Enzo Life Sciences, Inc.

Trademark Trial and Appeal Board

May 15, 2018

No. 86861563 (T.T.A.B. May. 15, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 15, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Enzo Life Sciences, Inc.
_____

Serial No. 86861563
_____

Laura E. Smith of Enzo Life Sciences, Inc.,
for Enzo Life Sciences Inc.
Janet H. Lee, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
_____

Before Kuhlke, Greenbaum and Larkin,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Enzo Life Sciences, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark NEXT GENERATION BDNA (in standard characters, BDNA disclaimed)
for
Reagents for use in amplification of nucleic acid for
scientific research purposes; Diagnostic reagents for
scientific research purposes for use in amplification of
nucleic acid; Reagent kits comprising reagents for
amplification of nucleic acid for scientific research
purposes; Reagent kits comprising diagnostic reagents for
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scientific research purposes for amplification of nucleic
acid in International Class 1.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when applied to Applicant’s goods, so resembles the previously
registered mark NEXT GENERATION IN RNAI (in standard characters, RNAI
disclaimed) for “Reagents for research purposes” in International Class 1, as to be
likely to cause confusion, mistake or deception.2 The Examining Attorney also refused
registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the
identified goods.
When the refusals were made final, Applicant appealed. After Applicant filed its
brief, the Examining Attorney requested remand to supplement the record with
evidence that she inadvertently had omitted when she issued the final Section 2(d)
refusal, and to withdraw the Section 2(e)(1) refusal. The Board granted the request,
remanded the application, and suspended action on the appeal. On remand, the
Examining Attorney issued another final refusal solely on the Section 2(d) grounds,
and withdrew the Section 2(e)(1) refusal. Upon resumption of the proceeding,

1 Application Serial No. 86861563 was filed on December 30, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
2 Registration No. 4012215 issued on August 16, 2011. Section 8 accepted and Section 15
acknowledged.
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Applicant filed a supplemental brief, and the Examining Attorney’s brief followed.
We affirm the refusal to register.
I. Evidentiary Issue
In its Supplemental Brief, Applicant objects to the remand and asks the Board not
to consider the evidence attached to the September 19, 2017 Final Office Action
because the Examining Attorney erroneously cited 37 C.F.R. § 2.142(f)(6) rather than
37 C.F.R. § 2.142(d) as the basis for the remand.3 Applicant does not address the
probative value of this evidence. However, as the Examining Attorney points out in
her brief, she correctly stated the reason for the request even though she cited the
wrong subsection of the rule.4 Moreover, the evidence attached to the September 19,
2017 Final Office Action bears a June 1, 2016 date stamp, the same date on which
the Examining Attorney issued her second Office Action, and in her June 1, 2016
Office Action and December 17, 2016 Final Office Action, she referred to that evidence
as having been attached to the June 1, 2016 Office Action. Therefore, there is no
question that the evidence was timely gathered, and Applicant does not contend
otherwise. The Examining Attorney simply did not attach the evidence to her June
1, 2016 Office Action although she clearly believed that she had done so. When she
discovered the oversight, she followed the proper procedure, and requested remand
so that she could make the evidence of record. The objection is overruled.

3 10 TTABVUE 3.
4 14 TTABVUE 4.
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II. Applicable Law – Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out 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., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (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 below these and other relevant factors. See
M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed.
Cir. 2006) (even within du Pont list, only factors that are “relevant and of record”
need be considered). See also In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont
factors for which there is record evidence but ‘may focus … on dispositive factors,
such as similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l,
Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Relatedness of the Goods and Channels of Trade
With regard to the goods and channels of trade, we must make our determinations
under these factors based on the goods as they are identified in the application and
registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
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1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston
Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
In this case, the broadly worded “Reagents for research purposes” identified in the
registration encompass, and therefore are legally identical to, the “Reagents for use
in amplification of nucleic acid for scientific research purposes; Diagnostic reagents
for scientific research purposes for use in amplification of nucleic acid; Reagent kits
comprising reagents for amplification of nucleic acid for scientific research purposes;
Reagent kits comprising diagnostic reagents for scientific research purposes for
amplification of nucleic acid” identified in the application.
Applicant acknowledges that as written, the description of goods in the
registration “could encompass” the description of goods in the application.5
Nonetheless, Applicant argues that the actual goods offered by the registrant “would
not” encompass those offered by Applicant because Applicant’s goods are for gene
amplification while the registrant’s goods are for gene silencing, which are “two
diametrically opposed purposes.”6 However, what Applicant and the registrant
actually offer under their respective marks is not relevant. We are bound by the
identifications of goods in the application and registrations, respectively, and cannot
limit the goods to what Applicant’s evidence shows them to be. Stone Lion, 110

5 Applicant’s Brief, 4 TTABVUE 11.
6 Id.
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USPQ2d at 1162; see also In re Thor Tech Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)
(“we must also analyze the similarity or dissimilarity and nature of the goods based
on the description of the goods set forth in the application and the registration at
issue … we may not limit or restrict the trailers listed in the cited registration based
on extrinsic evidence”).
Further, because the goods are legally identical, and as identified, are not limited
to any specific channels of trade, we must presume that the trade channels and
classes of purchasers are the same. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (Board “was entitled to rely on this legal presumption in
determining likelihood of confusion.”). See Stone Lion, 110 USPQ2d at 1161-1162;
Hewlett-Packard, 62 USPQ2d at 1005; Octocom, 16 USPQ2d at 1787. Applicant
confirms this presumption by pointing out, in conjunction with its argument
concerning the level of purchasing care (which we address below), that the goods
identified in the application and registration are “scientific research materials” that
are “sold through distributors who specialize in life science research products or on
the websites of the respective parties….”7
In view of the foregoing, the du Pont factors regarding the similarity of the goods
and the channels of trade favor a finding of a likelihood of confusion.

7 Applicant’s Brief, 4 TTABVUE 15.
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B. The similarity or dissimilarity of the marks
Under this factor, we compare Applicant’s mark NEXT GENERATION BDNA and
the registrant’s mark NEXT GENERATION IN RNAI “in their entireties as to
appearance, sound, connotation and commercial impression.” Viterra, 101 USPQ2d
at 1908 (quoting du Pont, 177 USPQ at 567). See also Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but
instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the parties.” i.am.symbolic, 123 USPQ2d at 1748 (quoting Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012)) (internal quotation omitted). Further, marks “‘must be considered … in
light of the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus
is on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB
2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). As
discussed below, because the goods are reagents, the relevant purchasers are
professionals with a technical background who exercise a heightened degree of
purchasing care.
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“[S]imilarity is not a binary factor but is a matter of degree.” St. Helena Hosp., 113
USPQ2d at 1085 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059
(Fed. Cir. 2003)). Further, when the goods are identical or legally identical, as here,
the degree of similarity between the marks necessary to support a determination that
confusion is likely declines. See Bridgestone Ams. Tire Operations LLC v. Fed. Corp.,
673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Viterra, 101 USPQ2d at
1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010);
Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992).
The marks are nearly identical in terms of sound, appearance and commercial
impression. They both start with the identical words NEXT GENERATION and end
with acronyms consisting of four letters. The acronyms BDNA and RNAI,
respectively, stand for “branched DNA,” which is a “signal amplification technology,”8
and “RNA interference,” which is a method of gene silencing.9 BDNA and RNAI are
at least descriptive of the identified goods, and the terms appropriately have been
disclaimed in the application and cited registration. Further, the preposition IN in

8 December 17, 2016 Final Office Action, TSDR 10-12
(http://www.acronymfinder.com/Branched-DNA-(biochemistry)-(bDNA).html) and TSDR 13-
15 (http://www.Acronymfinder.com/Ribonucleic-Acid-Interference-(RNAi).html), both
accessed December 17, 2016. See also April 16, 2016 Response to Office Action, TSDR 5: “The
Examining Attorney is advised that the letters ‘BDNA’ are a recognized abbreviation for
‘branched’ DNA, an assay that is a signal amplification assay (as opposed to a target
amplification assay) which is used to detect nucleic acid molecules.” Citations to the TSDR
database are to the downloadable .pdf format.
9 April 16, 2016 Response to Office Action, TSDR 38
(http://biotechterms.org/sourcebook/saveidretrieve.php3?id=776).
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the registrant’s mark simply connects the disclaimed term RNAI to the preceding
words NEXT GENERATION. “[I]n articulating reasons for reaching a conclusion on
the issue of confusion, 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 that
the ultimate conclusion rests on consideration of the mark in their entireties.” In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Stone
Lion, 110 USPQ2d at 1161.
In this case, we agree with Applicant that the wording NEXT GENERATION is
conceptually weak as it frequently is used in the life sciences field to refer to “cutting
edge” or “next generation” methods and technologies for gene sequencing (“NGS”).10
However, because consumers are more likely to focus on the first word or words in a
trademark, the appearance of the identical wording “NEXT GENERATION” at the
beginning of both marks reduces the possible influence of the differing, non-source
identifying wording at the end of the marks. See Palm Bay, 73 USPQ2d at 1692
(“VEUVE … remains a ‘prominent feature’ as the first word in the mark and the first
word to appear on the label”); In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d
1738, 1742 (TTAB 2016) (confusing similarity of MT. RAINER and MOUNT RAINER
marks heightened by placement as first words of the marks); Presto Prods. Inc. v.
Nice-Pak Prods., 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

10 App. Br., 4 TTABVUE 6, referencing Exhibits I, II, and III appended to Applicant’s April
16, 2016 Response to Office Action, TSDR 18-41.
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remembered”). See also Century 21 Real Estate Corp., 23 USPQ2d at 1700 (upon
encountering the marks, consumers must first notice the identical lead word).
Applicant argues that the differences engendered by the acronyms BDNA and
RNAI are sufficient to distinguish the marks because, as mentioned above, these
terms inform consumers that that the goods are used for different purposes. We are
not persuaded by this argument. The Examining Attorney submitted excerpts from
the commercial websites of Bioneer, GE Life Sciences, Qiagen, Sigma-Aldrich, and
ThermoFisher showing that reagents for amplification (BDNA) and reagents or
assays for gene silencing (RNAI) emanate from the same source.11 Such evidence
supports a finding that consumers of reagents would be aware that the same
companies produce reagents for both amplification and gene silencing. This evidence
further supports a finding that consumers who are familiar with the registrant’s
mark NEXT GENERATION IN RNAI likely would perceive Applicant’s mark NEXT
GENERATION BDNA as a product line extension of the registrant’s mark, with both
marks identifying reagents made by a common source.
While we recognize the common element NEXT GENERATION is inherently
weak, NEXT GENERATION has more source identifying capability than the
acronyms BDNA and RANI. In addition, as noted above, NEXT GENERATION
appears in the initial position in each mark, and the marks are quite similar in
structure in that both end with a four letter acronym that is at least descriptive of

11 September 19, 2017 Supplemental Final Office Action (following remand), 8 TTABVUE 9-
37.
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the identified goods and appropriately has been disclaimed. In view thereof, in this
case, despite the inherent weakness of the marks overall, we find that the additional
terms BDNA and IN RNAI are not sufficient to distinguish the marks. See, e.g., King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974) (“Confusion is confusion. The likelihood thereof is to be avoided, as much
between ‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’
mark.”); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010) (“even
suggestive or weak marks are entitled to protection from the use of a very similar
mark for legally identical [goods or] services”).
Finally, Applicant’s standard character mark and the registrant’s standard
character mark are not limited to any particular depiction. The rights associated with
a standard character mark reside in the wording and not in any particular display.
In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Prods.
Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP § 1207.01(c)(iii) (October 2017). We
must consider Applicant’s and the registrant’s standard character marks “regardless
of font style, size, or color.” Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d
1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011), including iterations that
deemphasize the last terms in each mark.
We find that, viewed as a whole, the similarities between the marks in
appearance, sound, connotation and commercial impression, due to the identical
words NEXT GENERATION, and the nearly identical structure of the marks,
outweigh the dissimilarities. Stone Lion, 110 USPQ2d at 1161. In view thereof, the
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du Pont factor of the similarity of the marks favors a finding of a likelihood of
confusion.
C. Purchasing Conditions
Finally, we address Applicant’s contention that customers of reagents are highly
sophisticated and therefore will exercise great care in their product selection.
According to Applicant:
The goods are not basic food items purchased in a casual
manner but scientific research materials purchased by
researchers who are knowledgeable and sophisticated and
make purchase[s] affecting their research with care.
Moreover, the goods of the respective parties are not simply
sold in stores, but rather are sold through distributors who
specialize in life science research products or on the
websites of the respective parties thereby minimizing any
confusion as to the source of the goods.12
This argument concerns the fourth du Pont factor, the “conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
du Pont, 177 USPQ at 567.
While Applicant did not submit any evidence regarding this factor, we recognize
that given the specialized nature of the goods, they are likely to be not inexpensive,
and subject to careful purchase. Nonetheless, even if we accept that consumers of
reagents are discriminating, it is settled that even sophisticated purchasers are not
immune from source confusion, especially where the marks are so similar and the
goods are legally identical. See In re Research Trading Corp., 793 F.2d 1276, 230
USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden

12 Applicant’s Brief, 4 TTABVUE 15.
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Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers … are not infallible.”)); In re Decombe, 9 USPQ2d 1812,
1814-15 (TTAB 1988). In view thereof, although this du Pont factor slightly favors
Applicant, it does not outweigh the other factors.
III. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, as they pertain to the relevant du Pont factors. To
the extent that any other du Pont factors for which no evidence is of record may
nonetheless be applicable, we treat them as neutral. We conclude that Applicant’s
mark NEXT GENERATION BDNA is highly similar to the cited mark NEXT
GENERATION IN RNAI, and that the goods identified in the application and
registration are legally identical and move through the same channels of trade. We
further find that the purchasing conditions do not outweigh these factors. We
therefore find that Applicant’s mark is likely to cause confusion with the cited mark
when used on or in connection with the goods identified in the application.
Decision: The refusal to register Applicant’s mark based on Section 2(d) of the
Trademark Act is affirmed.