entire mark may

25 The evidence of record for these two applications is identical except for exhibits attached
to the June 28, 2012 denials of requests for reconsideration. The appeal briefs are not
identical and are individually cited. The examiner’s brief for Application Serial
No. 85226232 also addresses Application Serial No. 85226237, while the examiner’s brief
for Application Serial No. 85226234 also addresses Application Serial No. 85226238.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
9

be refused. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed.
Cir. 2005); In re Box Solutions Corp., 79 USPQ2d 1953, 1954 (TTAB 2006).
The goods for which applicant seeks registration of the mark DX BIOSOLVE
are identical to the goods for which it seeks registration of DX BIOSCIENCES. As
discussed in detail in the preceding section, although the record establishes the
descriptive meaning of “DX” as an abbreviation for “diagnosis,” it does not establish
that applicant’s goods as now identified are for diagnostic uses or purposes.
Because we are not persuaded a disclaimer is needed, we reverse the requirement of
a disclaimer of the term “DX” under Trademark Act Section 2(e)(1) from the mark
DX BIOSCIENCES in Applications Serial Nos. 85226237 and 85226238.
Likelihood of Confusion (Applications Serial Nos. 85226237 and 85226238)
Finally, we address the refusal of each of the applications to register
DX BIOSOLVE on the basis of a likelihood of confusion with the registered mark
BIOSOLVE for “reagents used for the purification of biological materials for use in
scientific and research applications”26 pursuant to Trademark Act Section 2(d),
15 U.S.C. § 1052(d).
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key

26 Registration No. 3644373, issued June 23, 2009.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
10

considerations are the similarities between the marks and similarities or
relatedness of the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods and differences in the marks.”).
We discuss each of the du Pont factors as to which applicant or the examining
attorney submitted argument or evidence. To the extent that any other du Pont
factors for which no evidence or argument was presented may be applicable, we
treat them as neutral.
A. Similarity of the Marks
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.’” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). 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 they are sufficiently similar in
terms of their overall commercial impression so that confusion as to the source of
the goods offered under the respective marks is likely to result. Midwestern Pet
Foods Inc., v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435,
1440 (Fed. Cir. 2012); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
Serial Nos. 85226232, 85226234, 85226237, and 85226238
11

Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co.,
667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion.”). On the other hand, different
features may be analyzed to determine whether the marks are confusingly similar.
Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. In re Nat’l Data Corp., 224 USPQ at 751.
As noted, applicant’s mark is DX BIOSOLVE, and the cited mark is
BIOSOLVE. Applicant’s mark incorporates the entirety of the cited registered
mark. Likelihood of confusion has been found where the entirety of one mark is
encompassed by another. See, e.g., The Wella Corp, v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer
design for men’s cologne, hair spray, conditioner and shampoo likely to cause
confusion with the mark CONCEPT for cold permanent wave lotion and
neutralizer); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (“Richard Petty’s Accu
Serial Nos. 85226232, 85226234, 85226237, and 85226238
12

Tune” for automotive service centers specializing in engine tune-ups and oil changes
likely to cause confusion with “Accutune” automotive testing equipment.”).
We also find that BIOSOLVE is the dominant part of applicant’s mark.
Although the abbreviation “DX” appears first in applicant’s mark, we do not view it
as significantly impacting the commercial impression created by the dominant term
BIOSOLVE. While we have doubt whether “DX” is merely descriptive of applicant’s
identified goods, its significance as an indicator of source is weak at best, given that
it has an established meaning as an abbreviation for “diagnostic” in the medical
field and applicant’s goods are for medical and veterinary purposes. We view
BIOSOLVE as the more distinctive term that consumers will focus on and
remember. Moreover, there is no record evidence that BIOSOLVE is anything other
than a fanciful term coined by the registrant. See In re Ginc UK Ltd., 90 USPQ2d
1472, 1479 (TTAB 2007); see also Lois Sportswear, U.S.A., Inc. v. Levi Strauss &
Co., 799 F.2d 867, 230 USPQ 831, 834 (2d Cir. 1986) (stating that a fanciful mark
“is entitled to the most protection the Lanham Act can provide”).
We find in this case that the addition of term “DX” is not sufficient to
distinguish the marks in the context of applicant’s and registrant’s goods, and we
find the marks BIOSOLVE and DX BIOSOLVE to be similar in sight, sound,
meaning, and overall commercial impression. The similarity of the marks weighs
strongly in favor of a likelihood of confusion.
B. Similarity of the Goods
We turn next to the similarity of the goods, the second du Pont factor. The
issue, of course, is not whether purchasers would confuse the goods, but rather
Serial Nos. 85226232, 85226234, 85226237, and 85226238
13

whether there is a likelihood of confusion as to the source of these goods. In re Rexel
Inc., 223 USPQ 830, 831 (TTAB 1984).
As specified supra, registrant’s goods are “reagents used for the purification
of biological materials for use in scientific and research applications.”27 It is
applicant’s position that its goods are not competitive with the goods of the cited
registration. Applicant points out that the goods in the cited registration are not
identified as relating to cosmetic treatment, and argues that the cited registration
“describes goods that would be used in a lab (e.g., scientific and research
applications) whereas the goods associated with the DX BIOSOLVE mark would be
purchased and used by physicians or laypersons to remove cosmetic abnormalities
on skin tissue.”28
We reiterate first that the goods need not be identical or even competitive in
order for a likelihood of confusion to exist. See Recot, Inc. v. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are
different from, and thus not related to, one another in kind, the same goods can be
related in the mind of the consuming public as to the origin of the goods.”). It is
only necessary that there be a viable relationship between the two to support a
finding of likelihood of confusion. Gen. Mills Inc. v. Fage Dairy Processing Indus.,
100 USPQ2d 1584, 1597 (TTAB 2011); In re Concordia Int’l Forwarding Corp., 222
USPQ 355, 356 (TTAB 1983).

27 A “reagent” is “a substance which acts on another in a chemical reaction.” December 2,
2011 final Office action, Application Serial No. 85226238, at 65 (screenshot from Cambridge
Dictionaries Online).
28 Appeal Brief, Application Serial No. 85226237, at 15.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
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In making our determination regarding the relatedness of the goods, we must
look to the goods as identified in the application and the cited registration. See
Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65
(TTAB 1986) (“It is well settled that in a proceeding such as this, the question of
likelihood of confusion must be determined by an analysis of the marks as applied
to the goods identified in the application vis-a-vis the goods recited in the
registration, rather than what extrinsic evidence shows those goods to be.”).
Applicant argues that its goods are not competitive with the goods of the cited
registration, and that “the goods recited in the two marks would never be used
together or otherwise purchased by the same purchasers for the same or related
purposes.”29 We note that, while the cited registration does identify goods for use in
scientific and research applications, applicant’s goods are not restricted to purchase
by any certain class of customers or solely for the removal of cosmetic abnormalities
on skin tissue, but are identified more broadly as intended “for solubilizing tissue
for cosmetic purposes.” Thus, we assume that applicant’s goods too could be used in
scientific and research applications.
We address each of applicant’s two types of goods in turn.

29 Id.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
15

1. “Chemical preparations for medical and veterinary purposes for solubilizing
tissue for cosmetic purposes” (Application Serial No. 85226237)
The examining attorney submitted copies of 24 use-based registrations as
evidence of the relatedness of the goods.30 She argues that these registrations
show third-party marks used in connection with the same
or similar goods as those of both applicant and registrant
in this case. This evidence shows that the goods listed
therein, namely reagents and other chemical preparations
used for various diagnostic purposes, are of a kind that
may emanate from a single source under a single mark.31
Most of these registrations primarily relate to applicant’s goods before amendment,
that is, to diagnostic goods. Four of them, however, are of greater relevance:
• BIOTAGE for goods including “clinical reagents and chemical
substances for in vitro scientific use; chemical reagents and chemical
substances for industrial, scientific and laboratory use”; and “chemical
preparations for laboratory analysis,” all in International Class 1; and
“chemical-pharmaceutical preparations for medical, veterinary and
clinical use and analysis; chemical reagents for medical and veterinary
purposes”; “chemical reagents and preparations for medical and
veterinary use; clinical and diagnostic reagents and preparations for
medical and veterinary use” in International Class 5.32
• BECKMAN COULTER for goods including “reagents for medical use”
and “chemical preparations, namely, chemical reagents for medical
purposes” in International Class 5.33
• MININEPH PLUS for goods including reagents and biological reagents
for scientific research use in International Class 1; and “. . . general
purpose reagents for medical and veterinary diagnostic and clinical
use”; “biological and chemical preparations and reagents for medical or

30 Examiner’s brief, Application Serial No. 85226232, at unnumbered p. 12.; December 1,
2011 final Office action, Application Serial No. 85226237, at 72-147.
31 Examiner’s brief, Application Serial No. 85226232, at unnumbered p. 12.
32 Registration No. 3775113, December 1, 2011 final Office action, Application Serial
No. 85226237, at 72-75.
33 Registration No. 3842369, id. at 76-79.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
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veterinary use”; “clinical medical reagents”; and “reagents for medical
use” in International Class 5.34
• ACCUPOWER for goods including “chemical reagents for medical or
veterinary purposes” in International Class 5.35
These registrations demonstrate that applicant’s and registrant’s goods are of
a kind that may emanate from a single source under a single mark. In re Davey
Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). Although these registrations
are not evidence that the marks shown therein are in use or that the public is
familiar with them, they nonetheless have probative value to the extent that they
serve to suggest that the identified goods are products which are produced and/or
marketed by a single source under a single mark. See In re Anderson, 101 USPQ2d
1912, 1919 (TTAB 2012); Venture Out Props. LLC v. Wynn Resorts Holdings LLC,
81 USPQ2d 1887, 1893 (TTAB 2007). In this case, in view of the relationship
between the goods and their purposes, we find that these third-party use-based
registrations support the conclusion that the goods are related.36 Therefore, we find
that the second du Pont factor weighs in favor of a likelihood of confusion between
the mark in the cited registration and the DX BIOSOLVE mark in Application
Serial No. 85226237.

34 Registration No. 3871081, id. at 80-83.
35 Registration No. 3534181, id. at 132-34.
36 The examining attorney also offered various arguments regarding the diagnostic
purposes of the applicant’s goods. These arguments are not persuasive because applicant
has amended its identification of goods to eliminate reference to diagnostic purposes.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
17

2. “Medical apparatuses and instruments for solubilizing tissue for cosmetic
uses” (Application Serial No. 85226238)
The examining attorney argues that applicant’s “medical apparatuses and
instruments for solubilizing tissue for cosmetic uses” are used in conjunction with
goods of the type identified in the registration, that is, “reagents used for the
purification of biological materials for use in scientific and research applications.”37
Where goods at issue have complementary uses, and therefore are often used
together or otherwise purchased by the same purchasers for the same or related
purposes, such goods have generally been found to be sufficiently related such that
confusion would be likely if they are marketed under the same or similar marks.
See, e.g., In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984) (finding bread and cheese to be related because they are often
used in combination, and stating: “Such complementary use has long been
recognized as a relevant consideration in determining a likelihood of confusion.”);
Polo Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (finding bath
sponges and personal products such as bath oil and soap to be closely related
because they are complementary goods that are likely to be purchased and used
together by the same purchasers).
Applicant makes arguments identical to those that it made with respect to
Application Serial No. 85226237. Applicant points out that its goods identification
does not include or relate to purification of biological materials, while the goods

37 Examiner’s brief, Application Serial No. 85226234, at unnumbered p. 10.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
18

identified in the cited registration do not include or relate to any cosmetic uses, and
distinguishes their customers and use to which the goods would be put.38
The examining attorney argues that “excerpts from websites in the medical
technology field show that reagents are used in conjunction with medical
instruments used to analyze reagent solutions and test strips,” citing
http://products.invitrogen.com, www.i-cyt.com and www.human.de.39 Close scrutiny
of the screenshots of record indicates that the first two sites show the use of
reagents together with machinery, but that equipment is not specifically identified
as “medical apparatuses and instruments”; for example, the first page refers to “in
vitro diagnostic use” and does not specify whether it is intended for medical and
veterinary or scientific and research use.40 However, the final website does offer
both reagents and instruments in association with “clinical chemistry” and
references medical and veterinary applications, including urinalysis, blood
collection, and autoimmune diagnostics.41 In addition, the examining attorney
submitted a copy of the following use-based third-party registration covering both
reagents and medical apparatus and instruments:

38 Appeal Brief, Application Serial No. 85226238, at 14.
39 Examiner’s brief, Application Serial No. 85226234, at unnumbered p. 10; June 28, 2012
denial of request for reconsideration, Application Serial No. 85226238, at 69-77. We note
that the last of these websites has the German country code top-level domain, .de, although
the screenshots are in English. Information originating on foreign websites can carry some
probative value regarding U.S. consumer impression of a proposed mark. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007).
40 June 28, 2012 denial of request for reconsideration, Application Serial No. 85226238, at
69-73.
41 Id. at 76-77.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
19

• DAKOCYTOMATION for goods including “chemical reagents . . . for
use in research laboratories . . .” in International Class 1; “chemical
reagents and diagnostic preparations for clinical or medical laboratory
use and for veterinary purposes” and “clinical medical reagents” in
International Class 5; and “diagnostic apparatus and instruments for
medical use, namely, apparatus for staining and/or visualization of
tissue or cell based samples for diagnostic or medical use, apparatus
for detection of tissue or cell based samples and apparatus for high-
speed cell and/or bead sorting and analysis, all for medical purposes” in
International Class 10.42
Based on the record evidence, we find that the second du Pont factor supports
a conclusion that applicant’s goods are complementary with the goods in the cited
registration, and that confusion therefore is likely between the cited registration
and Application Serial No. 85226238.
C. Channels of Trade
Du Pont factor three is the similarity or dissimilarity of established, likely-to-
continue trade channels. Du Pont, 177 USPQ at 567. The examining attorney
characterizes similarity of the trade channels of the goods as one of the three du
Pont factors most relevant to this case.43 Applicant’s goods are for “medical and
veterinary purposes,” while the registered goods are for “scientific and research
applications.” As noted, applicant argues that registrant’s goods “would be used in
a lab (e.g., scientific and research applications) whereas the goods associated with
the DX BIOSOLVE mark would be purchased and used by physicians or laypersons

42 Registration No. 3075778, December 1, 2011 final Office action, Application Serial
No. 85226238, at 92-94.
43 Examiner’s brief, Applications Serial Nos. 85226232 and 85226234, at unnumbered p. 9.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
20

to remove cosmetic abnormalities on skin tissue.”44 Neither applicant nor the
examining attorney, however, provided any evidence regarding whether the trade
channels, which are not identical but appear to be related, are in fact related or
overlapping. We therefore find the third du Pont factor to be neutral.
D. Variety of Goods on Which a Mark Is or Is Not Used
Last, applicant argues that confusion is not likely because the cited
registration includes only a “single variety of goods.”45 This argument pertains to
du Pont factor 9, the variety of goods on which a mark is or is not used. While this
factor weighs slightly against a likelihood of confusion, we do not find that it
outweighs the key considerations of similarities of the marks and the goods.
E. Conclusion as to Likelihood of Confusion
In sum, we find that applicant’s mark DX BIOSOLVE is highly similar to the
registered mark BIOSOLVE, and that applicant’s goods are related (as to
Application Serial No. 85226237) and complementary (with respect to Application
Serial No. 85226238) to the registered goods. For both applications, we find that
the first du Pont factor weighs strongly in favor of a likelihood of confusion, while
the second weighs slightly in favor; the ninth factor weighs slightly in applicant’s
favor; and the remaining factors are neutral. Although our conclusion is not
without doubt, contrary to issues of descriptiveness, any doubt as to likelihood of
confusion must be resolved in favor of the prior registrant. Nike Inc., 85 USPQ2d at

44 Appeal Briefs, Application Serial No. 85226237, at 15; Application Serial No. 85226238,
at 14.
45 Appeal Briefs, Application Serial No. 85226237, at 16; Application Serial No. 85226238,
at 15.
Serial Nos. 85226232, 85226234, 85226237, and 85226238
21

1202; Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1514 (TTAB
2000). Therefore, we refuse registration of the mark DX BIOSOLVE due to a
likelihood of confusion with the registered mark BIOSOLVE pursuant to Section
2(d) of the Lanham Act.
Decision: We affirm the refusal to register Applications Serial Nos. 85226237
and 85226238 for the mark DX BIOSOLVE due to a likelihood of confusion with
prior Registration No. 3644373 for the mark BIOSOLVE pursuant to Section 2(d) of
the Trademark Act. We reverse the requirement that the term “DX” be disclaimed
from each of those marks pursuant to Section 6(a). We also reverse the refusal to
register Applications Serial Nos. 85226232 and 85226234 for the mark
DX BIOSCIENCES, with “BIOSCIENCES” disclaimed, on the ground that the
mark is merely descriptive of applicant’s identified goods under Section 2(e)(1).