Enzo Biochem, Inc.

Trademark Trial and Appeal Board

Jun 15, 2010

No. 77562153 (T.T.A.B. Jun. 15, 2010)

Mailed:
June 15, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Enzo Biochem, Inc.
________

Serial No. 77562153
_______

Laura E. Smith, Esq. of Enzo Life Sciences, Inc. for Enzo
Biochem, Inc.

Timothy J. Finnegan, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Hairston, Grendel and Taylor, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Introduction.

Applicant seeks registration on the Principal Register
of the mark GFP CERTIFIED (in standard character form) for
goods identified in the application as “assays and reagents
for genomic, cellular and diagnostic applications for
THIS OPINION IS NOT
PRECEDENT OF THE TTAB
Ser. No. 77562153
2
clinical or medical laboratory use,” in International Class
1.1
The Trademark Examining Attorney has issued a final
refusal of registration of applicant’s mark on the ground
that the mark is merely descriptive of the identified
goods, and thus is not registrable on the Principal
Register. Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1).
Applicant has appealed the final refusal.
For the reasons discussed below, we affirm the refusal
to register because we find that the term “GFP” in the mark
is merely descriptive of the goods, and that the mark is
not registrable on the Principal Register absent a
disclaimer of that term. See Trademark Act Section 6, 15
U.S.C. §1056).
However, if applicant submits to the Board a
disclaimer of the merely descriptive term “GFP” within
thirty days of the date of this decision, this decision
affirming refusal of registration will be set aside, and
the application, including the disclaimer, shall proceed to
publication.

1 Serial No. 77562153, filed on September 4, 2008. The
application is based on applicant’s allegation of a bona fide
intent to use the mark in commerce. Trademark Act Section 1(b),
15 U.S.C. §1051(b).

Ser. No. 77562153
3
Discussion.

A term is deemed to be merely descriptive of an
applicant’s goods or services, within the meaning of
Trademark Act Section 2(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services.
See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987), and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978).
In the present case, the evidence of record on appeal
includes several dictionary, acronym dictionary and
encyclopedia entries submitted by applicant and by the
Trademark Examining Attorney. Also of record are an
Instruction Manual and a Product Data Sheet for applicant’s
goods, submitted by applicant with its July 7, 2009
response to the Trademark Examining Attorney’s requirement
(pursuant to Trademark Rule 2.61(b), 37 C.F.R. §2.61(b))
for submission of additional information about the goods.2
Based on this evidence, we make the following findings
of fact.

2 The application file also includes applicant’s August 20, 2009
response to a subsequent Office action requiring submission of
additional information. That response includes applicant’s
counsel’s explanations of various statements contained in the
text of the previously-submitted Instruction Manual. We shall
discuss these explanations in this opinion where appropriate.

Ser. No. 77562153
4
1. As used in connection with applicant’s
product, “GFP” is an acronym for “green fluorescent
protein.”3
2. “Green fluorescent protein” is defined as
follows in the Oxford Dictionary of Biochemistry and
Molecular Biology (Rev. Ed. 2006):4

green fluorescent protein: GFP, a protein
isolated from the jellyfish, Aequorea
Victoria, that fluoresces when exposed to
excitation light (there are several spectral
variants, including yellow, cyan, blue, and
red). GFP has important applications in
research: the gene can be expressed in
other living organisms, making it possible
to create gene fusions and hence to
visualize the location of specific gene
products inside living cells.

3 See entry for “GFP” from Acronym Finder, December 15, 2008
Office action. Also, we sustain the Trademark Examining
Attorney’s objection to the evidence submitted by applicant for
the first time with its brief, i.e., an entry from an online
acronym dictionary identifying “GFP” as an acronym for “Glial
Filament Protein.” We add that we would find this evidence to be
of no probative value in this case in any event, given the clear
evidence that, as applied to applicant’s goods, the sole
significance of “GFP” is as an acronym for “green fluorescent
protein.”

4 We grant the Trademark Examining Attorney’s request that we
take judicial notice of this dictionary definition. 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)(the Board may take judicial notice of dictionary
definitions).

Ser. No. 77562153
5
3. “Apoptosis” and “necrosis,” according to a
Wikipedia entry for “apoptosis” submitted by applicant,5
refer to:

...the process of programmed cell death
(PCD) that may occur in multicellular
organisms. Programmed cell death involves a
series of biochemical events leading to a
characteristic cell morphology and death...
Processes of disposal of cellular debris
whose results do not damage the organism
differentiate apoptosis from necrosis. ...
In contrast to necrosis, which is a form of
traumatic cell death that results from acute
cellular injury, apoptosis, in general,
confers advantages during an organism’s life
cycle. ...

4. “The transition from apoptosis to necrosis is
a loosely defined continuum that necessitates recognition
of the various stages of the process.” (Product
Instruction Manual at p. 1.)
5. Applicant’s reagents are used to enable or
assist in the detection and determination of the various
stages of apoptosis/necrosis in the process of cell death.
“This kit includes all the necessary reagents for
determination of early and late stages of apoptosis as well
as necrosis.” (Instruction Manual at p. 1.)

5 The entry is at http://en.wikipedia.org/wiki/Apoptosis,
submitted with applicant’s July 7, 2009 response to Office
action.

Ser. No. 77562153
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6. The way to detect the various stages of
apoptosis/necrosis in a cell is to determine the integrity
of the cell membrane by looking for the presence and
location of phosphatidylserine (PS).6
7. The way to detect the location of PS (and
thus identify the apoptosis/necrosis stage) is to use
detection reagents to look for “phospholipid-binding
proteins such as Annexin V” which “bind with a high
affinity to PS.” (Instruction Manual at p. 1.)
8. For present purposes, there are two types of
cells to be tested for detection of Annexin V: fluorescent
(including GFP-expressing) cells, and non-fluorescent
cells. A different reagent to detect Annexin V is used for
each type of cell.
9. For non-fluorescent cells, Annexin V can be
detected by use of a fluorescent reagent. Applicant’s
product (“kit”) includes a fluorescent reagent called
“Annexin V-EnzoGold (enhanced Cyanine-3)” which “enables
detection of apoptosis distinct from flouroscein or GFP,”
i.e., “for analysis of apoptosis and necrosis in cells that

6 “The display of phosphatidylserine (PS) on the extracellular
face of the plasma membrane remains a unifying hallmark of early
apoptosis. ... Similarly, loss of plasma membrane integrity, as
demonstrated by the ability of a membrane-impermeable DNA
intercalating dye to label the nucleus, represents a
straightforward approach to demonstrate late stage apoptosis and
necrosis.” (Instruction Manual at p. 1.)
Ser. No. 77562153
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do not express any fluorescent proteins...” (Instruction
Manual at p. 1.)
10. However, “GFP-expressing” cells are
fluorescent. When looking for Annexin V on these cells,
fluorescent reagents are not effective because “Annexin V
is commonly conjugated to fluorescein (a.k.a. FITC).”
(Instruction Manual at p. 1). Fluorescein is a
“fluorophore,” i.e., “a component of a molecule which
causes a molecule to be fluorescent.” (Applicant’s August
20, 2009 response to Office action.) Where Annexin V is
conjugated to the fluorophore fluoroscein, “apoptosis
detection in green fluorescent protein (GFP)-expressing
cells can be problematic. The spectral overlap between the
emission profiles of these two fluorophores makes
differentiation between signals difficult or impossible,
thus compromising data quality overall.” (Instruction
Manual at p. 1.)
11. To overcome this, applicant’s kit includes a
second reagent (“Necrosis Detection Reagent (Red))” which
“was specifically designed for use with GFP-expressing cell
lines and cells expressing blue or cyan fluorescent
proteins (BFPs, CFPs).” (Instruction Manual at p. 1.)
Applicant explains (August 20, 2009 response) that this
second reagent is “designed to work effectively in
Ser. No. 77562153
8
conjunction with green fluorescent protein expressing
cells,” because it “emit[s] in the region of the spectrum
(far red) which does not conflict with the detection of
GFP, green fluorescent protein.” Thus, this second reagent
in applicant’s kit, the “Necrosis Detection Reagent (Red),”
detects Annexin V in GFP-expressing or other fluorescent
cells, where the other reagent in the kit, the fluorescent
reagent “Annexin V-EnzoGold (enhanced Cyanine-3),” is not
effective in detecting Annexin V in GFP-expressing cells
(due to spectral overlap).
12. In short, applicant’s kit includes two
reagents for the detection of Annexin V (and thus for the
detection of PS, and thus for the detection of the stage of
apoptosis/necrosis) in the two different kinds of cells,
i.e., nonfluorescent cells, and GFP or other fluorescent
cells. The “Apoptosis Detection Reagent (Annexin V Cyanine
3)” reagent detects Annexin V in non-fluorescent cells,
i.e., cells “with clear spectral separation” (Product Data
Sheet) which “do not express any fluorescent proteins.”
(Instruction Manual at p. 1.) The second reagent,
“Necrosis Detection Reagent (Red),” detects Annexin V in
fluorescent cells, i.e., cells with a “mitochondria-
associated GFP signal.” (Product Data Sheet.)

Ser. No. 77562153
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As noted above, a term is deemed to be merely
descriptive of an applicant’s goods or services, within the
meaning of Trademark Act Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. Based on the evidence of record
discussed above, we find that the term “GFP” in applicant’s
mark is merely descriptive of applicant’s goods because it
immediately describes a significant feature and function of
the goods.
That is, “GFP” directly informs the knowledgeable
users of applicant’s goods7 of the type of cell, a “GFP-
expressing” cell, that one of the reagents in applicant’s
kit for the detection of Annexin V is “specifically
designed for use with”8 and is “designed to work effectively
in conjunction with.”9
Contrary to applicant’s argument, it is not
dispositive that applicant’s kit also detects Annexin V in
types of cells (fluorescent and non-fluorescent) other than

7 “…The goods are used by scientists and researchers that are
aware that the cell lines with which they are working will
express blue, cyan or green fluorescent proteins…” (Applicant’s
brief at 7-8.)

8 Instruction Manual at p.1.

9 Applicant’s August 20, 2009 response.

Ser. No. 77562153
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and in addition to cells expressing GFP. A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods in order to be considered
merely descriptive; it is enough that the term describes
one significant attribute, function or property of the
goods or services. See In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
It is clear from the record that a significant feature and
function of applicant’s product is that it enables the
detection of Annexin V in GFP-expressing cells. We
therefore find that “GFP” is merely descriptive of the
goods.10

10 We cannot conclude on this record that the word CERTIFIED
is merely descriptive of applicant’s goods. The Trademark
Examining Attorney has submitted a dictionary entry which defines
“certify” as “prove quality of somebody or something; to declare
that somebody or something has passed a test or achieved an
expected standard.” (Encarta World English Dictionary (2007).
The Trademark Examining Attorney argues that applicant’s goods
are “guaranteed to serve some function with respect to green
fluorescent proteins.” We find this to be too vague as to what
it is that is actually being “certified” with respect to GFP to
support a conclusion that the term CERTIFIED merely describes the
goods.
By the same token, however, we are not persuaded by
applicant’s contention that the significance of CERTIFIED as
applied to the goods is such that the combination of the terms
GFP and CERTIFIED results in a composite which is incongruous and
thus inherently distinctive. Applicant has not identified
wherein such incongruity lies, and we find no basis in this
record for finding any such incongruity.
Finally, we add that on a different record, e.g., in an
opposition or cancellation proceeding brought by a party with a
greater degree of familiarity with these goods and the
significance of the term CERTIFIED (and/or GFP CERTIFIED) as
Ser. No. 77562153
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For all of the reasons discussed above, we find that
the term GFP is merely descriptive of applicant’s goods and
that applicant’s mark therefore is not registrable on the
Principal Register absent submission of a disclaimer of
that merely descriptive term. We therefore affirm refusal
of the registration.
However, this refusal of registration will be set
aside if applicant submits, within thirty days of the date
of this decision, a disclaimer of the term GFP, in which
case the application shall proceed to publication with the
addition of the disclaimer.11

Decision: The refusal to register is affirmed.

applied to these goods, our findings and conclusions as to the
mere descriptiveness of applicant’s mark might well be different.

11 The proper form of the disclaimer is: “No claim is made to the
exclusive right to use GFP apart from the mark as shown.”