TTAB Reverses Section 2(d) Refusal of EPIGENE Due to Failure to Prove Relatedness of Gene Databases to Diagnostic Preparations and Apparatus

In the twelfth Section 2(d) reversal of 2022 (versus 156 affirmances), the Board overturned a Section 2(d) refusal to register the mark EPIGENE for "electronic database in the field of genes recorded on computer media," finding confusion not likely with the identical mark registered for "Diagnostic preparations for medical purposes" and for "Apparatus for medical diagnostic testing in the fields of cancer or other tissue-based diagnostic testing, cytology and cell-based testing." The Board found the USPTO's evidence insufficient to prove the similarity or relatedness of the goods or the degree of overlap of trade channels. In re Genebook LLC, Serial No. 90269018 (October 26, 2022) [not precedential] (Opinion by Judge Jonathan Hudis).

Since the marks are identical, a lesser degree of similarity between the involved goods is necessary to support a finding of likely confusion. "[T]here need only be a viable relationship between the goods to find that there is a likelihood of confusion."

The evidence showed that DNA testing companies provide their customers with "reports" of their DNA test results, but there was no evidence that these companies offer the databases identified in the subject application.

The USPTO relied on screen captures from two dozen websites, but the Board found this evidence inadequate to show that the involved goods "are related enough to cause confusion about their source or origin, even if they were promoted and sold under identical marks." The websites offering genetic testing services did not offer gene databases or provide information from gene databases. Some companies mentioned performing their services using what could be considered gene databases, but there was no offering of the goods in the cited registrations for sale in connection with those services. The sellers of genetic testing equipment did not offer gene databases or information from gene databases in connection with their products.

The USPTO provided no evidence that applicant's goods and registrant's goods are marketed in relative proximity, either on genetic testing websites or on websites offering genetic testing materials and equipment. Moreover, the buyers of the involved goods would be healthcare professionals or genomic researchers who are astute and careful in their purchasing decisions.

Balancing the relevant DuPont factors, the Board found that confusion is not likely, and so it reversed the refusal to register.

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TTABlogger comment: So the Section 2(d) affirmance rate is about 93% so far this year.

Text Copyright John L. Welch 2022.