Essenlix Corporation

Trademark Trial and Appeal Board

Feb 4, 2020

87819920 (T.T.A.B. Feb. 4, 2020)

Mailed: February 4, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Essenlix Corporation
_____
Serial No. 87819920
_____
Julian D. Gonzalez for Essenlix Corporation.

Tricia Sonneborn, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____
Before Kuczma, Adlin and Pologeorgis, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant Essenlix Corporation seeks registration of the mark ISTAIN in
standard characters for:
Medical diagnostic reagents and assays for testing of body
fluids, not including biochemicals and molecular biology
substances for laboratory use namely, antibodies, enzyme
substrates, immunohistochemical reagents, histochemical
reagents, biological reagents, immunoreagents, and cell
pathology substances, in International Class 5; and

Medical apparatus and instruments for diagnostic use,
namely, apparatus for medical diagnostic testing in the
fields of cancer or other tissue- based diagnostic testing,
cytology and cell-based testing; Medical devices for
obtaining body fluids samples; Medical diagnostic
instruments for the analysis of body fluids; Medical
diagnostic apparatus for testing cells and biomolecules; all
of the aforesaid not including medical apparatus,
instruments, and devices employing biochemicals and
This Opinion is Not a
Precedent of the TTAB
Serial No. 87819920
2
molecular biology substances for laboratory use namely,
antibodies, enzyme substrates, immunohistochemical
reagents, histochemical reagents, biological reagents,
immunoreagents, and cell pathology substances, in
International Class 10.1

The Examining Attorney 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 an
identical registered mark (ISTAIN in standard characters) for
Biochemicals and molecular biology substances for
laboratory use, namely, antibodies, enzyme substrates,
immunohistochemical reagents, histochemical reagents,
biological reagents, immunoreagents, and cell pathology
substances, in International Class 12

that use of Applicant’s mark in connection with Applicant’s goods is likely to cause
confusion. After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. Applicant and the Examining Attorney filed
briefs.
I. Examining Attorney’s Objection Sustained
With its Appeal Brief, Applicant submitted, for the first time, a list of 98 pending
trademark applications and 2 issued registrations. The Examining Attorney’s
objection to this evidence as untimely is sustained, because the record should be
complete prior to filing an appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). In
any event, because we cannot determine from the list which goods and services are

1 Application Serial No. 87819920, filed March 5, 2018 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based on an alleged intent to use the mark in commerce.
2 Registration No. 4091241, issued January 24, 2012; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged.
Serial No. 87819920
3
offered under the listed marks, even if we considered the list, it would have minimal
probative value. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17
(TTAB 2018) (“[T]he list does not include enough information to be probative. The list
includes only the serial number, registration number, mark, and status (live or dead)
of the applications or registrations. Because the goods are not listed, we do not know
whether the listed [applications or] registrations are relevant.”); see also Edom Labs.
Inc. v. Licher, 102 USPQ2d 1546, 1550 (TTAB 2012).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between 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.”).
A. Similarity of the Marks
The marks are identical in appearance, sound, meaning and overall commercial
impression. Applicant admits as much. 7 TTABVUE 5. This factor not only weighs
Serial No. 87819920
4
heavily in favor of finding a likelihood of confusion, but also reduces the degree of
similarity between the goods required to support a finding of likelihood of confusion.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time
Warner Ent. Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
B. The Goods, Channels of Trade and Classes of Consumers
During prosecution, Applicant amended its identification of goods to specifically
exclude, from both classes of its identified goods, all of Registrant’s goods, specifically
“biochemicals and molecular biology substances for laboratory use namely,
antibodies, enzyme substrates, immunohistochemical reagents, histochemical
reagents, biological reagents, immunoreagents, and cell pathology substances.”
Applicant argues that as a result of its exclusion of Registrant’s goods from its
identification, its goods and Registrant’s goods are not related. We disagree.
It is obvious from Applicant’s and Registrant’s identifications that the goods are
related. Registrant’s goods and Applicant’s Class 5 goods are all substances which
may be used by laboratories for medical and diagnostic purposes. More specifically,
as Applicant states, Applicant’s and Registrant’s goods all “relate to medical
diagnostic reagents, assays for testing of body fluids, and Medical apparatus and
instruments for diagnostic use, and biochemical and molecular biology substances for
laboratory use.” 7 TTABVUE 7. Similarly, Registrant’s goods and Applicant’s Class
10 goods may be used by laboratories for medical or diagnostic purposes.
While Applicant’s Class 10 goods (medical apparatus and instruments) are
obviously different from Registrant’s “biochemicals and molecular biology substances
Serial No. 87819920
5
for laboratory use” and Applicant’s Class 5 goods (medical diagnostic reagents and
assays) are obviously not comprised of the same ingredients as Registrant’s goods,
the goods as identified may nevertheless be used for the same purpose (medical or
diagnostic testing), and by the same consumers (laboratories).
As we consider these goods, we must keep in mind that they need not be identical
or even competitive in order to find a likelihood of confusion. Rather, the question is
whether the goods are marketed in a manner that “could give rise to the mistaken
belief that [the] goods emanate from the same source.” Coach Services Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also Hewlett-Pack-
ard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)
(“Even if the goods and services in question are not identical, the consuming public
may perceive them as related enough to cause confusion about the source or origin of
the goods and services.”); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000) (“even 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”); Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1109 (2007). Here, because the goods as identified would be offered to
at least some of the same types of customers, for similar purposes, under identical
marks, relevant consumers could very well believe that they emanate from the same
source.
Serial No. 87819920
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Furthermore, as identified, the goods may be complementary, to the extent that
Registrant’s biochemical and molecular biology substances may be used with
Applicant’s substances, apparatus or instruments to conduct the same test, research
the same subject or perform parts of the same task. It is settled that complementary
goods may be found related. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); General Mills, Inc. v. Fage Dairy
Processing Indus. SA, 100 USPQ2d 1584, 1597-98 (TTAB 2011), judgment set aside
on other grounds, 110 USPQ2d 1679 (TTAB 2014); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1272 (TTAB 2009).
We recognize that the goods may not be complementary as used by Applicant’s
and Registrant’s customers or potential customers in the “real world,” and that
Applicant’s and Registrant’s goods may be used for different tests or procedures, but
that is not relevant here. We must confine our decision to the goods as identified in
the cited registration and involved application. Indeed, “[i]t is well established that
the Board may not read limitations into an unrestricted registration or application.”
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017)
(citing SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
and 15 U.S.C. § 1057(b)); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“It was proper, however, for the
Board to focus on the application and registrations rather than on real-world
conditions ….”). The point here is that the goods, as identified, could be used in a
complementary manner.
Serial No. 87819920
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Finally, the Examining Attorney has introduced a number of use-based third-
party registrations showing that the same marks are registered in connection with
Registrant’s goods (or similar or encompassing goods) on the one hand and
Applicant’s goods (or similar or encompassing goods) on the other. Specifically:
Mark/Reg. No. Goods Similar to
Registrant’s
Goods Similar to
Applicant’s

(RN 3479719)
“biological reagents … and
antibodies for scientific
research use”

“test kits comprised of …
antibodies … for scientific and
research use”

“test kits comprised of
reagents … for scientific and
research use using … body
fluids”

“medical diagnostic reagents
and asssays for testing of
body fluids”

“diagnostic and
immunological test kits
consisting of reagents … all
for use in measuring the
concentration of proteins,
antibodies, antigens and
other substances in blood,
other body fluids and body
tissues, or extracts thereof… “

“electronic apparatus for
electrophysiological
measurement and testing of
cells”

“apparatus for blood, urine
and serum analysis”
ABBOTT
(RN 4023123)
“chemical reagents, namely,
reagent strips for body fluid
testing for use in the scientific
research industry”
“chemical reagents, namely,
reagent strips for body fluid
testing for use in the scientific
research industry”

“medical diagnostic
apparatus used to detect and
Serial No. 87819920
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Mark/Reg. No. Goods Similar to
Registrant’s
Goods Similar to
Applicant’s
measure the level of
substances in body fluids”
ALERE
(RN 4760465)
“chemical preparations for
scientific purposes”

“reagents for chemical
analysis”

“medical diagnostic reagents;
reagents for medical use”
“chemical preparations for
scientific purposes”

“reagents for chemical
analysis”

“medical diagnostic reagents;
reagents for medical use”

“blood testing apparatus”
QUIDEL
(RN 5110309)
“diagnostic reagent test kits
comprised of monoclonal
antibodies, buffers, and
reagents for clinical or
medical laboratory, scientific
or research use”
“diagnostic reagent test kits
comprised of monoclonal
antibodies, buffers, and
reagents for clinical or
medical laboratory, scientific
or research use”

“medical diagnostic analyzers
for measuring, testing and
analyzing blood and other
bodily fluids”

(RN 5302059)
“diagnostic reagents for
clinical or medical laboratory
use”

“pre-packaged diagnostic
reagents for use with
chemical analyzers for clinical
medical laboratory use”
“diagnostic reagents for
clinical or medical laboratory
use”

“pre-packaged diagnostic
reagents for use with
chemical analyzers for
clinical medical laboratory
use”

“medical diagnostic
apparatus for blood analysis”
Serial No. 87819920
9
Mark/Reg. No. Goods Similar to
Registrant’s
Goods Similar to
Applicant’s

(RN 5692338)
“reagents for scientific and
medical research use”

“chemical reagents, namely,
reagent strips for body fluid
testing for use in the scientific
research industry”

“diagnostic biological
reagents and chemical
reagents for medical
purposes”

“medical diagnostic assays for
testing of bodily fluids and
tissue in the detection,
monitoring, and prediction of
disease or other conditions”
“reagents for scientific and
medical research use”

“chemical reagents, namely,
reagent strips for body fluid
testing for use in the scientific
research industry”

“diagnostic biological
reagents and chemical
reagents for medical
purposes”

“medical diagnostic assays for
testing of bodily fluids and
tissue in the detection,
monitoring, and prediction of
disease or other conditions”

“… equipment for obtaining
and testing bodily fluids for
medical diagnosis; blood
analyzing instrument for
medical diagnostic purposes
and disposable cartridges and
reagents for use therein;
medical diagnostic apparatus
for the analysis of body fluids
used to detect and measure
the level of substances in
body fluids; clinical chemistry
analyzers for medical
diagnostic use in testing
bodily fluids; blood analyzing
instruments and systems for
medical diagnostic purposes;
medical diagnostic analyzers
for measuring, testing and
analyzing body fluids”
Serial No. 87819920
10
Mark/Reg. No. Goods Similar to
Registrant’s
Goods Similar to
Applicant’s
RHEALTH
(RN 5597625)
“assays, reagents, and
microparticles in the nature of
reagents for clinical or
medical laboratory, scientific
or research purposes;
diagnostic and screening
assays, reagents, and
microparticles in the nature of
reagents for clinical or
medical laboratory, scientific
or research use”
“assays, reagents, and
microparticles in the nature
of reagents for clinical or
medical laboratory, scientific
or research purposes;
Diagnostic and screening
assays, reagents, and
microparticles in the nature
of reagents for clinical or
medical laboratory, scientific
or research use”

“diagnostic apparatus for the
detection of blood analytes for
clinical or medical laboratory,
scientific or research use;
Diagnostic apparatus
containing microparticles or
reagents for the detection of
analytes for clinical or
medical laboratory, scientific
or research use”

“medical diagnostic
apparatus for processing a
patient's bodily fluid or cell
sample”

May 6, 2019 Office Action TSDR 4-30. “Third-party registrations which cover a
number of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial scale
or that the public is familiar with them, may nevertheless have some probative value
to the extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998).
Serial No. 87819920
11
In this case, the third-party registration evidence is probative for another reason.
It shows that third parties in Applicant’s and Registrant’s field often identify their
goods broadly, in a way which encompasses some of both Applicant’s goods and
Registrant’s goods, even though Applicant’s goods specifically exclude Registrant’s.
For example, a number of the third-party registrations identify reagents for
laboratory, medical or diagnostic use, or testing, without identifying the specific type
of reagents. This indicates that the sources of these types of reagents may offer
different types of reagents, perhaps including the same types used by Applicant and
the same types used by Registrant. Furthermore, we should point out that Applicant’s
original identification of goods in Class 5 was simply “medical diagnostic reagents
and assays for testing of bodily fluids,” and its original identification of goods in Class
10 did not exclude the chemicals and substances identified in the cited registration.
This may also indicate that there is a relationship between Applicant’s and
Registrant’s goods. Cf. Octocom Systems Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1786 (Fed. Cir. 1990) (finding a relationship between the
applicant’s “modems” and the opposer’s “computer programs,” holding that the
relationship between the goods “is shown,” in part, “by [applicant’s] original
application, which indicates [applicant] itself used the mark OCTOCOM for both
modems and computer programs”).
Serial No. 87819920
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In short, considering Applicant’s and Registrant’s identifications of goods, and the
record as a whole, it is clear that the goods are related. This factor also weighs in
favor of finding a likelihood of confusion.3
Furthermore, the goods will travel in at least some of the same channels of trade
to at least some of the same classes of consumers. Indeed, Registrant’s goods are
specifically for “laboratory use.” Laboratories would obviously also be an important
market and customer base for Applicant’s “medical diagnostic” goods, and its “medical
apparatus and instruments for diagnostic use.” As Applicant itself states, the
purchasers of Applicant’s and Registrant’s goods are “people or companies whom
conduct research, such as medical doctors, scientists, professors, graduate students,
and the like,” and those “who work for large corporations, such as laboratories,
pharmaceutical companies, research institutions.” 7 TTABVUE 7. These factors also
weigh in favor of finding a likelihood of confusion.
C. Purchaser Care and Sophistication
Applicant’s argument that purchasers of Applicant’s and Registrant’s goods will
tend to be “sophisticated” and careful is unsupported by any evidence. Nevertheless,
we assume that purchasers of these goods will be somewhat sophisticated and likely

3 Applicant’s focus on the international classes in which Applicant’s and Registrant’s goods
reside is misplaced. The classes are irrelevant. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29
USPQ2d 1771, 1774 (Fed. Cir. 1993) (stating that classification is for the convenience of the
USPTO and “wholly irrelevant to the issue of registrability under section 1052(d), which
makes no reference to classification”); See also In re Detroit Athletic Co., 903 F.3d 1297, 128
USPQ2d 1047, 1051 (Fed. Cir. 2018) (difference in classification “does not alter our
conclusion”).

Serial No. 87819920
13
careful, as they will be searching for specific product features depending on their
technical research and diagnostic goals. This factor therefore weighs against finding
a likelihood of confusion.
III. Conclusion
The marks are identical, the goods are related and the channels of trade and
classes of consumers overlap. While we assume that the relevant consumers will
exercise care in purchasing Applicant’s and Registrant’s goods, they will encounter
those goods in the same channels of trade and under identical marks. As a result,
consumers’ sophistication and care will not be enough to prevent confusion. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle
Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970); see also, HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819
(TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods).

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.