Merck KGAA

Trademark Trial and Appeal Board

Sep 23, 2005

No. 78212355 (T.T.A.B. Sep. 23, 2005)

Mailed:
Sept. 23, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Merck KGAA
________

Serial No. 78212355
_______

H. John Campaign and John M. Keene of Graham, Campaign P.C.
for Merck KGAA.

Tracy L. Fletcher, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______

Before Walters, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark DUOPATH (in standard character form) for goods
identified in the application (as amended) as “qualitative
and quantitative assay products, namely, diagnostic
reagents for scientific or research use in the field of
food hygiene,” in International Class 01, and “qualitative
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78212355
2
assays, namely medical reagents for use in in-vitro-
diagnostic procedures in human and veterinary medicine,” in
International Class 05.1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to applicant’s goods, so resembles the
mark DUOSET, previously registered on the Principal
Register for “biological reagents for use in research
applications to identify cytokines by immunoassay,”2 in
International Class 01, as to be likely to cause confusion,
to cause mistake, or to deceive. See Trademark Act Section
2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal to register.
The appeal is fully briefed, but no oral hearing was
requested.
Initially, we must discuss certain evidentiary
matters. First, we have given no consideration to
applicant’s bare assertion, in its main appeal brief, that

1 Serial No. 78212355, filed on February 7, 2003. The bases for
registration originally were intent-to-use under Trademark Act
Section 1(b), 15 U.S.C. §1051(b), and Trademark Act Section
44(e), 15 U.S.C. §1126(e). Applicant subsequently deleted the
Section 1(b) basis, and the application now is based solely on
Section 44(e). The Section 44(e) basis is based, in turn, on
applicant’s ownership of German Registration No. 302 38 245,
which expires on August 31, 2012.

2 Registration No. 2103520, issued October 7, 1997; affidavits
under Trademark Act Sections 8 and 15 accepted and acknowledged.
Ser. No. 78212355
3
“there are over 330 live applications and registrations for
marks containing the term DUO.” The record does not
support this assertion, nor is this assertion a matter of
which we will take judicial notice. Second, applicant has
attached to its reply brief, and requests that we take
judicial notice of, a TESS listing showing eighty-six
applications and registrations of marks containing the term
DUO in International Classes 01 and 05. This evidence is
not of a type of which we will take judicial notice.
Moreover, the listing fails to show what are the goods or
services identified in these applications and
registrations. Most importantly, this evidence is untimely
and therefore will not be considered. See Trademark Rule
2.142(d), 37 C.F.R. §2.142(d). Third, applicant, in its
reply brief, has requested that we take judicial notice
that “[an] online search of the term DUO via GOOGLE
produced about 15,500,000 hits.” Again, this assertion is
not supported by the record, is not something of which we
will take judicial notice, and is untimely under Trademark
Rule 2.142 in any event. However, we shall take judicial
notice of the dictionary definition of “duo” which
applicant has attached to its reply brief, and of the
dictionary definition of “cytokine” attached to its main
brief. (We note that the Trademark Examining Attorney has
Ser. No. 78212355
4
attached the same definition of “cytokine” to her brief on
appeal.3
As for the Trademark Examining Attorney’s evidence, we
note that, with her final Office action, she submitted
printouts from various Internet websites. The copies of
these printouts, as they appear in the record, contain
neither the URL addresses for the various websites, nor the
date of the search in which the website printouts was made.
However, applicant has not objected to this evidence on
that (or any other) basis, and, in its main appeal brief,
has included these printouts in its listing of the evidence
of record, stating further that the printouts resulted from
a search conducted on May 14, 2004 (the date of mailing of
the final Office action). In these circumstances, we deem
the website printouts to be of record.
Thus, the evidence of record on appeal consists of the
following: the dictionary definition of “cytokine” from
Stedman’s Medical Dictionary (27th ed.), submitted
separately by both applicant and the Trademark Examining
Attorney; the dictionary definition of “duo” from Webster’s
Ninth New Collegiate Dictionary), submitted by applicant

3 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); TBMP §704.12(a)(2d ed. rev. 2004).

Ser. No. 78212355
5
with its reply brief; the Trademark Examining Attorney’s X-
Search evidence, attached to her final Office action, which
shows that there are only two X-search listings
(applicant’s application and the cited registration)
retrieved by a search for applications or registrations
with “DUO” as part of the mark and in which the term
“reagents” appears in the identification of goods; and the
Internet website printouts attached to the Trademark
Examining Attorney’s final Office action.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Company, Inc., 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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a comparison of the marks DUOPATH and
DUOSET, under the first du Pont factor. We must determine
Ser. No. 78212355
6
whether the marks are similar or dissimilar when compared
in their entireties in terms of appearance, sound,
connotation and commercial impression.
The term “duo,” in its combining form, is defined as
“two.” Webster’s Ninth New Collegiate Dictionary (1990) at
389. We agree with applicant’s contention that “duo,” so
defined, is a common English word or prefix, and that it
therefore is weak as used in the respective marks. We also
agree with applicant’s contention that the marks, viewed in
their entireties, do not look or sound alike, that they
have different meanings (“two paths” versus “two sets”),
and that the overall commercial impressions of the marks
are different. The fact that both marks start with the
term DUO is not sufficient to render the marks similar when
viewed in their entireties. Rather, we find that the
presence of the very different words PATH and SET in the
respective marks outweighs the only point of similarity
between the marks, i.e., the presence in each mark of the
combining form DUO. Overall, we find that the marks are
dissimilar.
Turning next to the issue of the similarity or
dissimilarity of the goods under the second du Pont factor,
we note that both applicant and the Trademark Examining
Ser. No. 78212355
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Attorney rely on the following dictionary definition (in
pertinent part) of “cytokine”:

Any of numerous hormonelike, low-molecular-
weight proteins, secreted by various cell
types, that regulate the intensity and duration
of immune response and mediate cell-cell
communication. … Cytokines are produced by
macrophages, B and T lymphocytes, mast cells,
endothelial cells, fibroblasts, and stromal
cells of the spleen, thymus and bone marrow.
They are involved in mediating immunity and
allergy and in regulating the maturation,
growth and responsiveness of particular cell
populations, sometimes including the cells that
produce them (autocrine activity). A given
cytokine may be produced by more than one type
of cell. Some cytokines enhance or inhibit the
action of other cytokines. … Cytokines have
been implicated in the generation and recall of
long-term memory and the focusing of attention.
Some of the degenerative effects of aging may
be due to a progressive loss of regulatory
capacity by cytokines. Because cytokines
derived from the immune system (immunokines)
are cytotoxic, they have been used against
certain types of cancer.

Stedman’s Medical Dictionary (27th Edition 2000) at 452.
First, we note that the Trademark Examining Attorney
has offered no evidence or argument demonstrating that
applicant’s Class 01 goods, “qualitative and quantitative
assay products, namely, diagnostic reagents for scientific
or research use in the field of food hygiene,” are related
to the goods identified in the cited registration. In view
thereof, and given the dissimilarity of the marks, we find
Ser. No. 78212355
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that the Section 2(d) refusal as it pertains to applicant’s
Section 01 goods must be reversed.
As for the Section 2(d) refusal as it applies to
applicant’s Class 05 goods, we note that the Trademark
Examining Attorney has submitted evidence, i.e., the
website printouts from various companies, which, she
argues, show the relatedness of applicant’s Class 05 goods
and registrant’s Class 01 goods. However, we are not
persuaded that this evidence establishes that the goods are
related, for likelihood of confusion purposes. The goods,
as identified in the application and registration, appear
to be used in different settings for different purposes.
Even if the goods were to be considered to be related,
we find that the marks are sufficiently dissimilar to avoid
a finding of likelihood of confusion.
Moreover, we agree with applicant’s contention that
the purchasers of these goods, i.e., professionals in the
scientific and medical fields, are technically
sophisticated and careful purchasers of these types of
goods, a fact which further reduces any likelihood of
source confusion.
In summary, even if we assume that some relationship
between registrant’s goods and applicant’s Class 05 goods
Ser. No. 78212355
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exists,4 that fact is outweighed in this case by the overall
dissimilarity of the marks, and the sophistication of the
purchasers and the care with which purchases of these
products would be made.
Decision: The Section 2(d) refusal is reversed.

4 Again, there is no evidence from which we might conclude that
applicant’s Class 01 goods are related to registrant’s goods.
See supra at pp. 7-8.