BioSpace Int’l., Inc.

Trademark Trial and Appeal Board

Jul 27, 2004

No. 75924406 (T.T.A.B. Jul. 27, 2004)

Mailed:
July 27, 2004
Paper No. 20
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re BioSpace International, Inc.
________
Serial No. 75924406
_______
Mark Harrison of Venable, Baetjer and Howard, LLP for
BioSpace International, Inc.
Linda A. Powell, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney)
_______
Before Simms, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On February 22, 2000, applicant filed the above-
captioned application, by which it seeks registration on
the Principal Register of the mark DYNAMICALLY CONTROLLED
CRYSTALLIZATION SYSTEM for Class 42 services recited in the
application, as amended, as follows:
Scientific research in the field of protein
crystallization, growth and structures, namely,
growing crystals of proteins, DNA and RNA,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75924406
2
determining the macromolecular structure of
crystals, crystal diffractions, crystal
topography, and crystal micro examination;
growing crystals employing the earth’s
gravitational field, microgravity, levitational
techniques, using gradients, artificial
intelligence and other novel crystallization.
Scientific research in the field of cell growth
studies.
The application was filed as an intent-to-use application
under Trademark Act Section 1(b), 15 U.S.C. §1051(b).
After initial examination, publication of the mark for
opposition, and issuance of a Notice of Allowance,
applicant filed a Statement of Use, in which it alleged
March 1998 as the date of first use of the mark anywhere
and the date of first use of the mark in commerce. During
initial examination, applicant voluntarily disclaimed the
exclusive right to use CONTROLLED CRYSTALLIZATION SYSTEM
apart from the mark as shown.1
1 We note that the substitute specimens applicant submitted
during examination of the Statement of Use appear to belie
applicant’s contention, made during initial examination of the
application, that the wording DYNAMICALLY CONTROLLED has no
descriptive significance as applied to the services. For
example, the specimen states that “BioSpace International, Inc.
(BSI) is dedicated to producing innovative, state-of-the-art
technology, products and services which allow precise, dynamic
control of protein crystallization on Earth and in Space.”
(Emphasis added.) However, because the Trademark Examining
Attorney has not refused registration of applicant’s mark on the
ground of mere descriptiveness, the issue is not before us in
this appeal.
Ser. No. 75924406
3
At issue in this appeal is the Trademark Examining
Attorney’s final refusal of registration on the ground that
the matter sought to be registered, as it is used on
applicant’s specimens, fails to function as a service mark
for the recited services, but rather is used only to
identify a process, system or method used by applicant in
connection with the recited services. Trademark Act
Sections 1, 2, 3 and 45, 15 U.S.C. §§1051, 1052, 1053 and
1127.
Applicant and the Trademark Examining Attorney have
filed main appeal briefs. Applicant did not file a reply
brief, and did not request an oral hearing. We affirm the
refusal to register.
The Trademark Act provides for registration of a
service mark which has been used in commerce. Trademark
Act Sections 1(a)(1) and 3, 15 U.S.C. §§1051(a)(1) and
1053. The Act defines a “service mark” as a mark which is
used “to identify and distinguish the services of one
person, including a unique service, from the services of
others and to indicate the source of the services, even if
that source is unknown,” and further provides that a
service mark is “use[d] in commerce” “when it is used or
displayed in the sale or advertising of services and the
Ser. No. 75924406
4
services are rendered in commerce….” Trademark Act Section
45, 15 U.S.C. §1127.
It is settled that a designation which is used merely
to identify a process, method or system does not function
as a service mark. As the predecessor to our primary
reviewing court has stated:
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 between the offer of
services and the mark sought to be registered
therefor. [Emphasis in original.]
In re Universal Oil Products Company, 476 F.2d 653, 177
USPQ 456, 457 (CCPA 1973). See also In re Hughes Aircraft
Co., 222 USPQ 263 (TTAB 1984); In re Vsesoyuzny Ordena
Trudovogo Krasnogo Anameni Nauchoissledovatelsky Gorno-
Metallurgichesky Institut Tsvetnykh Mettalov “Vnitsvetmet”,
219 USPQ 69 (TTAB 1983); Liqwacon Corporation v. Browning-
Ferris Industries, Inc., 203 USPQ 305 (TTAB 1979); In re
J.F. Pritchard and Company and Kobe Steel, Ltd., 201 USPQ
951 (TTAB 1979); In re Produits Chimiques Ugine Kuhlmann
Societe Anonyme, 190 USPQ 305 (TTAB 1976); and Ex parte
Ser. No. 75924406
5
Phillips Petroleum Company, 100 USPQ 25 (Comm’r Pats.
1953). However, “while a term used merely to identify a
process does not perform the function of a service mark, a
term used to identify both a process and the services
rendered in connection therewith constitutes a service mark
within the meaning of the Trademark Act.” In re Hughes
Aircraft Co., supra, 222 USPQ at 264; see also In re
Produits Chimiques Ugine Kuhlmann Societe Anonyme, supra,
190 USPQ at 306 (TTAB 1976) and cases cited therein.
Moreover,
[t]he question of whether or not a term used as
the name of a process also functions as a
service mark must be determined by examining
the specimens of record along with any other
material made of record by applicant during the
prosecution of [the application]. This will
allow a determination of the commercial
impression created by the term as used by
applicant.
In re Hughes Aircraft Co., supra, 222 USPQ at 264. See
also Liqwacon Corporation v. Browning-Ferris Industries,
supra, 203 USPQ at 318 (TTAB 1979).
In the present case, the specimens submitted by
applicant consist of various brochures advertising
applicant’s services. We have carefully reviewed these
specimens, and we conclude that the designation applicant
seeks to register, DYNAMICALLY CONTROLLED CRYSTALLIZATION
Ser. No. 75924406
6
SYSTEM, clearly is used by applicant and would be
understood by purchasers solely as the name of the method
or system that applicant uses in rendering the services
recited in the application. Indeed, the brochures
repeatedly and expressly state that applicant’s DYNAMICALLY
CONTROLLED CRYSTALLIZATION SYSTEM is a “system,” “method,”
“process” or “technology.” For example (in these excerpts,
the bold type is applicant’s emphasis, and the underlining
is the Board’s emphasis):
BSI has developed a new system – the
Dynamically Controlled Crystallization System –
DCCS™ - (patent pending) which allows computer
controlled variations of crystallization
conditions…
A compact, sealed microgravity unit has been
developed for use in Space to determine the
effects of microgravity on the process for
NASA.
The Dynamically Controlled Crystallization
System™ has clear potential as a system for
automated screening of crystallization
conditions over a wide range of variables using
minimal amounts of sample.
BSI believes that its system will improve the
quality of crystallized proteins and provide
researchers far greater precision in the
protein crystal growth process.
Ser. No. 75924406
7
Solubility Profiles of the 3 Predominant
Methods Used in Protein Crystallography
-Microbatch is used in automated robotic
systems
-Vapor Diffusion is the most widely used
method
-The Dynamically Controlled Crystallization
System™ using dialysis is the method used
by BSI Proteomics
BSI Proteomics DCCS™ Technology
-Computer controlled dialysis
-Permits predetermined control of the rate
at which the protein approaches the
nucleation cloud point
-Variable volume requirements
-2ul to 40 ul
-Equilibrates within 60-minutes or as long
as 3-weeks (as needed)
It is apparent that DYNAMICALLY CONTROLLED
CRYSTALLIZATION SYSTEM is not used in these brochures to
identify applicant’s protein crystallization services and
to distinguish them from the protein crystallization
services of others, but rather is used to identify
applicant’s method of protein crystallization and to
distinguish that method from alternative methods used by
others.2 In the brochures, the designations which are used
by applicant (and which would be perceived by purchasers)
2 In the brochures, applicant’s use of the “TM” symbol in
conjunction with the designation it seeks to register does not
aid applicant’s contention that the designation is used as a
service mark for the recited services. This would be so even if
applicant had used the symbol “SM” rather than “TM.” See In re
Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987); In re Anchor
Hocking Corp., 223 USPQ 85 (TTAB 1984); In re Minnetonka, Inc.,
212 USPQ 772 (TTAB 1981).
Ser. No. 75924406
8
as indicators of the source of the services, per se, are
BioSpace International, Inc., BioSpace, BSI, and BSI
Proteomics, as is apparent from the following excerpts
(emphasis added):
BioSpace International, Inc. (BSI) is dedicated
to producing innovative, state-of-the-art
technology, products and services which allow
precise, dynamic control of protein
crystallization on Earth and in Space. BSI’s
Dynamically Controlled Crystallization System –
DCCS™- reduces the time and resources
traditionally needed for protein
crystallization, and will dramatically improve
the crystallization of proteins that have been
difficult or impossible to crystallize in the
past.
Mission Statement: BSI Proteomics is paving
the way for the discovery of new drugs with
DCCS™, and is dedicated to the production if
innovative state-of-the-art technologies,
products, and services, which allow precise,
dynamic control of protein crystallization for
structure elucidation leading to new drug
discoveries.
BioSpace International, Inc. is a biotechnology
company which is focusing on technologies
related to protein crystal growth in the
laboratory and in microgravity environment.
BSI has developed a new system – the
Dynamically Controlled Crystallization System –
DCCS™ - (patent pending) which allows computer
controlled variations of crystallization
conditions…
BSI believes that its system will improve the
quality of crystallized proteins and provide
researchers far greater precision in the
protein crystal growth process.
Ser. No. 75924406
9
Four of BioSpace’s DCCS™ commercial systems
will be flown on the Space Shuttle in the fall
of 1998.
BSI is currently interested in evaluating DCCS™
with a variety of proteins and conditions to
determine the breadth of applications possible
and future research needs in this area.
Examples of Proteins Crystallized by BSI
Proteomics…
The Dynamically Controlled Crystallization
System™ using dialysis is the method used
by BSI Proteomics
Applicant has not pointed to a single instance in
which DYNAMICALLY CONTROLLED CRYSTALLIZATION SYSTEM is used
in these brochures as a mark identifying applicant’s
services, per se, and distinguishing them from the services
of others, and we can find no such usage ourselves. We
therefore conclude that the commercial impression created
by DYNAMICALLY CONTROLLED CRYSTALLIZATION SYSTEM, as that
designation is used in applicant’s specimens, is solely
that it is the name of the proprietary method or process
that applicant uses in rendering the recited services. The
specimens fail to show the requisite “direct association
between the offer of services and the mark sought to be
registered therefor.” In re Universal Oil Products
Company, supra, 177 USPQ at 457. Accordingly, the
designation fails to function as a service mark for the
Ser. No. 75924406
10
recited services. Applicant’s conclusory argument to the
contrary is not persuasive.
Decision: The refusal to register is affirmed.