Izon Science Limited
Analysis, sensing, measuring and control apparatus and instruments for scientific use, namely, nanoparticle analysis instruments in the nature of scanning ion occlusion spectroscopy platforms for the detection, precision counting and measurement of particles; control apparatus, namely, systems controlling apertures in the nature of resizable nanopores for the control of particles; pressure cells for controlling the flow of particles through nanopores; automated fluid controls, namely, software and hardware in the nature of fluid cells for controlling the application of fluids to the nanopores
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
________________________________________________
Applicant: Izon Science Limited )
Filing Date: June 4, 2009 )
Mark: IZON ) Trademark Law Office 104
Class: 009, 042 ) Examining Attorney
Serial No.: 77/751,792 _________________ ) Heather A. Biddulph
RESPONSE TO OFFICE ACTION
This communication responds to the September 11, 2009 Office Action.
REMARKS
I. Identification of Goods and Services
The Examining Attorney states that the wording in the identification of goods and
services for Applicants mark, IZON (Applicants Mark) in International Classes 9 and 42, is
indefinite and must be clarified because it is too broad. Accordingly, Applicant respectfully
proposes to amend the identifications in Class 9 and Class 42 in order to clarify and narrow the
scope of the identifications as follows:
Class 9: Analysis, sensing, measuring and control apparatus and instruments for
scientific use, namely, nanoparticle analysis instruments in the nature of scanning
ion occlusion spectroscopy platforms for the detection, precision counting and
measurement of particles; control apparatus, namely, systems controlling
apertures in the nature of resizable nanopores for the control of particles; pressure
cells for controlling the flow of particles through nanopores; automated fluid
controls, namely, software and hardware for controlling the application of fluids
to the nanopores
Class 42: Scientific research and development in the field of the detection,
precision counting and measurement of viruses and nanoparticles
Applicant notes that it has proposed amendments to its identifications of goods and services that
result in identifications that are identical to those associated with the trademarks (also owned by
Applicant) qViro (U.S. Ser. No. 77522487) and qNano (U.S. Ser. No. 77522506), both of which
have been issued Notices of Allowance. Accordingly, Applicant respectfully submits that the
proposed amendments to the identifications in the instant application are sufficient to clarify and
narrow the scope of the identifications.
II. Potential Likelihood of Confusion Refusal 2(d)
The Examining Attorney has refused to register Applicants Mark under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), because she believes that there maybe be a likelihood of
confusion between Applicants Mark and U.S. Registration Nos. 3645710, 3188278 and
3645716 (Registrants Marks). Applicant respectfully submits that in light of its proposed
amendments to the identifications of goods, Applicants Mark does not pose a likelihood of
confusion with Registrants Marks because the goods offered by the respective parties are vastly
different, move in different channels of trade, and are targeted to different end users.
The Examining Attorney largely based her decision to refuse registration on the notion
that [A]pplicants identified goods are related to the Registrants identified goods because
[A]pplicants broadly identified goods encompass the prior Registrants more narrowly identified
goods. As Applicant has proposed to amend the identifications to more narrowly identify the
goods at issue, Applicant submits that the proposed identifications of goods do not encompass
the Registrants goods. The goods comprised by Applicants identifications are primarily
nanoparticle analysis instruments in the nature of scanning ion occlusion spectroscopy platforms.
The goods comprised by the Registrants identifications are primarily various forms of eyewear
and associated accessories. Applicant respectfully submits that there can be no likelihood of
confusion between complex scientific equipment in the field of nanoparticle research on one
hand, and eyewear on the other hand. Applicants goods are highly technical in nature, and
move in channels of trade that consist of sophisticated end users with highly specialized
expertise and that specially order such instruments for purposes of scientific research. This is in
2
stark contrast to the channels of trade in which eyewear and associated accessories move in,
which consist of laymen end users and involve mass consumption of ordinary goods in common
consumer venues.
Furthermore, although in the instant case, as the Examining Attorney maintains,
Registrants Marks are either identical or phonetically equivalent to Applicants Mark, the vast
competitive differences between the goods at issue eliminate any likelihood of confusion, as
consumers would not encounter the goods comprised by Applicants Mark and the Registrants
Marks together. Indeed, case law has borne out many instances in which identical marks are
determined to not pose any likelihood of confusion when the goods comprised by the marks are
different and are sold in different channels of trade. See, e.g., Dynamics Research Corp. v.
Langenau Manufacturing Co., 704 F.2d 1575 (Fed. Cir. 1983) (affirming the TTAB’s finding that
there was no likelihood of confusion caused by identical marks because the parties sold entirely
different products to different customers).
Pursuant to the foregoing, Applicant respectfully requests that the Examining Attorney
reconsider her opinion and allow Applicants Mark to be published for opposition purposes.
III. Prior Pending Application
The Examining Attorney has also noted that the filing date of the pending application
bearing U.S. Serial No. 77077393 (Pending Application) precedes Applicants filing date, and
that if the mark in the Pending Application were to register, Applicants Mark may be refused
registration because of a likelihood of confusion. Applicant respectfully notes that the Pending
Application comprises goods that are largely identical to the goods comprised by the Registrants
Marks (eyewear), and moreover, that the owner of the Pending Application is also the owner of
U.S. Registration No. 3188278, one of the cited Registrants Marks. Applicant thus respectfully
3
submits that the arguments set forth above are equally applicable in this instance and
accordingly, that there would be no likelihood of confusion between Applicants Mark and the
mark in the Pending Application, should it register.
CONCLUSION
For all of the foregoing reasons, Applicant respectfully submits that the present
application is in condition for publication and registration, and such action is hereby requested.
Dated: March 10, 2010
4
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
________________________________________________
Applicant: Izon Science Limited )
Filing Date: June 4, 2009 )
Mark: IZON ) Trademark Law Office 104
Class: 009, 042 ) Examining Attorney
Serial No.: 77/751,792 _________________ ) Heather A. Biddulph
RESPONSE TO OFFICE ACTION
This communication responds to the September 11, 2009 Office Action.
REMARKS
I. Identification of Goods and Services
The Examining Attorney states that the wording in the identification of goods and
services for Applicants mark, IZON (Applicants Mark) in International Classes 9 and 42, is
indefinite and must be clarified because it is too broad. Accordingly, Applicant respectfully
proposes to amend the identifications in Class 9 and Class 42 in order to clarify and narrow the
scope of the identifications as follows:
Class 9: Analysis, sensing, measuring and control apparatus and instruments for
scientific use, namely, nanoparticle analysis instruments in the nature of scanning
ion occlusion spectroscopy platforms for the detection, precision counting and
measurement of particles; control apparatus, namely, systems controlling
apertures in the nature of resizable nanopores for the control of particles; pressure
cells for controlling the flow of particles through nanopores; automated fluid
controls, namely, software and hardware for controlling the application of fluids
to the nanopores
Class 42: Scientific research and development in the field of the detection,
precision counting and measurement of viruses and nanoparticles
Applicant notes that it has proposed amendments to its identifications of goods and services that
result in identifications that are identical to those associated with the trademarks (also owned by
Applicant) qViro (U.S. Ser. No. 77522487) and qNano (U.S. Ser. No. 77522506), both of which
have been issued Notices of Allowance. Accordingly, Applicant respectfully submits that the
proposed amendments to the identifications in the instant application are sufficient to clarify and
narrow the scope of the identifications.
II. Potential Likelihood of Confusion Refusal 2(d)
The Examining Attorney has refused to register Applicants Mark under Trademark Act
Section 2(d), 15 U.S.C. § 1052(d), because she believes that there maybe be a likelihood of
confusion between Applicants Mark and U.S. Registration Nos. 3645710, 3188278 and
3645716 (Registrants Marks). Applicant respectfully submits that in light of its proposed
amendments to the identifications of goods, Applicants Mark does not pose a likelihood of
confusion with Registrants Marks because the goods offered by the respective parties are vastly
different, move in different channels of trade, and are targeted to different end users.
The Examining Attorney largely based her decision to refuse registration on the notion
that [A]pplicants identified goods are related to the Registrants identified goods because
[A]pplicants broadly identified goods encompass the prior Registrants more narrowly identified
goods. As Applicant has proposed to amend the identifications to more narrowly identify the
goods at issue, Applicant submits that the proposed identifications of goods do not encompass
the Registrants goods. The goods comprised by Applicants identifications are primarily
nanoparticle analysis instruments in the nature of scanning ion occlusion spectroscopy platforms.
The goods comprised by the Registrants identifications are primarily various forms of eyewear
and associated accessories. Applicant respectfully submits that there can be no likelihood of
confusion between complex scientific equipment in the field of nanoparticle research on one
hand, and eyewear on the other hand. Applicants goods are highly technical in nature, and
move in channels of trade that consist of sophisticated end users with highly specialized
expertise and that specially order such instruments for purposes of scientific research. This is in
2
stark contrast to the channels of trade in which eyewear and associated accessories move in,
which consist of laymen end users and involve mass consumption of ordinary goods in common
consumer venues.
Furthermore, although in the instant case, as the Examining Attorney maintains,
Registrants Marks are either identical or phonetically equivalent to Applicants Mark, the vast
competitive differences between the goods at issue eliminate any likelihood of confusion, as
consumers would not encounter the goods comprised by Applicants Mark and the Registrants
Marks together. Indeed, case law has borne out many instances in which identical marks are
determined to not pose any likelihood of confusion when the goods comprised by the marks are
different and are sold in different channels of trade. See, e.g., Dynamics Research Corp. v.
Langenau Manufacturing Co., 704 F.2d 1575 (Fed. Cir. 1983) (affirming the TTAB’s finding that
there was no likelihood of confusion caused by identical marks because the parties sold entirely
different products to different customers).
Pursuant to the foregoing, Applicant respectfully requests that the Examining Attorney
reconsider her opinion and allow Applicants Mark to be published for opposition purposes.
III. Prior Pending Application
The Examining Attorney has also noted that the filing date of the pending application
bearing U.S. Serial No. 77077393 (Pending Application) precedes Applicants filing date, and
that if the mark in the Pending Application were to register, Applicants Mark may be refused
registration because of a likelihood of confusion. Applicant respectfully notes that the Pending
Application comprises goods that are largely identical to the goods comprised by the Registrants
Marks (eyewear), and moreover, that the owner of the Pending Application is also the owner of
U.S. Registration No. 3188278, one of the cited Registrants Marks. Applicant thus respectfully
3
submits that the arguments set forth above are equally applicable in this instance and
accordingly, that there would be no likelihood of confusion between Applicants Mark and the
mark in the Pending Application, should it register.
CONCLUSION
For all of the foregoing reasons, Applicant respectfully submits that the present
application is in condition for publication and registration, and such action is hereby requested.
Dated: March 10, 2010
4