Enzo Biochem, Inc.Download PDFTrademark Trial and Appeal BoardJun 15, 2010No. 77562153 (T.T.A.B. Jun. 15, 2010) Copy Citation 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 6 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 7 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 9 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 10 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 11 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.” Copy with citationCopy as parenthetical citation