Biolex, Inc.

Trademark Trial and Appeal Board

May 30, 2008

No. 76633841 (T.T.A.B. May. 30, 2008)

Mailed:
5/30/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Biolex, Inc.
________

Serial No. 76633841
_______

Edward M. Prince, of Alston & Bird LLP for Biolex, Inc.

Mariam Aziz Mahmoudi, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______

Before Zervas, Walsh, and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Biolex, Inc. filed an application to register the mark
LEX SYSTEM, in standard character format, for
“manufacturing of plants, recombinant protein, and other
organisms and biomolecules to order and/or specification of
others in the field of biotechnology” in International
Class 40, and “research, development, and consultation
services in the field of biotechnology, namely, genetic
engineering of plants and other organisms, recombinant
protein and other biomolecules, discovery and production in
plants and other organisms and purification of recombinant
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76633841
2
proteins and other biomolecules produced in plants and
other organisms; product research and development for
discovering and making recombinant proteins and other
recombinant biomolecules in plants and other organisms for
pharmaceutical preparations and for other applications, and
consultation services for the discovery and production of
pharmaceutical preparations” in International Class 42.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark LEX SYSTEM,
when used in connection with the identified services, so
resembles the following three registered marks, all
registered to the same registrant, as to be likely to cause
confusion (collectively, the “THREE CITED REGISTRATIONS”):
1. LEXGEN, for “providing access to a genomic database
consisting of molecular biology and genetic research
information via a global computer information network;
computer services in the nature of providing online
publication, namely, scientific journals and newsletters in
the field of molecular biology and genetic research;
providing online molecular biology and genetic research
information and resources to others via a global computer

1 Application Serial No. 76633841, filed January 10, 2005,
originally filed pursuant to Section 1(a) of the Trademark Act,
15 USC §1051(a), amended to a Section 1(b) application, alleging
a bona fide intent to use. Applicant has disclaimed the
exclusive right to use “SYSTEM” apart from the mark as shown.
Serial No. 76633841
3
network; collaborative research and development services in
the field of molecular biology and genetics.”2
2. LEXGEN.COM, for “providing an online computer
database in the field of genetic research.”3
3. LEXVISION, for “providing a database consisting of
molecular biology and genetic research information.”4
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney
filed briefs. For the reasons discussed herein, the Board
affirms the final refusal to register.
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing
on a likelihood of confusion. In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by §2(d)

2 Registration No. 2689750, issued February 25, 2003 for a typed
drawing in International Class 42, claiming first use and first
use in commerce on April 1, 1999.
3 Registration No. 2570600, issued May 21, 2002 for a typed
drawing in International Class 42, claiming first use and first
use in commerce on April 1, 1999.
4 Registration No. 2548260, issued March 12, 2002 for a typed
drawing in International Class 42, claiming first use and first
use in commerce on April 1, 2000.
Serial No. 76633841
4
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks”). We consider each of the factors as to which
applicant or the examining attorney presented arguments or
evidence.
The similarity or dissimilarity
and nature of the services
Applicant is seeking registration of its mark for
certain types of manufacturing, research and development
services in biotechnology. Applicant’s International Class
42 services are identical in part to those identified by
the LEXGEN registration for “collaborative research and
development services in the field of molecular biology and
genetics.”5 The remaining services identified in the THREE
CITED REGISTRATIONS are also related to applicant’s
identified services in both International Class 40 and 42,
and would be used in connection with, and are integral to,
research and development services in the biotechnology
field.
The examining attorney has introduced evidence of
third party registrations to show that applicant’s and
registrant’s goods are likely to be perceived by the
relevant consuming public as emanating from a common
source. Third-party registrations which individually cover
a number of different items and which are based on use in
commerce may have some probative value to the extent that

5 LEXGEN, Reg. No. 2689750.
Serial No. 76633841
5
they serve to suggest that the listed goods and/or services
are of a type which may emanate from a single source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993
(TTAB 1993). In particular, the following third party
registrations introduced by the examining attorney cover
both “research and development” within biotechnology -- as
identified both by applicant and by registrant, and an
“online computer database” within biotechnology -- as
identified by registrant:
1. VACCINESHOPE.COM, for, inter alia, both “providing
an on-line computer database in the field of health”; and
“product research and development in the field of vaccines
and biologicals.”6
2. INPHARMATICA, for, inter alia, both “providing an
on-line computer database in the fields of biology,
genomics, . . . biotechnology . . . “; and “conducting
scientific research and development of products and
treatments for others.”7
3. PROTEOME SYSTEMS INTEGRATED PROTEOME TECHNOLOGY,
for, inter alia, “providing an on-line database in the
field of chemical research, biotechnology, and proteome
technology”; and “research and product development for

6 Registration No. 2856191, issued June 22, 2004 for a design in
International Class 42, claiming first use and first use in
commerce on January 23, 2004.
7 Registration No. 2944193, issued April 26, 2005, for a design
in International Class 42, claiming first use and first use in
commerce on February 1, 2003.
Serial No. 76633841
6
others in the field of chemical research, biotechnology,
and proteome technology.”8
4. BIOEXPRESS, for, inter alia, “providing an on-line
interactive computer database in the field of
biotechnology”; and “technical research and consulting
services in the field of biotechnology.”9
5. DECIPHER, for, inter alia, “providing, developing,
distributing and licensing of computer services and
database [sic] in the field of genomics, proteomics,
bioinformatics and related activities”; and “providing
consultation and research in the field of biotechnology,
microbiology, genomics, bioinformatics and related
activities.”10
Applicant argues that the focus of its services are
quite different from what is or may be offered by
registrant via the THREE CITED REGISTRATIONS, since
applicant’s identified services do not include databases.
The point, however, is not confusion as to the services
that may be rendered by applicant or by registrant, but
rather confusion as to the source of those services. In re
TSI Brands Inc., 67 USPQ2d 1657 (TTAB 2002); Albert

8 Registration No. 2806965, issued January 20, 2004 for a design
in International Class 42, claiming first use May 31, 1999 and
first use in commerce on October 31, 1999, with disclaimers
included.
9 Registration No. 2875217, issued August 17, 2004 for a typed
drawing in International Class 42, claiming first use and first
use in commerce on December 29, 1999.
10 Registration No. 2724127, issued June 10, 2003 for a typed
drawing in International Class 42, claiming first use May 1, 2001
and first use in commerce on May 10, 2001.
Serial No. 76633841
7
Trostel, 29 USPQ2d at 1784. Indeed, logically, a consumer
may expect that the results of “research and development
services” -- as identified both by applicant and by
registrant, would be reflected in an “online computer
database” -- as identified by registrant, and that they
therefore emanate from a common source. Since the services
identified by applicant and those identified in the THREE
CITED REGISTRATIONS are partially identical and otherwise
related, this du Pont factor weighs in favor of finding a
likelihood of consumer confusion.

The similarity or dissimilarity of established,
likely-to-continue trade channels
and classes of consumers
Applicant argues that its target customers are
“sophisticated consumers,” and that therefore they will
recognize the difference between the mark as used on its
identified services in International Classes 40 and 42, and
the marks in the THREE CITED REGISTRATIONS as they are or
may be used in association with registrant’s services.
Applicant has submitted no evidence to support its argument
however. Moreover, even a sophisticated consumer is not
immune from source confusion. With the partially identical
and otherwise related services as described above, and the
similarity of the marks discussed below, even a careful,
sophisticated consumer is not immune from source confusion.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“The alleged
sophistication of golfers is outweighed by the Board’s
Serial No. 76633841
8
findings of strong similarity of marks and identity of
goods, both of which we uphold.”)
Furthermore, there is nothing in registrant’s
recitations of services that restricts registrant from
targeting the same consumers as applicant. In the absence
of specific limitations in the registration, we must
presume that registrant’s services will travel in all
normal and usual channels of trade and methods of
distribution and be sold to all classes of consumers.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Squirtco v.
Tomy Corporation, 697 F.2d 1038, 216 USPQ 937 (Fed. Cir.
1983). With applicant and registrant targeting the same
classes of consumers, we find that the third and fourth du
Pont factors generally favor a finding of likelihood of
confusion.

The similarity or dissimilarity of the marks
in their entireties
Preliminarily, we note that the more similar the
services at issue, the less similar the marks need to be
for the Board to find a likelihood of confusion. Century
21 Real Estate Corp. v. Century Life of America, 23 USPQ2d
1698 (Fed. Cir. 1992). We consider and compare the
appearance, sound, connotation and commercial impression of
the marks in their entireties. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Applicant
Serial No. 76633841
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argues that the marks are not sufficiently similar.
However, all share the common first syllable, LEX. The
word “lex” is defined as “law.”11 This is an arbitrary term
as applied to the services identified in the THREE CITED
REGISTRATIONS. The registered marks LEXGEN, LEXGEN.COM,
AND LEXVISION are therefore inherently strong.
Although we compare the marks in their entireties, we
note that LEX is the dominant term in both applicant’s
mark, and in the THREE CITED REGISTRATIONS. Applicant has
disclaimed the only other word in its mark, SYSTEM.
Descriptive matter is generally viewed as a less dominant
or significant feature of a mark. In re National Data
Corp., 224 USPQ 749, 750 (Fed. Cir. 1985)(“Regarding
descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion’”).
In the THREE CITED REGISTRATIONS as well, the term LEX is
likely to be perceived as dominant over the additional,
subordinate terms “GEN,” “GEN.COM,” and “VISION.”
Applicant argues that the word LEX is commonly-used,
and that therefore the marks in the THREE CITED
REGISTRATIONS are “weak.” Applicant has referred in its
papers of record to 16 current or pending registrations
containing the term “LEX.” However, 15 relate to

11 American Heritage Dictionary (4th ed. 2000). The Board may
take judicial notice of dictionary definitions not included in
the record. See University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc. 213 USPQ 594, 596 (Fed. Cir. 1982).
Serial No. 76633841
10
“computers”; “computer hardware”; or computer “repair”
services, including one registration for “computer
hardware” with the exact mark applicant seeks to register,
LEX SYSTEM.12 The only registration cited by applicant that
relates to biotechnology research services or database
offerings is LEXICOSCIENCE.13 This is a Section 44
registration, and is not use-based. There is no evidence
in the record that this mark is in use, and therefore, we
accord it little probative value in our determination of
the strength of the term LEX in the THREE CITED
REGISTRATIONS. We also accord little probative value to
the FLEX marks cited by applicant, since FLEX creates a
different connotation and commercial impression than LEX.
Moreover, a weak mark is still protectable, and third party
usage or infringement does not entitle applicant to
register a confusingly similar mark. See Giant Food Inc.
v. Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982)(even
owner of weak mark is entitled to protection from
likelihood of confusion).
In comparing the marks, we are mindful that the test
is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their

12 Registration No. 3095279, issued March 31, 2005 for a design in
International Class 9, claiming first use and first use in
commerce on July 1, 2001.
13 Registration No. 2692241, issued March 4, 2003 for a typed
drawing in International Classes 9 and 42, under Section 44 of
the Trademark Act, 15 USC §1126.
Serial No. 76633841
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overall commercial impression so that confusion as to the
source of the goods and/or services offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). Although there are certain differences
between applicant's mark and each of the cited registered
marks, the similarities are more significant. Applicant's
mark and each of the cited marks begins with "LEX,"
and "LEX" is the dominant element in applicant's mark and
each of the cited marks. Accordingly, when we view and
compare applicant's mark and each of the cited marks in
their entireties, we conclude that applicant's mark is
similar to each of the cited marks in appearance, sound,
connotation and commercial impression.
Since the relevant, dominant portions of the marks are
identical, and the marks as a whole are similar, the Board
finds that the first du Pont factor weighs in favor of
finding that there is a likelihood of consumer confusion.
Balancing The Factors
Serial No. 76633841
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Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that the
services are partially identical and otherwise related;
they are likely to be sold through the same channels and to
target the same consumers; and the marks are similar. It
is well-established that any doubts as to likelihood of
confusion are to be resolved in favor of the registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988). Accordingly, we find a likelihood
of confusion between the mark applicant seeks to register
in International Classes 40 and 42, LEX SYSTEM, and the
THREE CITED REGISTRATIONS discussed herein, LEXGEN,
LEXGEN.COM, and LEXVISION.
Decision: The refusal to register is affirmed.