Epi-genomics AG

Trademark Trial and Appeal Board

Mar 14, 2006

No. 76089226 (T.T.A.B. Mar. 14, 2006)

Mailed:
14 March 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Epigenomics AG1
________

Serial No. 76089226
_______

Edward M. Kriegsman of Kriegsman & Kriegsman for
Epigenomics AG.

Glenn Clark, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Hairston, Drost, and Zervas, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 14, 2000, Epigenomics AG (applicant) applied
to register the mark 5TH BASE GENOMICS, in standard
character form, on the Principal Register for the following
goods and services:
Diagnostic reagents for scientific purposes including
forensic examination; diagnostic test kits for
scientific purposes, consisting of reagents, working

1 The application was originally filed by Epigenomics GmbH and a
change of name to Epigenomics AG was subsequently recorded at
Reel/Frame No. 2699/0960.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 76089226
2
solutions, plasters, namely, adhesive tape, slides and
solid matrix material, all sold together as a unit in
Class 1.

Diagnostic reagents for medical purposes for
diagnosing inflammations, infections, diseases of the
central nervous system, heart, circulation,
neurologic, endocrine, autoimmune and genetic diseases
and cancers, consisting of reagents, working
solutions, plasters, namely, adhesive tape, slides and
solid matrix material, all sold together as a unit;
medical diagnostic comprising reagents, working
solutions, plasters, namely, adhesive tape, slides and
solid matrix material, all sold together as a unit,
for determining the presence of pathogens in the
environment in Class 5.

Laboratory equipment, namely, an apparatus for testing
a sample, for demonstrating the presence of analytical
elements in samples and to determine types of samples
in connection with distribution patterns and an
apparatus for the production of a series of mole
biological data and parts thereof in Class 9.

Providing multiple-user access to the Internet in
Class 38.

Research and development services for third parties in
the field of diagnostic chemicals, forensic methods,
compositions and devices, measuring apparatuses for
use in product research and development, in methods
for preparation and purification in water treatment
plants; methods for testing the environment and
determining industrial quality; chemical separation
analysis and diagnosis, forensic and medical genetics
testing for third parties; computer programming for
others in the field of data processing; computer
services, namely, providing a searchable database in
the field of DNA-related data on a global computer
network in Class 42.

The application is based on applicant’s claim of
priority under 15 U.S.C. § 1126(d) because of its ownership
of German application No. 300 04 091.1/42 filed January 14,
Ser. No. 76089226
3
2000, and on its ownership of German registration No. 300
04 091 issued April 17, 2000.
The examining attorney refused registration on the
ground that the mark was merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1),
because:
The term “5TH BASE” is a commonly used term in the
field of genomics. Based on the information provided
in the applicant’s web site, it is clear that the term
“5TH BASE” immediately names and describes a specific
molecule, methylated cytosine (“mC”), that forms DNA
and RNA molecules. The applicant’s goods and services
will be used to modify or change this “5TH BASE” in
the DNA to treat certain complex diseases to which the
identified goods and services relate.

Brief at 5.

Applicant, in turn, argues (Brief at 6):
Applicant notes, for example, that none of the recited
goods contains “5th bases.”

Similarly, with respect to the term “genomics,” the
Trademark Examining Attorney has failed to explain how
“genomics” conveys anything meaningful about the
recited goods and services. At best, all the
Trademark Examining Attorney has done is to conclude
that the recited goods and services “will be used in
the field of ‘genomics.’”

Applicant notes that none of the search results
provided by the Trademark Examining Attorney have
disclosed the mark, as a whole, or have shown the
mark, as a whole, being used to describe the recited
goods/services.

In addition, Applicant notes that, to the best of its
knowledge, 5TH BASE GENOMICS is being used exclusively
by Applicant.

Ser. No. 76089226
4
When the examining attorney made the refusal final,
applicant appealed to this board.
A “mark is merely descriptive if the ultimate
consumers immediately associate it with a quality or
characteristic of the product or service.” In re MBNA
America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003). See also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Quik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).
We consider descriptiveness of a mark in the context of the
particular goods or services for which registration is
sought and not in the abstract. In re Abcor Dev. Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). A mark need
only describe a single significant quality or property of
the goods in order to be descriptive. Gyulay, 3 USPQ2d at
1009. In addition, we must consider the mark in its
entirety. P.D. Beckwith, Inc. v. Commissioner, 252 U.S.
538, 545-46 (1920). However, “[i]t is perfectly acceptable
to separate a compound mark and discuss the implications of
each part thereof … provided that the ultimate
determination is made on the basis of the mark in its
entirety.” In re Hester Industries, Inc., 230 USPQ 797,
798 n.5 (TTAB 1986).
Ser. No. 76089226
5
We begin our discussion of the descriptiveness issue
by considering the evidence that the examining attorney has
made of record. The examining attorney has included a
definition of “genomic” as “Genetics. Of or relating to
the genome.” Academy Press Dictionary of Science and
Technology. First Office Action, attachment. The
examining attorney also included evidence from the Internet
concerning the term “Genomics.”
Cambridge Healthtech Institute’s Fifth Annual Impact
of Genomics on Medicine [2002 Program]… Genomic
information is being applied as a critical component
of drug development strategies for identifying
therapeutic targets and for mapping out pathways of
genes and proteins to gain a comprehensive view of
biology. This meeting will look into the technologies
underlying proteomics, gene expression, and functional
genomics as well as applying genomics to overall
strategies in drug discovery.

The examining attorney also submitted numerous
trademark registrations in which the word “genomics” was
used in the identification of goods and services or in
which either the term “genomics” is disclaimed or the mark
is registered on the Supplemental Register. "Such third
party registrations show the sense in which the word is
used in ordinary parlance and may show that a particular
term has descriptive significance as applied to certain
goods or services." Institut National Des Appellations
D'Origine v. Vintners International Company, 958 F.2d 1574,
Ser. No. 76089226
6
22 USPQ2d 1190, 1196 (Fed. Cir. 1992). Several examples
are set out below.
Registration No. 2,644,582 – INVERSE GENOMICS
(“Genomics” disclaimed) for, inter alia, scientific
research and development relating to the discovery and
validating of drug target genes

Registration No. 2,737,705 – BEYOND GENOMICS
(“Genomics” disclaimed) for, inter alia, chemicals and
software for use in genomics

Registration No. 2,694,203 – GENOMICSCOLLABORATIVE
(Supplemental Register) for, inter alia, collecting
and storing biological samples in the field of
genomics

Registration No. 2,637,715 – PHYSIOLOGICAL GENOMICS
(Supplemental Register) for, inter alia, publications
in the field of genomics

Registration No. 2,384,178 – ORION GENOMICS LLC and
design (“Genomics LLC” disclaimed) for, inter alia,
consultation and research services in the field of
structural and functional genomics

Registration No. 2,475,197 – WE TAKE GENOMICS
PERSONALLY. (“Genomics” disclaimed) for, inter alia,
genomic and bioinformatics services

Registration No. 2,348,435 – CG CLEVELAND GENOMICS and
design (“Cleveland Genomics” disclaimed) for DNA
sequencing

Registration No. 2,193,432 – APOCOM CLIENT TOOL FOR
GENOMICS (ACTG) (“Client Tool for Genomics (ACTG)”
disclaimed) for computer software for locating genes
for DNA sequencing

We also note that, from applicant’s website, the
following definitions were provided:
Genome:
The genome is the total DNA of a species. Since all
the DNA is wrapped up in chromosomes, the number of
Ser. No. 76089226
7
chromosomes is characteristic for a species, for
example 23 in humans.

Genomics:
The science and commercial exploitation of genomes and
the function of genes.

Furthermore, applicant is described as follows
(http://informagen.com):
Epigenomics is a young, growth-oriented biotech
company, offering a unique technology platform.
Epigenomics aims at introducing the first routine
diagnostics based on molecular biology for complex
genetic disease into clinical reality on a global
scale. Epigenomics pioneers the massive collection of
epigenetic information for a description of cells and
individuals by ‘digital phenotypes.’ With its
technology Epigenomics will be a leader in the
revolution towards tomorrow’s personalized medicine.

Therefore, the evidence shows that applicant is
operating in the field of genomics to the extent that its
goods and services use, locate, or develop a database of
genomic information.
Regarding the term “Fifth Base” or its numerical
equivalent “5TH Base,” the examining attorney has supplied
several references to explain that the term 5TH Base is
merely descriptive. At the EpiGenx Pharmaceuticals website
under “EpiGenx in the News,” there is an entry entitled
“Epigenetics, Methylation, and DNA’s mysterious 5th base”
that goes on to explain: “Epigenetic mechanisms are
implicated … DNA methylation holds the key to understanding
these changes.”
Ser. No. 76089226
8
The Glossary section from applicant’s website contains
the following information:
5th BASE genomics®
Cytosine, one of DNA’s four bases, can also be present
in a methylated version (mC). It then has an
important impact on gene activity, which is why it is
being acknowledged as DNA’s fifth base. Each cell
contains the entire genome, but only uses a subset of
it according to its function (e.g., a liver cell
switches on different genes than a skin cell). In
complex genetic diseases such as cancer,
cardiovascular, or autoimmune, different genes are
active than in healthy cells, with each disease
featuring a characteristic pattern of active and
inactive cells. Reading the pattern of mC in DNA in
the first place and correlating it to disease is what
we named 5th BASE genomics® and what opens up
fundamentally new diagnostics and therapeutic
opportunities.

DNA (Desoxyribonucleic acid):
The carrier of genetic information for all complex
organisms. DNA is shaped like a twisted step-ladder –
the famous “double helix.” The genetic information
consists of nucleotide bases bound to a sugar-
phosphate-backbone and is carried on the rungs of the
ladder. As yet, only four bases were known: adenine
(A), cytosine (C), guanine (G); [and] thymidine (T).
Now, it is becoming clear that there is a fifth: When
a methyl group is bound to C, cytosine, a very
different base is produced with a dramatic effect on
gene activity.

DNA-Methylation:
The DNA consists of the bases A, T, G, and C that
encode an organism’s genetic blueprint, but also the
5th base mC (methylated C), DNA methylation provides
information on gene regulation that is specific for
cell types and diseases, because cells can actively
exchange C with mC when they switch genes off or on.

Epigenetic:
Unlike conventional belief, human DNA consists of 5
different bases: A, T, G, C, and the 5th base,
methylated cytosine “mC.”
Ser. No. 76089226
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The examining attorney also submitted the following
excerpts from electronic databases.
The drug is known for its ability to keep DNA
undermethylated. Methyl groups are known for their
ability to keep genes turned off. In fact, of the
four nucleic-acid bases – adenine, cytosine, guanine,
and thymine – only cytosine accepts methyl groups and
the resulting 5-methylcytosine is considered the
“fifth base” in DNA.
McGraw-Hill’s Biotechnology Newswatch, January 17,
1983

A little-known and long-neglected component of
DNA is the focus of recently intensified research –
looking for keys to cancer, tissue regeneration, cell
differentiation, and gene control. It’s “the fifth
base” on the DNA double helix, says Arthur D. Riggs,
who heads up the biology department at the City of
Hope National Medical Center here…
A fifth base, he recalls, is 5-methylcytosine (5-
MeC), a variant of cytosine that makes up about 1% of
the nucleotides in mammalian DNA. This minor base was
first described in 1950 by Gerald R. Wyatt, a Canadian
agricultural researcher…
Altering a cell’s expression by thus preventing
formation of its “fifth base,” 5-MeC, may some day
have important effects on cancer and tissue
regeneration in humans.
McGraw-Hill’s Biotechnology Newswatch, January 4, 1982

Besides modulating specific DNA-protein interactions,
methylated cytosine, frequently referred to as the
fifth base of the genome, also influences DNA
structure, recombination, repair, imprinting, and
mutagenesis.
J Biol Chem, Aug 4, 1995 (MEDLINE Database)

The existence in eukaryotes of a fifth base, 5-
methylcytosine, and of tissue-specific methylation
patterns have been known for many years, but except
for a general association with inactive genes and
chromatin the exact function of this DNA modification
has been elusive. The different hypotheses regarding
the role of DNA methylation in regulation of gene
Ser. No. 76089226
10
expression, chromatin structure, development, and
diseases, including cancer are summarized, and the
experimental evidence for them is discussed.
Experienta Dec. 1, 1991 (MEDLINE database)

From this evidence, we draw the following conclusions.
First, the term “genomics” is a commonly used term that
describes the exploitation of genes in the field of
biotechnology, which is the field in which applicant
operates. See Applicant’s website included with Office
action dated November 22, 2002. See also, “Impact of
Genomics on Medicine [2002 Program]… Genomic information
is being applied as a critical component of drug
development strategies for identifying therapeutic targets
and for mapping out pathways of genes and proteins to gain
a comprehensive view of biology.” The numerous
registrations of record show that “genomics” is a term that
is commonly disclaimed or registered on the Supplemental
Register for goods and services in the area of
biotechnology.
Second, the evidence of record shows that the term 5TH
BASE is a merely descriptive term in the field of
biotechnology. The term certainly was used prior to any
date associated with applicant. One article indicates that
the “Fifth base” was first described in 1950 by a Canadian
researcher and articles between 1982 and 1995 refer to the
Ser. No. 76089226
11
“Fifth Base.” These articles describe the “Fifth Base” in
a similar way that applicant’s website does, i.e., as a
methylated version of cytosine. Cytosine, along with
adenine, guanine, and thymine, are the four bases normally
associated with DNA.
Third, we likewise find that when the terms are
combined in the term 5TH BASE GENOMICS, the combined term
is equally descriptive. “Methyl groups are known for their
ability to keep genes turned off. In fact, of the four
nucleic-acid bases – adenine, cytosine, guanine, and
thymine – only cytosine accepts methyl groups and the
resulting 5-methylcytosine is considered the ‘fifth base’
in DNA.” McGraw-Hill’s Biotechnology Newswatch, January
17, 1983. Applicant’s website (emphasis added) similarly
touts the same quality: “DNA methylation provides
information on gene regulation that is specific for cell
types and diseases, because cells can actively exchange C
with mC when they switch genes off or on.” Furthermore,
these “DNA methylation signals, comparable to a switch
turning on or off individual genes, can be digitized to
create a unique fingerprint for each cell.” Impacts of
Genomics on Medicine, Description of remarks by Dr.
Alexander Olek, Epigenomics, p.8. Obviously, to the extent
that applicant is involved with the science and commercial
Ser. No. 76089226
12
exploitation of the human genome and the function of genes
that involve using methylated cytosine (the Fifth Base) the
term would immediately describe its goods and services.
At this point we note that it is simply not sufficient
to find that the term for which registration is sought is
descriptive of something. We must, of course, consider the
mark for which applicant seeks registration in relation to
the goods and services set out in the application. The
examining attorney makes the following argument (Brief at
10) regarding the mark in relation to the goods and
services:
The applicant will be marketing and developing novel
diagnostic and pharmacodiagnostic products based on
DNA methylation. These novel diagnostic and
pharmacodiagnostic products are clearly the goods that
are identified in International Classes 1 and 5. The
laboratory goods are described in International Class
9, which will be used to develop and research the
diagnostic and pharmacodiagnostic products. The word
“genomics” also describes the functions, features,
uses and subject matter of the applicant’s
communication services in International Class 38 and
research and development services in International
Class 42.

The examining attorney concludes (Brief at 12) by
arguing that the “combination simply results in a term that
is readily understood: the science and commercial
exploitation of genomes and the functions of genes
regarding DNA’s fifth base, methylated cytosine. As such,
the term sought to be registered, 5TH BASE GENOMICS,
Ser. No. 76089226
13
immediately describes the salient functions, features, uses
and purposes of the relevant goods and services.”
We agree that the term 5TH BASE GENOMICS is merely
descriptive of goods and services that are in the field of
genomics and that involve locating, testing for, or using
DNA methylation patterns. The term would describe
applicant’s medical and scientific reagents, laboratory
equipment and testing services in Classes 1, 5, 9, and 42
to the extent that they detect or interpret DNA methylation
patterns. The presence of methylated cytosine, the fifth
base, is significant because of its possible role in such
areas as cancer research, tissue regeneration, cell
differentiation, and gene control. Therefore, the term 5TH
BASE GENOMICS would describe a significant feature of
applicant’s goods and services in Classes 1, 5, 9, and 42.
However, we reach the opposite conclusion for the
services of providing multiple-user access to the Internet
in Class 38. Viewing the mark 5TH BASE GENOMICS in the
context of providing users access to the Internet, we are
unable to determine what characteristic, quality, or
feature of the services in Class 38, the term would
describe. The examining attorney does not point to
specific evidence to show that providing access for
multiple-users to the Internet is described by the term 5TH
Ser. No. 76089226
14
BASE GENOMICS. The Internet can be used to research
virtually any topic. It would require some thought to
understand that the term 5TH BASE GENOMICS for providing
multiple-users access to the Internet described providing
these users access to the Internet for research that may
include the subject matter of 5TH Base Genomics.
Therefore, the examining attorney’s refusal regarding the
services in Class 38 is reversed.
One final point we make is that even though applicant
may be the first or only user of the term, this does not
mean that the term is not merely descriptive. In re
Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993) (“[W]e
observe that even if applicant has been the first and/or,
unlike its competitors, is presently the only user of the
term ‘LIGHTWEIGHTS’ in connection with shoes, such fact
cannot alter the merely descriptive significance of the
term”).
Decision: The refusal to register under Section
2(e)(1) is reversed regarding the services in Class 38.
The refusal to register under Section 2(e)(1) regarding the
goods and services in Classes 1, 5, 9, and 42 is affirmed.