Verenium CorporationDownload PDFTrademark Trial and Appeal BoardMay 4, 2009No. 77170309 (T.T.A.B. May. 4, 2009) Copy Citation Mailed: May 4, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Verenium Corporation ________ Serial No. 77170309 Serial No. 77171289 _______ John M. Kim, Esq. for Verenium Corporation. David I, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Hairston, Walters and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Verenium Corporation, by change of name from Diversa Corporation (“applicant”), filed the following use-based applications: 1. GENEREASSEMBLY, in standard character form, for services ultimately identified as follows: Scientific research and development services regarding new products and processes for others; directed evolution of proteins and peptides, namely, protein engineering wherein each amino acid along the chain can be exchanged out to be any other naturally occurring or synthetic amino acids to third parties for biological sequences, THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77170309 Serial No. 77171289 2 nucleic acids, enzymes, antibodies, and polypeptides in the biotechnology, biofuel, industrial, agricultural and pharmaceutical fields, in Class 42. 2. GSSM, in standard character form, for services ultimately identified as follows: Scientific research and development services regarding new products and processes for others; directed evolution of proteins and peptides, namely, protein engineering to third parties for biological sequences, nucleic acids, enzymes, antibodies, and polypeptides in the biotechnology, biofuel, industrial, agricultural and pharmaceutical fields, in Class 42. The services are hereinafter referred to as “protein engineering services.” Applicant submitted the same brochure as a specimen of use in each application. The marks sought to be registered are displayed in the text of the brochure as follows: After identifying a molecule of interest, we may apply our Gene Site Saturation Mutagenesis™ (GSSM™) and GeneReassembly™ technologies to create large populations of new gene variants. GSSM is a Diversa patented approach for generating all possible single amino acid substitutions in an expressed protein. GeneReassembly may be more effective than other reassembly or shuffling technologies since it is not restricted to the use of highly related gene sequences. The new genes created through these technologies can then be screened for one or more desired characteristics. Serial No. 77170309 Serial No. 77171289 3 The Trademark Examining Attorney refused to register the marks in both applications on the ground that the subject matter sought to be registered does not function as a service mark. Sections 1, 2, 3 and 45 of the Trademark Act of 1946, 15 U.S.C. §§1051-1053 and 1127. The refusals are based specifically on the premise that, as displayed in the specimen of use, the marks do not identify a service; they identify a process or system. In response, applicant submitted the following excerpt from its website as a substitute specimen. Serial No. 77170309 Serial No. 77171289 4 The Examining Attorney made the refusals final and applicant appealed. Because the two applications involve similar issues, they are being considered in a single opinion. Applicant argues that GSSM and GENEREASSEMBLY are used to describe its protein engineering services which are part of its “DirectEvolution platform of services, which provides state of the art gene evolution technology to biotechnology and pharmaceutical companies.”1 Applicant contends that its webpage shows GSSM and GENEREASSEMBLY used as service marks, not just process names. The Examining Attorney argues to the contrary that, [i]t is apparent from the specimens of record that [GENEREASSEMBLY/GSSM] is not used to identify the applicant’s process for generating protein variant services and to distinguish them from the protein generating services of others, but rather is used to identify applicant’s method for achieving their claimed protein generating services.2 Section 3 of the Trademark Act of 1946, 15 U.S.C. §1053, provides for the registration of service marks. A “service mark” is a mark used, or intended to be used, in the sale or advertising of services to identify the services of one person and distinguish them from the 1 Applicant’s Briefs, p. 3. 2 Examining Attorney’s Briefs, p. 3. Serial No. 77170309 Serial No. 77171289 5 services of others. Section 45 of the Trademark Act of 1946, 165U.S.C. 1127. A “service,” while not defined in the Trademark Act, is generally considered to be an activity performed for the benefit of one other than the applicant. TMEP §1301.01 (5th ed. 2007). See also In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971, 973 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89, 90 (TTAB 1984). The issue before is whether the subject matter sought to be registered functions as service marks. To determine whether the GSSM and GENEREASSEMBLY function as service marks, we must examine the specimens made of record by the applicant during the prosecution of the applications. This will allow us to determine the commercial impressions created by the terms sought to be registered. The following guidelines have been set forth to be considered in analyzing whether a term is used as a mark. The requirement that a mark must be “used in the sale or advertising of services” to be registered as a service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association Serial No. 77170309 Serial No. 77171289 6 between the offer of services and the mark sought to be registered therefor. (Emphasis in the original). In re Universal Oil Products Company, 476 F.2d 653, 177 USPQ 456, 457 (CCPA 1973). The specimen filed with the application is a brochure with the following title: DIVERSA Innovation from Biodiversity and Gene Evolution In the brochure, applicant references the marks sought to be registered as technologies and patented approaches. 1. [W]e may apply our Gene Site Saturation Mutagenesis™ (GSSM™) and GeneReassembly™ technologies to create large populations of new gene variants. 2. GSSM is a Diversa patented approach for generating all possible single amino acid substitutions in an expressed protein. 3. GeneReassembly may be more effective than other reassembly or shuffling technologies since it is not restricted to the use of highly related gene sequences. 4. The new genes create through these technologies can then be screened for one or more desired characteristics. As used in this specimen, GSSM and GENEREASSEMBLY are used only as the name of applicant’s technology for conducting protein engineering. There is no direct association between applicant’s protein engineering services and the marks sought to be registered. In other Serial No. 77170309 Serial No. 77171289 7 words, there is nothing that identifies the subject matter sought to be registered as the name of the services (e.g., GSSM protein engineering services). Contrary to applicant’s arguments, the fact that applicant uses a superscript “tm” (™) with the terms sought to be registered is not determinative. In re Remington Products Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) (“Use of the letters “TM” on a product does not make unregistrable matter into a trademark”); In re Morganroth, 208 USPQ 284, 287 (TTAB 1980) (“the use of the “TM” does not, ipso facto, mark a trademark or service mark out of the term or expression in connection with which it is used”); In re Plymouth Cordage Co., 122 USPQ 336, 336 (TTAB 1959) (the fact that applicant’s shipping tags refer to a notation as a trademark does not make it a trademark). Whether a term performs the function of a service mark depends upon its manner of use and the probable impact of that use on customers. In re Moody’s Investors Service Inc., 13 USPQ2d 2043, 2047 (TTAB 1989). The substitute specimen comprising an excerpt from applicant’s website also fails to show GSSM and GENEREASSEMBLY used as service marks. The title of the webpage is “Two complementary methods lie beneath Verenium’s DirectEvolution® platform.” The first “method” Serial No. 77170309 Serial No. 77171289 8 identified is “Gene Site Saturation Mutagenesis™ (GSSM™) Technology,” which is described as a patented technology to generate protein variants. The second “method” identified in the website is “Tunable GeneReassembly™ (TGR™) Technology,” which is described as a technology for optimizing the characteristic of proteins. GSSM and GENEREASSEMBLY are identified and used as the names for applicant’s technology for protein engineering, and not as service marks identifying the services. Applicant’s declarations by Jennifer Risser, its in- house patent attorney, attesting to the facts that GSSM and GENEREASSEMBLY are service marks and that applicant’s customers recognize these terms as service marks are not persuasive. The issue before us is whether the specimens of record show the subject matter sought to be registered used as marks, not whether the subject matter is capable of functioning as service marks or whether consumers recognize the subject matter sought to be registered as service marks. On the record before us, there is no evidence that applicant is using GSSM or GENEREASSEMBLY as service marks. Under the circumstances, we fully agree with the Examining Attorney that GSSM and GENEREASSEMBLY, as used in the specimens of record, serve only to identify applicant’s Serial No. 77170309 Serial No. 77171289 9 technologies, not its services, and therefore they are not registrable. Decision: The refusals to register are affirmed. 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