TM Bioscience Corp.

Trademark Trial and Appeal Board

Apr 26, 2005

No. 76485778 (T.T.A.B. Apr. 26, 2005)

Mailed:
April 26, 2005
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re TM Bioscience Corporation
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Serial No. 76485778
_______

Ellen S. Simpson of Simpson & Simpson PLLC for TM
Bioscience Corporation.

Linda M. Estrada, Trademark Examining Attorney, Law Office
103 (Thomas G. Howell, Managing Attorney).
_______

Before Hairston, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
TM Bioscience Corporation seeks registration on the
Principal Register of the mark TAG-IT for goods identified
in the application as follows:
“diagnostic preparations for research use, namely
mutation detection kits composed of reagents and
protocols used in the determination of particular
genotypes in samples of nucleic acid,” in
International Class 1; and

“diagnostic preparations for clinical use, namely
mutation detection kits composed of reagents and
protocols used in the determination of particular
genotypes in samples of nucleic acid,” in
International Class 5.1

1 Application Serial No. 76485778 was filed on January 29,
2003 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76485778
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This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
TAGIT registered in connection with “N-hydroxysuccinimidyl
3-(4-hydroxyphenyl) propionate,” in International Class 1,
as to be likely to cause confusion, to cause mistake or to
deceive.2
Applicant and the Trademark Examining Attorney fully
briefed the case. Applicant did not request an oral
hearing. We affirm the refusal to register as to both
classes of goods.
In arguing for registrability, applicant argues that
its goods are different from those of registrant and that
they will travel in different channels of trade.
Furthermore, applicant argues that the consumers are

2 Registration No. 1031862 issued on February 3, 1976,
Section 8 affidavit approved and Section 15 affidavit
acknowledged; renewed. Additional modifying language in the
identification of goods of the cited registration as issued [“an
ester particularly adapted for the iodination labeling of
peptides and proteins”] that was referenced both by the Trademark
Examining Attorney and by applicant appears to have been deleted
at some point from the identification of goods.
Serial No. 76485778
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different, and that consumers of both products are highly
sophisticated individuals and/or companies.
By contrast, the Trademark Examining Attorney takes
the position that these goods are related, may well travel
in the same channels of trade to the same classes of
purchasers, whose alleged sophistication may not help them
to avoid confusion as to the source of these related goods.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to a consideration of the similarities
and/or dissimilarities in the marks, we find that the
presence of a hyphen in applicant’s mark provides for a
negligible difference in appearance. The two terms are
identical as to sound. As to connotation, whether
TAGIT/TAG-IT is used in the context of a labeling product
or a mutation detection kit, the term has the same
Serial No. 76485778
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suggestive connotation for both products. We note that
applicant has not spent a great deal of its time during the
course of prosecuting this application arguing this du Pont
factor to the contrary. Accordingly, when comparing the
marks in their entireties, we find that the marks create
substantially identical overall commercial impressions.
We turn next to the du Pont factor focusing on the
relationship of the goods. In this context, as argued by
the Trademark Examining Attorney, if the marks of applicant
and registrant are substantially identical, the
relationship between the respective goods need not be as
close in order to support a finding of likelihood of
confusion as might apply where more significant differences
exist between the marks. Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70 (TTAB 1981).
Applicant summarizes in a table what it argues are
clear differences between these two products:
REGISTRANT’S TAGIT ® APPLICANT’S TAG-IT 
• Chemical • Diagnostic kit
• Labeling proteins –
organic reagent
• Genotyping – Nucleic Acid Mutation
Detection
• Research Labs • Clinical Genetic Labs
• Single container • Packaged kit of several tubes,
software and product insert
• Solid chemical
(requirement to suspend)
• Several tubes of liquid reagent
• General research reagent • Targeted marketing to diagnostic
labs
Serial No. 76485778
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Applicant correctly states our black letter law when
it argues that the nature and scope of a trademark owner’s
products must be determined on the basis of the specific
goods recited in the application or registration. J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18
USPQ2d 1889 (Fed. Cir. 1991). However, in trying to
understand the specific goods involved, we must review the
record as a whole to determine whether the evidence
supports the Trademark Examining Attorney’s contention that
these goods are related. Both applicant and the Trademark
Examining Attorney have properly made of record webpages
that present extrinsic evidence in an effort to clarify the
nature of registrant’s goods – not to attempt an improper
limitation of registrant’s identification of goods. In re
Trackmobile, 15 USPQ2d 1152, 1153-54 (TTAB 1990).
Registrant’s identified product [N-hydroxysuccinimidyl
3-(4-hydroxyphenyl) propionate] is a chemical compound.
Although the modifying language appears to have been
deleted from the identification of goods in the cited
registration [“ … an ester particularly adapted for the
iodination labeling of peptides and proteins.”], we cannot
read this amendment as resulting in a broader scope, or
different set, of goods than that which existed at the time
Serial No. 76485778
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of registration. In fact, despite this amendment to the
cited goods, the word “ester” appears to be a generic
designation for this category of chemical compounds. This
chemical compound falls into the general category of
protein-modifying reagents, and it is used specifically for
fluorescent and radiolabeling of nucleic acids, proteins
and oligonucleotides. Originally described by Rudinger and
Ruegg,3 it is also known as the “Bolton-Hunter Reagent,”4
and under the cited trademark, this reagent shows up in the
record on a Merck / CalBiochem webpage, as follows:

3 Rudinger, J., and Ruegg, U., Biochem.J. 133:538 (1973).
4 Bolton, A.E., and Hunter, W.M., Biochem.J. 133:529 (1973).
Serial No. 76485778
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According to the record, companies such as Pierce,5
PerkinElmer6 and Roche Diagnostics7 also market this type of
chemical reagent. Irrespective of the vendor, these active
esters are directed to scientists doing basic research in
gene expression, functional genomics and proteomics (i.e.,
the study of the structures and functions of proteins), all
within university life science research departments, the
biotechnology/pharmaceutical industries and other
commercial laboratories.
In arguing for registrability herein, applicant
describes its product as follows:
“Diagnostic kits used in the detection of
nucleic acid mutations. Multiple reagents
make up the kit. There is a menu of several
different mutation detection kits under the
Tag-It brand name that identify different
sets of disease-related polymorphisms. The
method for analysis of the nucleic acid is
referred to as the Tag-It Mutation Detection
assay. Performance of the Tag-It assay
specifically determines the genotype of a
sample of nucleic acid.”

Applicant placed its identified goods in two classes,
International Classes 1 and 5. Registrant’s goods and
applicant’s “diagnostic preparations for research use” are
classified in International Class 1 as are chemical

5 http://www.piercenet.com/
6 http://www.perkinelmer.com/
7 http://www.roche-diagnostics.com/
Serial No. 76485778
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products generally used in industry and science.
Applicant’s “diagnostic preparations for clinical use” are
correctly classified in International Class 5 along with
other in vitro diagnostic chemicals for clinical diagnostic
purposes. We note that in both classes of goods,
applicant’s “diagnostic preparations,” or “mutation
detection kits,” are composed of “reagents” and
“protocols.” In short, while applicant’s kits do include
software on a CD-ROM and a package insert, they are
predominantly tubes of industrial chemicals.
In looking closely at applicant’s identified goods, we
agree with applicant that these kits are not products that
compete with registrant’s chemicals. Customers for
registrant’s chemicals are research labs buying a solid
reagent in a single container. The labs buying applicant’s
goods are purchasing a kit containing smaller tubes of
liquid reagents. These kits would necessarily be very
specific in nature, each containing materials for
identification of one or more specific genetic mutations.8
While it seems clear that both products would be used
in biological research at the molecular level (e.g., both

8 For example, applicant’s Tag-It™ CFTR 40+4* assay
simultaneously screens for the twenty-five cystic fibrosis gene
mutations http://www.tmbioscience.com/prodlist.php?id=389; and
applicant’s Tag-It™ P450-2D6 provides detection of twelve
nucleotide variants http://www.tmbioscience.com/prodlist.php?id=338.
Serial No. 76485778
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involving nucleic acids), it is likely that each would be
used by researchers answering quite different questions.
Customers of applicant’s products will be trying to detect
genetic variations, including mutations, in human genes.
Customers of registrant’s product will be doing basic
medical research on proteins and protein chemistry.
Applicant argues that the Trademark Examining Attorney
has illogically focused on the single word “reagents.” As
noted above, “reagents” do appear to represent significant
components of applicant’s identified kits. The webpages
show applicant’s reagents to include ingredients like PCR
primer mixes, bead mixes and wash buffers (e.g., detergents
and reducing agents). While the word “reagents” does not
appear in registrant’s identification of goods, it does
appear in registrant’s Internet homepage, supra, discussing
the product sold under the TAGIT mark. Many of the third
party registrations placed into the record by the Trademark
Examining Attorney simply show the words “reagents” and
“labeling” in the same listing of goods. We agree with
applicant that it would be improper to find these
respective goods related on this connection alone.
In fairness, the Trademark Examining Attorney actually
concludes that the goods herein are related based upon more
Serial No. 76485778
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than just the presence of “reagents” in both sets of goods.
Rather, the Trademark Examining Attorney argues based upon
the totality of the evidence in the record -- the
identifications of goods in registrant’s registration and
applicant’s application; the webpages of registrant, of
applicant, and of third-party companies such as Roche
Diagnostics, PerkinElmer, Inc., Chemicon International
Inc., and Mirus Corporation9; as well as from third-party
federal trademark registrations – that mutation detection
kits for research use and clinical use may well originate
from the same source as regents used in labeling. In spite
of this contention, we cannot find in the record a single
vendor marketing mutation detection kits for research use
and clinical use as well as chemical regents used in
labeling.
Nonetheless, that is neither the standard to which the
Office is held in showing a relationship of the goods, nor
is it the end of our inquiry. As contended by the
Trademark Examining Attorney, the fact that the goods of
the parties may differ is not controlling in determining
likelihood of confusion. The issue is not likelihood of

9 http://www.mirusbio.com/ lists its biochemical, dual-
labeling system for microarray applications, Label IT® µArray™ as
a one-step labeling reagent for scientific / research use having
dyes and reagents that detects small changes in gene expression.
DNA and RNA labeling
Serial No. 76485778
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confusion between particular goods, but likelihood of
confusion as to the source of those goods. See In re Rexel
Inc., 223 USPQ 830, 831 (TTAB 1984), and cases cited
therein.
On the face of the two identifications of goods, both
of these products could be used in genomics, proteomics and
biological research. And while applicant repeatedly
stresses the words “diagnosis,” “diagnostic,” and
“diagnostics,” in discussing its product and channels of
trade, we also note that some of applicant’s involved
genotyping kits specifically say that they are “For
Research Use Only. Not for use in diagnostic procedures.”10
Hence, we are reluctant to conclude on this record that we
are faced with unrelated goods moving in totally separate
channels of trade.
Furthermore, although there are clearly differences in
these products, we cannot help but note from applicant’s
webpages, press releases, and the like, made of record,
from LEXIS/NEXIS evidence and third-party Internet sites,
as well as from Merck / CalBiochem (registrant’s) webpages,
the overlap of the involved technologies growing out of
recent research around the human genome. Specifically,

10 http://www.tmbioscience.com/prodlist.php?id=336;
http://www.tmbioscience.com/prodlist.php?id=338
Serial No. 76485778
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Nobel-prize winning genetic analysis technology of the
polymerase chain reaction (PCR) figures prominently in the
literature of both products.11 One learns from this record
that PCR is a technique for amplifying DNA, making it
easier to isolate, clone and sequence. PCR has led to
significant advances in basic research as well as in the
diagnosis of important diseases from AIDS to cystic
fibrosis.
Moreover, we find that applicant’s history tracks the
substantial commercialization in the field of clinical
genetics. This history reflects the fact that genetic
diagnostic services, once provided almost exclusively
through academic, not-for-profit medical centers, have
become the province of for-profit corporations. For
example, applicant alleges that it provides a large volume
of its goods to Quest Diagnostics, an enterprise, which in
turn, touts itself as “The nation's leading provider of
diagnostic testing, information, and services.” There is
nothing in the record to suggest that these for-profit
clinical genetics diagnostics companies do not continue to

11 For example, one of the key reagents in applicant’s kits is
a “PCR primer mix.” Registrant’s webpages show that PCR is
related to its DNA labeling products.
Serial No. 76485778
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maintain business and/or research relationships with
academia.
As noted earlier, based on this record, we are not
convinced that a single party sells mutation detection kits
and the “Bolton-Hunter Reagent.” On the other hand, the
record demonstrates that some of the same vendors will
market both labeling products and reagents included as key
components of applicant’s mutation detection kits.
By analogy, perhaps these complex biotech products are
different from each other in much the same way that a
hammer is different from a pair of wire cutters. Both are
tools, but inasmuch as one is used in construction and the
other in electrical wiring, neither one would be very
effective in accomplishing the other’s task. Nonetheless,
if identical marks were to be used on both of these hand
tools, confusion as to source would be likely. Similarly,
the test before us is not whether one would confuse a
labeling product with a mutation detection kit. Rather,
the issue is whether one who knows of registrant’s product
would mistakenly believe applicant’s product comes from the
same source. It is sufficient for purposes of the instant
determination that the goods are related in some manner
such that they would be likely to be encountered by the
Serial No. 76485778
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same persons under circumstances that could, because of the
marks used thereon, give rise to the mistaken belief that
they originate from or are in some way associated with the
same source. See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993). Here, we
find that the goods of applicant and registrant, as
identified in the application and registration, are related
closely enough that their contemporaneous marketing under
the same or similar marks would be likely to cause
confusion as to source.
As to the related du Pont factor focusing on channels
of trade, applicant’s identification of goods (e.g.,
“diagnostic preparations for research use…”) does not
restrict its channels of trade to “diagnostic laboratories
in hospitals or commercial diagnostic laboratories.”
(Applicant’s reply brief, p. 4) While the record does not
show a single vendor marketing both products, we find that
the respective goods are nonetheless related. Moreover, we
find that both products might well be directed toward the
same general class of customers, namely life science
researchers as a group. We acknowledge that any one
physician, scientist or researcher may be focused on a
narrow subject matter area, and the Trademark Examining
Serial No. 76485778
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Attorney has not presented any specific situations in which
both products would be used simultaneously in a given
project. However, we would not find it surprising that the
same purchaser, such as a lab technician within a life
sciences laboratory, might well work with both products,
namely, tissue marking products (or fluorescent labels) and
mutation detection products, and particularly the component
reagents from the latter kits that may be replaced from a
source other than applicant.
Applicant argues that its consumers are sophisticated
and unlikely to be confused. While sophisticated lead
researchers may well be knowledgeable about the source of
particular materials, even such sophisticated users may be
confused as to source by substantially identical marks.
See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Moreover, even if one agrees that such sophisticated
end-users are knowledgeable about the products, it does not
necessarily mean that the actual purchaser is
knowledgeable. The technical staff of a laboratory,
including those responsible for ordering replacement goods,
may not exercise such a high degree of deliberation in
their product selections, and may well not be as
Serial No. 76485778
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knowledgeable as the lead researchers, and this could well
lead to misplaced ordering. We are convinced from this
record that individuals ordering materials for a lab would
come across both products, and could mistakenly assume a
common source.
As to the du Pont factor focusing on the number and
nature of similar marks in use on similar goods, applicant
has made no argument that this term is in any way weak on
this type of biotechnology product. Despite the fact that
the term TAGIT may be suggestive of both applicant’s and
registrant’s respective goods, even suggestive marks are
entitled to protection against registration of a
substantially similar mark used in connection with closely
related goods. See In re Textron Inc., 180 USPQ 341 (TTAB
1973).
In summary, we find that the marks are substantially
identical as to overall commercial impression, that TAGIT
has not been shown to be a weak mark in the field of
biotechnology products, that the goods are related, and
could well move through the same channels of trade to the
same classes of consumers.
Finally, to the extent there is any doubt on the issue
of likelihood of confusion, we follow the well-established
Serial No. 76485778
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principle that such doubt must be resolved in favor of the
registrant and prior user. In re Mayco Mfg., 192 USPQ 573,
576 (TTAB 1976).
Decision: The refusal to register applicant’s mark
under Section 2(d) is hereby affirmed.