Verenium Corporation

Trademark Trial and Appeal Board

May 4, 2009

No. 77170309 (T.T.A.B. May. 4, 2009)

Mailed:
May 4, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Verenium Corporation
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Serial No. 77170309
Serial No. 77171289
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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
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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.

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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.

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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.
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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
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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
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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”
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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
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technologies, not its services, and therefore they are not
registrable.
Decision: The refusals to register are affirmed.