Centocor

Trademark Trial and Appeal Board

Nov 29, 2006

No. 78448489 (T.T.A.B. Nov. 29, 2006)

Mailed: November 29, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Centocor
________

Serial No. 78448489
_______

Mary Pat Weyback of Drinker Biddle & Reath LLP for
Centocor.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Centocor, a Pennsylvania corporation, has filed an
application to register PROGRAMMED PROTEIN (in standard
character form) on the Principal Register for “medical
research services relating to DNA and gene synthesis” in
International Class 42.1
The examining attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 78448489
2
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its services. After the examining attorney
made the descriptiveness refusal final, applicant appealed
and filed a request for reconsideration. Upon the
examining attorney’s denial of the request for
reconsideration, the Board resumed the appeal. Both
applicant and the examining attorney have filed briefs. We
affirm the refusal to register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a significant
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used, or intended to be used. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-

1 Application Serial No. 78448489, filed July 9, 2004, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a
Serial No. 78448489
3
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient,
quality, characteristic, function, feature, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978).
In support of her position, the examining attorney
submitted the following dictionary definition from the
Merriam-Webster Online Dictionary for the word
“programmed”:
Programmed: 3.(c)(1) to code in an organism’s
program (2) to provide with a biological program,
; 4.
to predetermine the thinking, behavior, or
operations of as if by computer programming.

bona fide intention to use the mark in commerce.
Serial No. 78448489
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In addition, she submitted printouts from various
websites retrieved from the Internet and excerpted articles
from various publications retrieved from the Lexis/Nexis
database where the phrase “programmed protein” or the words
“programmed” and “protein” are used by third parties in
various medical contexts. The examining attorney
highlighted the following excerpts from the Internet and
Lexis/Nexis evidence:2
Our bodies are composed of many millions of
individual cells and each cell inherits genetic
material through ordered cell cycle events
including DNA replication and chromosome
segregation. Since most of these events are
regulated by proteins, selective and programmed
protein degradation can act as a rapid switch to
control biological transitions. www.mcri.ac.uk/
research/cellcycle.asp;

This laboratory is used, for example, to develop
novel protein chromatography tools, to improve
the bio-efficacy of proteins undergoing sustained
release drug delivery, to design unique
surfactants that recognize and separate DNA in a
sequence-specific manner, to develop novel

2 Applicant’s argument that the websites from foreign sources are
not relevant is not persuasive in this case in view of the highly
technical nature of the services and the sophistication of the
prospective consumers of its services. See In re Remacle, 66
USPQ2d 1222 n. 5 (TTAB 2002) (Board found that professionals in
certain fields, such as medicine, engineering, computers and
telecommunications would be likely to monitor developments in
their fields without regard to national boundaries, and that the
Internet facilitates such distribution of knowledge). We further
note applicant’s suggestion that cached pages are not “competent
evidence of the current use of the terms under consideration”
because they are not the most recent version of the page. While
it is true that the cached pages are not the current version of a
web page, they do provide evidence of use of a term just as an
excerpt from an earlier magazine publication or old newspaper
article would.
Serial No. 78448489
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responsive surfaces with thermally-programmed
protein binding affinities, and to design bioMEMS
devices for cell separations and highly
sensitive, multiplexed biosensors.
www.cheme.cmu.edu/facilities/biointerfaces.htm;

Cystic fibrosis is a serious genetic disease
(autosomal recessive) frequently seen in
Caucasian people. It is caused by mutations in
the CFTR gene (cystic fibrosis transmembrane
conductance regulator gene). (1) The CFTR
protein programmed by this gene mainly functions
as a channel or pore that transports chloride
ions across cell membranes. (2) CFTR is a cyclic
AMP-regulated epithelial chloride channel that
appears to control the activity of several other
transport proteins. Promising insights into
cystic fibrosis; Phytotherapy Review & Commentary
Townsend Letter for Doctors and Patients, The
Townsend Letter Group Townsend Letter for Doctors
and Patients (April 1, 2005);

This is so even though the peptides originate
from regions both outside and within the putative
DNA binding domain of jun protein. (ii) A small
protein programmed in bacteria with the 3 coding
region of c-jun protects the same sequence of
SV40 DNA from nuclease digestion as does AP-1 and
binds with the same efficiency as AP-1 to mutant
binding sites for... Oncogenes and
transcriptional control, Science (December 4,
1987); and

These results again illustrate the power of
merging the understanding of a reaction mechanism
with the ability of the immune system to yield
binding proteins programmed to interact in highly
specific ways as the substrate traverses the
reaction coordinate. The ability to dictate the
reaction mechanism by design allows unprecedented
control of the product outcome. But a particular
feature of our study is the... Antibody
catalyzed catonic cyclization, Science (May 27,
1994).

Serial No. 78448489
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In support of its position, applicant submitted a
business plan which “describe[s] applicant’s anticipated
PROGRAMMED PROTEIN services,” a “hit list” and excerpted
articles from the GOOGLE search engine, search results from
the Lexis Allnews database, search results from the Lexis
“Full-Text Medical Journals” and “Current Healthcare News”
databases, search results from the websites of the “Top 10
Pharmaceutical companies,” and search results from the “On-
Line Medical Dictionary.” Br. p. 3. In addition,
applicant submitted the following dictionary definition
from the Merriam-Webster Online Dictionary for the word
“protein”:
Protein 1. any of numerous naturally occurring
extremely complex substances that consist of
amino acid residues joined by peptide bonds,
contain the elements carbon, hydrogen, nitrogen,
oxygen, usually sulfur, and occasionally other
elements (as phosphorus or iron), and include
many essential biological compounds (as enzymes,
hormones, or immunoglobulins).

As noted above, we determine the descriptiveness of a
term in the context of the goods or services at issue, not
in the abstract. In re Chopper Industries, 222 USPQ 258
(TTAB 1984); In re Bright-Crest, Ltd., supra. In its
business plan applicant describes its services as follows:
Because Egea employs a directed, not a random
process, Egea’s protein libraries can be uniquely
targeted to modify and improve specific protein
properties including efficacy, dosage, immune
Serial No. 78448489
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response and tissue penetration. In addition,
proteins developed using Egea’s technology are
customized for manufacturing in bacteria or any
other host, avoiding the significant production
challenges and expense found with most current
protein drugs produced in mammalian cells...
Egea’s technology platform has been proven in
extensive proof of concept studies. For
instance, Egea has: Produced libraries of more
than 1,000,000 Programmed Proteins.™ Produced
over 200 synthetic genes and proteins. Produced
the largest gene ever chemically synthesized of
over 16,000 bases. Engineered proteins for novel
functions. Improved protein expression through
codon optimization. Developed custom genes for
protein manufacturing in specific host cells...
Egea’s objective is to be the leader in the
design, development and commercialization of
novel protein pharmaceuticals...
Egea’s proprietary GeneWriter™ and Protein
Programming™ technologies are the first and only
means of producing such large protein libraries
with directed changes, changes targeted to the
functional portions of a protein drug...
GeneWriter™ is a proprietary system developed by
Egea that rapidly produces large scale highly
accurate synthetic genes. Proteins are then
produced by programming the sequence into the
synthetic DNA and expressing it in host cells...
Since GeneWriter™ can program and synthesize DNA
to produce any protein, it provides a powerful
tool for generating protein libraries for protein
drug optimization. Inherent in the revolutionary
power of GeneWriter™ is the ability to create
targeted diversity in protein sequences and
create variations of proteins that do not exist
in nature. Instead of a single synthetic
protein, variation is introduced at specifically
targeted sites in the gene, leading to specific
amino acid changes in the resulting protein, and
producing Programmed Protein™ libraries. These
proteins can have any of the 20 amino acids at
any single amino acid position in the protein.
Since the proteins are produced by synthetic
genes that are assembled from oligonucleotide
components, the resulting protein library
Serial No. 78448489
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represents a mixture of all possible combinations
of the different changes, yielding a family of
closely related proteins with all the changes
directed to critical parts of the sequence...
This incredibly powerful technique allows Egea to
produce Millions of variant proteins with
directed changes based upon a single parent
structure and in a single synthetic step.

As stated by applicant, its services will involve the
design and development of protein pharmaceuticals and the
proteins are produced “by programming the sequence into the
synthetic DNA and expressing it in host cells.” “Protein”
is descriptive of applicant’s services inasmuch as it is
the resulting product of the services. “Programmed” is
similarly descriptive inasmuch as it is the means by which
the services create the product. Applicant states that its
mark “refers to the use of a computer for the design of the
proteins, and hence the use of the term PROGRAMMED.”
Response to Office Action (August 17, 2005). However, as
shown by the dictionary definition, the term “programmed”
has a meaning in the genetic field that directly describes
what applicant does: to code in an organism’s program; to
provide with a biological program. Clearly, these terms
separately have a descriptive significance in relation to
applicant’s services. The question remains whether
combined they present a unique or incongruous combination.
We find that when combined these terms do not lose their
Serial No. 78448489
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descriptive significance and, in fact, make clear that
applicant intends to produce programmed protein. Thus, we
are persuaded by the evidence of record that the words
PROGRAMMED and PROTEIN are merely descriptive of
applicant’s recited services and that when combined do not
present a unique or incongruous meaning. In re Tower Tech,
Inc., 64 USPQ2d 1314 (TTAB 2002).
Applicant argues that “the simple term PROGRAMMED
PROTEIN does not aptly describe these complicated and
sophisticated medical research services.” Br. p. 7.
Further, applicant contends that the evidence submitted by
the examining attorney does not support a finding that
applicant’s “PROGRAMMED PROTEIN mark is merely descriptive
of medical research services relating to DNA and gene
synthesis.” Br. p. 8. More specifically, applicant notes
that “the few additional uses of the words ‘programmed
protein’ together were surrounded by significant modifying
material, for example, ‘RNA programmed protein synthesis in
cell-free systems,’ which refers to the programming,
through the use of RNA, of a protein’s synthesis. Or
‘developmentally-programmed protein aggregation,’ which
again discusses not the ‘programming’ of ‘proteins’ but
rather the programming of their aggregation.” Br. p. 9.
By contrast, applicant argues, its own research, consisting
Serial No. 78448489
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of searches of the Google search engine and Lexis/Nexis
databases and a review of competitors’ websites, “showed no
use of the term PROGRAMMED PROTEIN,” which supports “the
proposition that PROGRAMMED PROTEIN is unique to
Applicant.” Br. p. 9. These arguments are unavailing.
Merely because applicant may be the first and only user of
the specific combination PROGRAMMED PROTEIN does not
support registration if the only significance conveyed by
the phrase is merely descriptive. In re National Shooting
Sports Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
Applicant also argues that the combined words
PROGRAMMED PROTEIN do not provide the “viewer with an
immediate understanding of the sophisticated medical
services offered under the mark.” Br. p. 10. Applicant
argues that the broad definitions of the separate terms
“programmed” and “protein” “make clear that there would be
no single, immediately understood meaning for PROGRAMMED
PROTEIN, and posits other possible meanings, for example,
that it could “signify medical research services related to
diet and nutrition” or “represent a ‘program’ for
introducing ‘proteins’ into any number of medical settings”
or “bring to mind the concept of ‘working out’ a sequence
of ‘proteins’ that could be used in a wide variety of
scientific or medical settings.” Br. p. 12. Further,
Serial No. 78448489
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applicant argues that “no image of a service immediately
comes to mind upon hearing the words. It would take multi-
step reasoning to get from the words ‘programmed protein’
to ‘medical research services concerning DNA and gene
synthesis.’” Br. p. 14. The problem with applicant’s
argument is that we must look at the term as used in
connection with applicant’s identified services, namely
“medical research services relating to DNA and gene
synthesis.” The fact that a term may have meanings other
than the one relevant to the services in issue here is not
controlling; it is enough that a purpose or feature of
applicant’s services is included within the meaning of the
term. See In re Bright-Crest, Ltd, supra at 593.
Applicant relies on In re Hutchison Technology, 852
F.2d 552, 7 USPQ2d 1490, 1493 (Fed. Cir. 1988) and In re
Intelligent Medical Systems Inc., 5 USPQ2d 1674, 1675 (TTAB
1987) in support of its position that PROGRAMMED PROTEIN is
a broad term that could include many categories of goods
and thus cannot be viewed as merely descriptive. These
cases are easily distinguished. Hutchison Technology
involved a surname refusal under Section 2(e)(3) of the
Trademark Act and the issue concerning the term TECHNOLOGY
was whether its inclusion altered the primary significance
of the mark as a surname. The Federal Circuit noted that
Serial No. 78448489
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the Board, in making its determination that the word
TECHNOLOGY did not remove the surname significance, only
relied on the applicant’s concession that the word
TECHNOLOGY is frequently used on many goods similar to
those listed in the application and the Board “offered no
other evidence to support its findings on the effect of the
inclusion of ‘technology’ in Hutchinson’s mark as a whole.”
Hutchinson Technology, supra, 7 USPQ2d at 1493. Here, we
have dictionary definitions, applicant’s business plan and
uses by third parties in the genetics field.
Intelligent Medical involved a descriptiveness refusal
under Section 2(e)(1) for the mark INTELLIGENT MEDICAL
SYSTEMS for electronic thermometers for measuring human
body temperature. The Board noted that the word
intelligent “could suggest that selecting said thermometer
represents an intelligent choice.” Intelligent Medical, 5
USPQ2d at 1675. Further, the Board stated:
While the word ‘intelligent’ when applied to
computers may immediately impart information
about computers to average prospective purchasers
of computers, the word ‘intelligent’ when applied
to electronic thermometers does not, insofar as
the record herein shows, immediately impart with
any ‘degree of particularity’ information about
electronic thermometers to average prospective
purchasers of electronic thermometers. In short,
it cannot be said that INTELLIGENT MEDICAL
SYSTEMS as applied to an electronic thermometer
only serves to inform prospective purchasers of
an ingredient within the electronic thermometer,
Serial No. 78448489
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namely a computer or microprocessor [and] given
“the absence of any evidence even suggesting that
INTELLIGENT MEDICAL SYSTEMS or simply
‘intelligent’ has any meaning when applied to
electronic thermometers or indeed any medical
devices – we cannot say that the mark in question
is ‘merely descriptive’ of applicant’s goods.”

Id. at 1675-1676.

Again, in Intelligent Medical the record lacked
evidence of descriptiveness and, in addition, the Board
found that the word in issue, “intelligent,” could have
another meaning when used in connection with the identified
goods. In the case before us, “programmed” and “protein”
have no other meanings in connection with applicant’s
services.
Looking at the average or ordinary prospective
customers of applicant’s services, as we must, In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987), the average consumer of applicant’s medical research
services relating to DNA and gene synthesis would certainly
know and be familiar with the terms programmed and protein
as used in the field of DNA and gene synthesis. Nor would
it take any speculation or mental leap to understand that
PROGRAMMED PROTEIN refers to a service that would provide
them with programmed proteins.
Viewing PROGRAMMED PROTEIN as a whole, we find the
evidence of record sets forth a prima facie case that it is
Serial No. 78448489
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descriptive. Thus, we are persuaded that when applied to
applicant’s services, PROGRAMMED PROTEIN immediately
describes, without need for conjecture or speculation, a
significant feature or function of applicant’s services,
namely the provision of programmed proteins. Nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
prospective consumers of applicant’s services to perceive
readily the merely descriptive significance of PROGRAMMED
PROTEIN as it pertains to applicant’s services.
Decision: The refusal to register is affirmed under
Section 2(e)(1).