Proove Biosciences, Inc.

Trademark Trial and Appeal Board

Jun 15, 2015

No. 86085516 (T.T.A.B. Jun. 15, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: June 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Proove Biosciences, Inc.
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Serial No. 86085516
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Patrick R. Delaney of Ditthavong & Steiner PC,
for Proove Biosciences, Inc.
Emily Chuo, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Quinn, Bucher and Kuzma,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Proove Biosciences, Inc. (“Applicant”), a corporation based in Irvine, CA, seeks
registration on the Principal Register of the mark PROOVE (in standard character
format) for
“genetic tests comprised of DNA detection reagents to
medical doctors, genetic scientists and healthcare
professionals; assays or reagents in the nature of DNA
detection chemicals and biologicals for use in genetic
research to medical doctors, genetic scientists and
healthcare professionals” in International Class 1;
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“preparations in the nature of DNA detection chemicals
and biologicals for detecting genetic predispositions for
health treatment purposes to medical doctors, genetic
scientists and healthcare professionals” in International
Class 5; and
“consulting services in the fields of laboratory genetic
testing or pharmacogenetics to medical doctors, genetic
scientists and healthcare professionals; genetic testing for
scientific and medical research purposes to medical
doctors, genetic scientists and healthcare professionals;
providing information in the field of pharmacogenetics or
genetic research resources to medical doctors, genetic
scientists and healthcare professionals; providing genetic
testing services or information in the field of
pharmacogenetics or genetic research for scientific
research purposes to medical doctors, genetic scientists
and healthcare professionals; research in the field of
genetics or pharmacogenetics; services in the nature of
providing genetic testing results for scientific research
purposes to medical doctors, genetic scientists and
healthcare professionals” in International Class 42.1
The Trademark Examining Attorney has taken the position that Applicant’s
mark, when used on or in connection with the goods and services of Applicant so
resembles the registered mark PROVE (in standard character format) for goods and
services in the same three classes, as follows:
“human and animal diagnostic preparations for scientific
research purposes and biochemical substances for
scientific research purposes” in International Class 1;
“pharmaceutical and veterinary preparations for the
treatment of cancer, infectious diseases, autoimmune
diseases and transplant complication prevention” in
International Class 5; and

1 Application Serial No. 86085516 was filed on October 8, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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“scientific and technical research and design services in
the field of biomedical sciences” in International Class
42;2
as to be likely to cause confusion, to cause mistake or to deceive under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d).
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based upon an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
We begin by comparing the marks. We consider and compare the appearance,
sound, connotation and commercial impression of the marks in their entireties.

2 Registration No. 3250168 issued to ProImmune Limited, a U.K. corporation, on June 12,
2007; Section 8 affidavit accepted and Section 15 affidavit acknowledged.
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Palm Bay Imports, 73 USPQ2d at 1691. “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.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted). See San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d
1353 (Fed. Cir. June 5, 1992).
While the registered mark is PROVE, Applicant’s mark is PROOVE. Applicant
argues that its second instance of the letter “O” renders its mark considerably
different from Registrant’s mark as to appearance and overall commercial
impression. By contrast, the Trademark Examining Attorney contends that the
“marks are virtually identical,” and emphasizes the fact that we must assume these
involved marks will be phonetically equivalent.
With these words differing by the adding of another letter “O,” we suspect that many
consumers, particularly those challenged by bad orthography, will little notice nor long
remember this difference. Accordingly, we find these marks to be quite similar as to
appearance and identical as to sound. Acknowledging that for some customers, a minor
difference in connotations may spring from perception of the known English language
word, “Prove,” of the cited mark, on the one hand, and the misspelled “Proove” of
Applicant’s mark, on the other hand, we nonetheless find the similarities herein outweigh
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the dissimilarities, and these two marks will create quite similar overall commercial
impressions. Hence, this key du Pont factor favors a finding of likelihood of
confusion.
B. Relationship of the Goods and Services
We next turn our attention to an evaluation of the relationship of the goods and
services in the cited registration to the goods and services named in the application.
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not
necessary that the respective goods and services be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether customers would confuse the goods and
services themselves, but rather whether they would be confused as to the source of
the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods and services
need only be sufficiently related that customers would be likely to assume, upon
encountering the goods and services under similar marks, that the goods and
services originate from, are sponsored or authorized by, or are otherwise connected
to the same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
By their very terms, Registrant’s biochemical goods in Class 1 are directed to
scientific research purposes and its involved goods in Class 5 are for the treatment of
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cancer, infectious diseases, autoimmune diseases and transplant complication
prevention. Its research and design services are broadly available “in the field of
biomedical sciences.” Moreover, Applicant has submitted for the record a copy of
Registrant’s website.3 While it is impermissible for an applicant to restrict the scope
of the cited registrant’s goods and services with extrinsic evidence, we have
reviewed the information gleaned from this website to understand more about
Registrant’s goods and services. Accordingly, we conclude that Registrant provides
its products and services to medical researchers across the globe that work in the
world’s leading pharmaceutical and biotechnology companies, as well as several
thousand academic and healthcare institutions.
Repeatedly in its identification of goods and recitation of services, Appellant
describes its offering of goods and services as intended for advanced scientific
applications involving genetics for medical purposes, with these goods and services
being provided to medical doctors, genetic scientists and healthcare professionals.
We agree with Applicant that it appears that these respective goods are not
directly competitive. We accept for the sake of argument that Applicant’s reagents
are different in purpose and nature from Registrant’s preparations. However,
whether in connection with researcher’s development of new medicines or the
physician’s initiation of drug therapies in treating a patient, the current trend is
toward individualizing drug therapies. That is the purpose, by definition, of
Applicant’s goods and services in the field of pharmacogenetics. Similarly,

3 http://www.proimmune.com/ecommerce/page.php?page=clients
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Registrant’s webpage discusses its products used to detect epitope-specific immune
cells so that they can be analyzed in human blood samples. As to the specific
efficacy of a drug, the individual patient’s response is related to variability in the
protein to which the drug binds. Side-effects from medications also vary due to
different proteins involved in the immune response. Hence, at a basic level, all of
the goods and services of Registrant and of Applicant are directed toward
individualizing drug therapies.
Moreover, the Trademark Examining Attorney has provided for the record
evidence showing the same companies involved in research, in diagnostics and in
treatment in the fields of genetics and of immunology.4 Accordingly, we find that
the respective goods and services must be considered related, and this du Pont
factor favors a finding of likelihood of confusion.
C. Trade Channels
Applicant identifies its target customers as including medical doctors, genetic
scientists and healthcare professionals. Registrant identifies its uses as scientific
research as well as “treatment of cancer, infectious diseases, autoimmune
diseases … .” Thus, medical, healthcare and scientific research personnel would
seem to use both Applicant’s and Registrant’s goods and services. Moreover, we are
not persuaded by Applicant’s arguments that “ … Registrant’s goods are offered and
sold by Registrant through its specialized sales representatives and distributors to

4 These include the Texas Biomedical Research Institute; Humigen, The Institute for
Genetic Immunology; the SardiNIA Study of Aging; Altogen Biosystems; Covance, Inc.;
Hycult Biotech; Immco Diagnostics; LGC Group, Ltd.; Life Technologies; and
Transgenomic, Inc.
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commercial purchasing agents … ” The description of Registrant’s goods and
services contains no such limitations. Hence, we find that these respective goods
and services are targeted to the same group of scientific and medical professionals,
employed in many of the same types of institutions, and this du Pont factor favors a
finding of likelihood of confusion.
D. Conditions of Sale / Sophistication of Purchasers
As described above, it seems quite likely that the scientists and physicians who
would be relying upon these respective goods and services are fairly sophisticated
professionals. While we cannot be sure of the sophistication of the actual purchasing
agents at these scientific and healthcare institutions, we do find that this du Pont
factor favors slightly a finding of no likelihood of confusion.
E. Conclusions on Likelihood of Confusion
With quite similar marks and related goods and services moving through some
of the same trade channels to researchers and healthcare professionals, we find
overall a likelihood of confusion herein despite the probability that many of the
involved purchasers may be fairly sophisticated.
Decision: The refusal to register Applicant’s mark PROOVE under Section
2(d) of the Lanham Act is hereby affirmed.