Alexandria Real Estate Equities

Trademark Trial and Appeal Board

Mar 10, 2005

No. 75982917 (T.T.A.B. Mar. 10, 2005)

Mailed:
March 10, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alexandria Real Estate Equities
________

Serial No. 75982917
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Susan D. Berney-Key and Mary C. O’Connor of Cooley Godward
LLP for Alexandria Real Estate Equities.

Carolyn Pendleton Cataldo, Trademark Examining Attorney,
Law Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Bucher, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Alexandria Real Estate Equities seeks registration on
the Principal Register of the mark LABSPACE for services
recited in the application, as amended, as follows:
“Business consulting services; business
incubator services, namely business
management and business development services
in the form of start-up support for
businesses of others; rental and leasing of
office machinery and equipment,” in
International Class 35;
“Investment brokerage, consultation, and
management; financial portfolio management;
financial services, namely financial
consultation, financial analysis, financial
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75982917
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planning, financial management, financial
portfolio management, financing services,
and providing debt and equity capital;
incubator financing services,” in
International Class 36; and
“Rental and leasing of computers,” in
International Class 42.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that this
term is merely descriptive of the recited services under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1).

1 Application Serial No. 76187873 was filed on December 29,
2000 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. At applicant’s request, that
application was divided in August 2002. On March 8, 2003, an
amendment alleging use at least as early as May 13, 1999 (for the
services that remained in the parent application) was filed.
Then, on December 30, 2003, the parent application resulted in
issuance of Reg. No. 2801541 on the Supplemental Register, for
services recited as follows:
“Operation of businesses for others, namely life science
research; business management,” in International Class
35;
“Real estate services, namely, real estate brokerage,
leasing and management services; land acquisition, namely
real estate brokerage services; rental of real estate,
namely rental of commercial, manufacturing, and research
and development space, leasing of real property,” in
International Class 36;
“Real estate development services; building construction
and repair services; maintenance and/or repair of
buildings, electrical systems, heating and air
conditioning systems, and plumbing systems,” in
International Class 37;
“Rental of warehouse space,” in International Class 39; and
“Architectural design services; engineering services,” in
International Class 42.
Serial No. 75982917
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Applicant and the Trademark Examining Attorney have
fully briefed the case. Applicant did not request an oral
hearing.
We affirm the refusal to register as to the services
in International Class 35 but reverse the refusals to
register as to the services in International Classes 36 and
42, as discussed below.
A term is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes
or uses of the goods or services with which it is used or
is intended to be used. A term is suggestive, and
therefore registrable on the Principal Register without a
showing of acquired distinctiveness, if imagination,
thought or perception is required to reach a conclusion on
the nature of the goods or services. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
The question of whether a particular term is merely
descriptive is not decided in the abstract. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the term in relation to the
Serial No. 75982917
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goods or services for which registration is sought, the
context in which the term is used or is intended to be
used, and the significance that the term is likely to have
on the average purchaser encountering the goods or services
in the marketplace. See In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
The Trademark Examining Attorney argues that this
proposed mark is merely descriptive because it describes a
significant function, purpose or characteristic of
applicant’s services. She argues that the word “lab” has
been shown to be a shortened version of the word
“laboratory,” and that the evidence of record demonstrates
that the wording “lab space” is recognized as referring to
space in buildings used for laboratory purposes.
By contrast, applicant argues that the articles placed
into the record by the Trademark Examining Attorney refer
to “lab space” and “laboratory space” as physical locations
and buildings; that the evidence does not tie the wording
Serial No. 75982917
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“lab space” to offering of “critical” services, and does
not show use of the mark to describe the types of services
involved herein; that a “consumer would have to use …
imagination to make the leap … to ascertain the nature of
the services that are actually offered in the present
application”; that none of the articles use “labspace” as a
single word; and that the Trademark Examining Attorney has
failed to demonstrate a single instance of competitors’ use
of the wording “labspace.”2 Applicant has also argued that
its mark does not indicate that the services provided in
connection with the mark are financial, incubation and
consulting services, and that “the mark does not describe
these services with any degree of particularity.”
Among the evidence in the record are the following
excerpts from the LEXIS/NEXIS database of news articles:
“…the General Services Administration …
sought $92 million in funding to build the
project’s second phase, and $9 million to
design the third phase, office and lab space
for the Center for Devices and Radiological
Health”;3

“CNI has about 10 employees now and has
taken office and lab space near Interstate
10 and Texas 6”;4

2 In our analysis of whether the applied-for term is merely
descriptive, it is certainly immaterial that none of the articles
uses “labspace” as a single word.
3 The Washington Times, April 16, 2001.
4 The Houston Chronicle, April 12, 2001.
Serial No. 75982917
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“To expand research, for example, it needs
lab space that it doesn’t have…”;5
“The company is eying the Piedmont Triad
Research Park in downtown Winston-Salem
because it offers incubator lab space that
is not available in Greensboro…”;6

“What we lack is affordable commercial lab
space, which means that companies out of the
incubator stage have to look elsewhere for
space to expand”;7

“The two-story building will have offices,
lab space and training rooms”;8

“The expansion nearly doubles the space in
the building, providing seven full-size,
state of the art teaching laboratories –
compared with three before the construction.
It also provides additional research lab
space, including one lab just for students…”9

“In addition to lab space, the Bender
Laboratory also would house incubator space
for drug discovery enterprises…”;10

“Scientific Properties is actively pursuing
other development opportunities, and
Rothschild would love to create more lab
space …”;11

“… Phase 3 Properties, a firm that
specializes in building biotech lab space”;12

“The company settled into new lab space at
the Karmanos Cancer Institute at Wayne State
University. ‘We do see (laboratory and
incubator space) as an issue that needs to
be addressed…’”;13

5 Pittsburgh Post-Gazette, April 12, 2001.
6 News & Record, April 5, 2001.
7 Crain’s New York Business, April 2, 2001.
8 The Houston Chronicle, April 1, 2001.
9 The Courier-Journal, March 29, 2001.
10 The Times Union, January 31, 2002.
11 The Herald-Sun, January 24, 2002).
12 The San Diego Union-Tribune, January 18, 2002.
13 Crain’s Detroit Business, January 7, 2002. We note that
start-up businesses in basic life science research, drug
production, cellular therapy and drug discovery use the word
Serial No. 75982917
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“The company moved into its current facility
in November 2000 after it outgrew its lab
space at the Maryland Technology Development
Center, a Rockville business incubator”.14

The Trademark Examining Attorney demonstrated from a
newspaper article drawn from the Internet that applicant
specializes in acquiring laboratory facilities for lease:
TITLE: “Subleasing helps solve lab space shortage”,
…
“How is the growing Seattle biotechnology
community coping with the lack of laboratory
space in the area? Everyone from start-up
biotech companies to established research
centers are looking for alternative
solutions.

Most new business enterprises can lease
office or warehouse space and be relatively
flexible in meeting their specific space
needs. Start-up biotechnology companies
must either spend significant amounts of
their coveted capital to construct
laboratory facilities or compete with well
financed, growing organizations like the
University of Washington or Immunex Corp.
for what little laboratory space becomes
available.

However, there is virtually no vacant, high
quality laboratory space available right
now.

Two recently purchased facilities and one
facility currently under construction are

“incubator” in two different contexts. The first one is seen in
applicant’s recital of services. International Class 35 refers
to “business incubator services.” These incubator services
include development and support for small biotech firms. The
second meaning of incubator is seen in this particular excerpt,
where it appears to be a term of art for a controlled environment
for growing cultures, etc.
14 The Washington Post, December 17, 2001.
Serial No. 75982917
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the only near-term options: Alexandria Real
Estate Equities, a real estate investment
trust (REIT) specializing in acquiring
laboratory facilities for lease, purchased
the former Fred Hutchinson Cancer Research's
building on First Hill in 1996 and recently
acquired Bristol-Myers Squibb’s former
research buildings in Seattle. The Virginia
Mason Research Center is in the midst of
constructing a new state-of-the-art
laboratory facility at 9th and Seneca, known
as the Benaroya Research Center at Virginia
Mason.

All three buildings are currently marketing
laboratory space for lease in the near
future; however, the space is not currently
available ….15

The Trademark Examining Attorney argues from this
evidence that applicant’s services specifically relate to
providing business, equipment and financing support to
firms seeking to acquire “laboratory space,” or simply “lab
space.” She argues that while the term “lab space” indeed
describes a physical location, this is exactly the focus
of, or purpose for, applicant’s business and financial
services. That is, applicant’s services enable start-up
companies to obtain lab space.
On the other hand, as argued by applicant, the NEXIS
evidence quoted above uses the term “lab space” to refer
specifically to physical space, and not directly to any

15 The Seattle Daily Journal of Commerce, March 12, 1998,
www.djc.com/special/cmarket98/10036754.htm

Serial No. 75982917
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kind of services. Yet we agree with the Trademark
Examining Attorney that the word “lab” is clearly a
shortened version of the word “laboratory,” and the record
shows that the wording “lab space” refers to space in
buildings used for laboratory purposes.
Accordingly, when used in connection with applicant’s
services of acquiring laboratory facilities for lease
(i.e., the bundle of services recited in the “parent”
application), the term LABSPACE was appropriately placed on
the Supplemental Register [See Reg. No. 2801541, footnote
1, supra].
In the instant appeal, however, we have some doubt as
to whether the term LABSPACE is merely descriptive for the
ancillary services in at least two of the International
Classes divided out for this “child” application – namely,
applicant’s generalized financial services in International
Class 36 and applicant’s computer rental services in
International Class 42. Nothing in the recitation of
services or in the NEXIS evidence points to unique
financial services in this context or to computer rentals
that are specifically designed for laboratory spaces.
Moreover, even if there were a category of services known
as “lab” computer rentals, for example, the addition of the
Serial No. 75982917
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term “space” would appear to make the composite mark into a
suggestive term when used in connection with these computer
rental services.
As to the business incubator services in International
Class 35, however, we are compelled to examine more closely
the specific evidence that the Trademark Examining Attorney
has placed into the record.
Applicant’s business incubator services in the form of
start-up support would include start-up support for
biotechnology companies needing laboratory space. Some of
the articles indicate that lab space is a serious problem
for these types of companies:
! “it needs lab space that it doesn’t have”
! “What we lack is affordable commercial lab
space, which means that companies out of
the incubator stage have to look elsewhere
for space to expand”;
! “…‘We do see (laboratory and incubator
space) as an issue that needs to be
addressed…’”
! “Subleasing helps solve lab space
shortage”

Applicant provides exactly this type of service
(“… specializing in acquiring laboratory facilities for
lease …”). When prospective purchasers see the term
LABSPACE in association with business incubator services in
the form of support for start-up biotech companies, they
will immediately understand that applicant’s services
Serial No. 75982917
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include services involving business development services
that assist start-up laboratories and research businesses
in overcoming their challenging needs for lab space.
As the Board said in In re Analog Devices, Inc.,
6 USPQ2d 1808 (TTAB 1988), aff’d in a decision marked non-
citable as precedent, 871 F.2d 1097, 10 USPQ2d 1879 (Fed.
Cir. 1989), “it is a well settled legal principle that
where a mark may be merely descriptive of one or more items
of goods [or services] in an application but may be
suggestive or even arbitrary as applied to other items,
registration is properly refused if the subject matter for
registration is descriptive of any of the goods [or
services] for which registration is sought.” Accordingly,
having determined that the mark LABSPACE is merely
descriptive as to “business incubator services,” the
refusal to register as to all of the services in
International Class 35 must be affirmed.
Decision: The refusals to register as to the services
in International Classes 36 and 42 are reversed, but the
refusal to register as to the services in International
Class 35 is hereby affirmed.