Cyto-kinetics, Inc.

Trademark Trial and Appeal Board

Jul 3, 2001

No. 75557383 (T.T.A.B. Jul. 3, 2001)

7/3/01
Paper No. 17
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cytokinetics, Inc.
________
Serial No. 75/557,383
_______
James E. Austin of Beyer Weaver & Thomas, LLP for
Cytokinetics, Inc.
John M. Gartner, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Hohein, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Cytokinetics, Inc. has filed an application to
register on the Principal Register the mark CYTOKINETICS
for the following services, as amended: “consultation and
research services relating to drug discovery and
development and patient diagnosis” in International Class
42.1
1 Application Serial No. 75/557,383, filed September 23, 1998,
based on applicant’s assertion of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/557383
2
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that when used in connection with
applicant’s services, the term CYTOKINETICS is merely
descriptive of them.
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs. Applicant did not request an oral hearing.
Applicant explains its business and the science
involved in its business as follows (citations to exhibits
omitted):
Cytokinetics, Inc.’s research and drug
development efforts target proteins that
make up the cytoskeleton. Such proteins
are involved in various diseases;
therefore, Cytokinetics, Inc. seeks to
develop new therapies for cancer,
cardiovascular diseases, and infectious
diseases by focusing on cytoskeletal
proteins.
The cytoskeleton of a cell is made up of
[a] network of protein filaments. The
cytoskeleton ‘plays a fundamental role
in all aspects of cell mechanics,
including cell division, intracellular
transport, cell motility and the
establishment and regulation of cell
polarity and organization.’
Cell division in multi-celled organisms
occurs when 1) the cell nucleus divides,
a process known as mitosis; and 2) the
cytoplasm of the cell splits in two, a
process known as cytokinesis. (Brief,
pp. 3-4)
Ser. No. 75/557383
3
Applicant contends that the term CYTOKINETICS is a
coined term identifying applicant; that the prefix “cyto”
suggests a relationship to cells, and the suffix “kinetics”
suggests movement; that the combination CYTOKINETICS could
suggest any one of many different meanings depending on the
context in which it is used (for example, in cell biology
and physiology it might refer to “the movement of
organelles inside the cell or to different aspects of cell
motility,” while in pharmacology it might refer to “the
dynamics of cellular population changes or to effects on
cellular populations mediated by hormones called
cytokines,” brief, p. 6); that the term does not directly
and immediately convey any precise significance or
information about applicant’s services; that there is no
evidence that the term CYTOKINETICS directly equates to the
study of the cytoskeleton2 or cytoskeleton proteins; and
2 Pursuant to TBMP §712 and the rules and cases cited therein, we
take judicial notice of the definition of “cytoskeleton” set
forth in The Random House Dictionary of the English Language
(Unabridged) (2nd ed. 1987):
“n. Cell Biol. A shifting lattice
arrangement of structural and contractile
components distributed throughout the cell
cytoplasm, composed of microtubules,
microfilaments, and larger filaments,
functioning as a structural support and
transport mechanism. [cyto- + -skeleton] –
cytoskeletal adj.”
Ser. No. 75/557383
4
that there is no evidence that competitors use or need to
use the term CYTOKINETICS to describe similar services.
As evidence in support of its position, applicant
submitted the declaration of David Drubin, Ph.D, a
professor of genetics at the University of California,
Berkeley, and a member of applicant’s Advisory Board; a
copy of a page from a 1992 dictionary showing the term
“cytokinesis,” without reference to the adjective
“cytokinetic”; and (with its main brief), on-line
dictionary definitions of the terms “cyto” and “kinetics.”3
In addition, applicant had submitted, in response to the
Examining Attorney’s request for information, a packet of
information regarding applicant and the services it intends
to offer under the term CYTOKINETICS.
The Examining Attorney contends that the term
“CYTOKINETICS” is not a coined term, but rather is a
dictionary term used to refer to the division of the
cytoplasm of a cell following the division of the nucleus;
that the term is widely used by scientists and describes
“cell behavior, most especially in the area of cancer
3 The Examining Attorney objected to the later-filed dictionary
definitions as being untimely under Trademark Rule 2.142(d).
However, the on-line dictionary involved is the American Heritage
Dictionary of the English Language (3rd ed. 1996). Inasmuch as
we find it appropriate to take judicial notice of definitions
from this dictionary, the Examining Attorney’s objection is
overruled.
Ser. No. 75/557383
5
research” (Final Office action, p. 2); and that the term is
merely descriptive of applicant’s consultation and research
services relating to drug development and patient diagnosis
involving research in the area of cell division or cell
behavior.
As evidence in support of the refusal to register, the
Examining Attorney relies on the dictionary definition
which he submitted of the term “cytokinesis”; over 50
excerpted stories from the Nexis database which include
uses of the term “cytokinesis” or “cytokinetic(s)”; and
pages printed from several different websites which include
uses of the term “cytokinetics.”
In the on-line American Heritage Dictionary of the
English Language (3rd ed. 19924) submitted by the Examining
Attorney, the term “cytokinesis” is defined as follows:
“noun The division of the cytoplasm of
a cell following the division of the
nucleus. –cytokinetic adjective.”
In addition, we take judicial notice of the following
definition of “cytokinesis” from The Random House
Dictionary of the English Language (Unabridged) (2nd ed.
1987):
4 For reasons unknown to the Board the two on-line American
Heritage dictionaries referred to in footnote 3 and above carry
two different dates, 1992 and 1996.
Ser. No. 75/557383
6
“n. Cell Biol. The division of the cell
cytoplasm that usually follows mitotic
or meiotic division of the nucleus
[1915-20; cyto- + -kinesis] –
cytokinetic adj.”
Several representative examples from the excerpted
Nexis stories showing use of the term “cytokinetic(s),”
especially in relation to drug research and development,
are reproduced below (emphasis added):
Title: Prognostic significance of
pretreatment proliferative activity in
adult acute leukemia
...Once in complete remission, an
initially high labeling index was an
unfavorable sign with respect to length
of remission, regardless of the
patient’s diagnosis. The results of
this study are supportive of studies in
experimental systems demonstrating the
importance of cytokinetic factors in
the administration of chemotherapy and
suggest that such factors may be of
clinical importance in selecting
approaches to therapy. “EMBASE (The
Excerpta Medica Database)” 1977;
Headline: Primed for Growth
Remicade was approved for marketing by
the U.S. Food and Drug Administration
Aug. 24, 1998. Previously, the drug
was known as Avakine. The name,
however, was changed at the request of
the Food and Drug Administration. The
regulatory agency prefers to reserve
the suffix ‘kine’ for products that
involve cytokinetic therapy. “Med Ad
News,” November 1998;
Title: Effect of Flavone Acetic Acid on
Lewis Lung Carcinoma: Evidence for an
Indirect Effect
Ser. No. 75/557383
7
...FAA is highly active against a
slowly growing variant of the LL
carcinoma, which has different
cytokinetics from the original in vivo
tumor and which has developed
resistance to two drugs. “Journal of
the National Cancer Institute,” April
20, 1998;
Title: Phase I Study of Continuous
Venous Infusion of Floxurdine (5-FUDR)
Chemotherapy
The continuous-infusion schedule for
delivery of cancer chemotherapy has
theoretic advantages based on
considerations of drug pharmacology and
tumor cell cytokinetics. ..., “Cancer
Treatment Reports,” September 1983;
Title: Unresolved Issues in Combination
Chemotherapy
...The point is that a postulated
mechanism of interaction between two or
more drugs – whether the interaction is
on a biochemical, pharmacokinetic, or
cytokinetic basis – may obviously be
valid motivation for a clinical trial.
In fact, these kinds of hypothesis-
based trials may be our best hope for
further improvements in combination
chemotherapy using the available drugs.
“Cancer Treatment Reports,” January
1986;
Title: Cyclophosphamide/Etoposide:
Effective Reduction Therapy for
Children with Acute Nonlymphocytic
Leukemia in Relapse
...in a study designated AML-80, which
included constant-infusion cytarabine
(ara-C), maximal doses of
anthracyclines, and VP-16/5-Az, and one
in an earlier clinical trial that
featured cytokinetic-based therapy.
“Cancer Treatment Reports,” July/August
1985;
Ser. No. 75/557383
8
Title: Arterial Drug Infusion With
Extracorporeal Removal
...administration of a drug, both tumor
and sensitive normal tissues are
perfused by arterial blood at the same
concentration so that a pharmacokinetic
advantage would not normally be
obtained, and any selectivity would
depend on biochemical or cytokinetic
factors. “Cancer Treatment Reports,”
February 1984;
Title: Circadian cell kinetics in
humans. Aspects related to cancer
chemotherapy
...cell kinetics, has been the
development from the 1950s and onwards
of several methods for studying kinetic
parameters in different mammalian
tissues. ... Results from cytokinetic
studies in the human have also
accumulated through the years. ...
Thus, these studies have demonstrated
that there exist rhythms in bone marrow
and gut cytokinetics which increases
the likelihood that certain times of
day will be less toxic for the
administration of cytotoxic drugs.
“National Library of Medicine Medline
Database,” “Cite: In Vivo Nov/Dec
1995”;
Headline: Screening mammography and
public health policy; the need for
perspective
...In view of what we know about the
cytokinetics of the disease, we should
not be surprised that the eventual
outcome (death due to breast cancer)
for the large majority of women is
unaffected by screening mammography.
“The Lancet,” July 1, 1995;
Title: Curative chemotherapy for acute
myeloid leukemia: the development of
high-dose ara-C from the laboratory to
the bedside
Ser. No. 75/557383
9
...The clinical development of ara-C
for the treatment of acute myeloid
leukemia (AML) provides a useful
paradigm for the study of this process.
An understanding of the cellular
pharmacology, cytokinetics and
pharmacokinetics of ara-C in leukemic
mice showed substantial schedule-
dependency. “National Library of
Medicine Medline Database,” “Cite:
Invest New Drugs 1996”;
Title: Strategies in the treatment of
acute myelogenous leukemia
...Prognostic factors which predict for
outcome include phenotyping,
cytogenetics, cytokinetics, drug
resistance and age. ..., “National
Library of Medicine Medline Database,”
“Cite: Leuk Res 1992”;
Title: Cytokinetics and chemotherapy of
psoriasis
The successful treatment of psoriasis
with folic acid antagonists during the
past 25 years has led to extensive
research in the areas of cytokinetics
and chemotherapy. ..., “National
Library of Medicine Medline Database,”
“Cite: J Invest Dermatol 1976”; and
Title: Phase I Trial of Cytarabine and
Hydroxyurea
<4> Reprint request to: Dr. Stephen B.
Howell, Laboratory of Pharmacology and
Cytokinetics, University of California
at San Diego Cancer Center,..., “Cancer
Treatment Reports,” December 1983.
Two examples of the pages printed from a few different
websites include the following uses of “cytokinetics” (bold
emphasis added):
Ser. No. 75/557383
10
(1) Adel K. El-Naggar, M.D., Ph.D.
Chief, Section of Cytokinetics and Service Flow
Cytometry
Research Interests: Flow cytometry, Molecular and
genetic markers in cancer, Head and neck
neoplasia, Translation molecular biology
...
Department of Pathology
The University of Texas M.D. Anderson Cancer
Center
http://utmdacc.uth.tmc.edu; and
(2) The International Union Against Cancer
International Directory of Cancer Institutes and
Organisations
City of Hope National Medical Center
...
Experimental cancer research: Differentiation;
Cytokinetics; Experimental Pathology;
Pharmacology; Drug Resistance; Molecular Cloning;
Enzymology, Liposomes; Marrow
Transplantation;....,
http://www.globalink.org/directory/usch
nmc.html.
The test for determining whether a mark is merely
descriptive under Section 2(e)(1) of the Trademark Act is
whether the term immediately conveys information concerning
a significant quality, characteristic, function,
ingredient, attribute or feature of the product or service
in connection with which it is or will be used. See In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA
1978); In re Venture Associates, 226 USPQ 285 (TTAB 1985);
and In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
The determination of mere descriptiveness must be made in
relation to the goods or services for which registration is
Ser. No. 75/557383
11
sought, the context in which the term is being or will be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991). That
is, the question is not whether someone presented with only
the mark could guess what the goods or services are.
Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey
information about them. See In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365 (TTAB 1985).
In light of the dictionary definitions showing that
“cytokinetic” is the adjectival form of the noun
“cytokinesis,” applicant’s argument that the term
“cytokinetics” is a “coined” term is unpersuasive. Given
that the dictionaries were published well prior to
applicant’s founding in 1998, it is implausible that the
term was “coined” by applicant. To the extent applicant
argues, without having clearly made such an argument, to
the effect that the addition of the letter “s” makes it a
“coined” term, we simply disagree. The term is merely
descriptive of consultation and research services relating
Ser. No. 75/557383
12
to drug discovery and development and patient diagnosis
which are based on studies of, inter alia, cytokinetic
activity in cells.
Moreover, applicant’s services are broadly described
as involving “research services relating to drug discovery
and development and patient diagnosis,” and “cytokinetic”
research or study is encompassed within this broad
description of applicant’s research services. Even if
applicant limits its activities to research concerning the
cytoskeleton, it is clear that applicant conducts drug
research centered around cell biology, which includes
cytokinesis. Applicant submitted a paper titled “17 Cell
Division,” in which one of the subheadings is “The
Cytoskeleton Carries Out Both Mitosis and Cytokinesis.”
Even if, as argued by applicant, the term
“cytokinetics” may have different meanings in different
specific scientific fields of study, there is ample
evidence of record to show that the term is merely
descriptive of applicant’s identified services.5 In
addition to the dictionary definitions, the Nexis stories
and the website printouts which establish that applicant’s
5 We are not convinced otherwise by the declaration submitted by
applicant of David Drubin, Ph.D., a professor of genetics. We
note particularly that he is a member of applicant’s Advisory
Board, and thus there is a self-serving aspect to his declaration
which cannot be ignored.
Ser. No. 75/557383
13
mark is merely descriptive, there is also applicant’s own
informational submission, which clearly relates applicant’s
research services to cell division, including cytokinesis.
The following are quotes from articles submitted by
applicant (bold emphasis added):
Sabry [James Sabry, applicant’s
president and chief executive officer]
said Cytokinetics is the first and only
company focused on the cytoskeleton,
which is the multi-component framework
involved in all aspects of cell
mechanics, including cell division,
motility, transport and regulation of
cell polarity and organization. This
will lead to novel drug targets, drug
classes and mechanisms of action, Sabry
told BioWorld Today. ...
The company’s initial focus will be in
the areas of cancer, infectious
diseases and cardiovascular disease,
with a first partnership expected in
1999. “New Firm Focuses on
Cytoskeleton Research,” BioWorld Today,
December 31, 1998; and
Cytokinetics Inc. is focused on the
cytoskeleton—which is comprised of the
structures of the cell involved in the
dynamic ‘urban design’ of cellular
function and mechanics, including cell
division, intracellular transport, cell
motility and the establishment and
regulation of cell polarity.
“Cytokinetics: The cell is a city,”
BioCentury, December 21, 1998.
We agree with the Examining Attorney that the applied-
for mark CYTOKINETICS immediately and directly conveys
information about a significant feature or aspect of
Ser. No. 75/557383
14
applicant’s “consultation and research services relating to
drug discovery and development and patient diagnosis”;
specifically, that a significant aspect of applicant’s
services is conducting research in the field of drug
discovery and development involving the study of all cell
mechanics including cell division. Clearly, applicant’s
services (as identified) are associated with cytokinetic
study. The users and purchasers of applicant’s services,
who would include such highly educated and sophisticated
individuals as doctors and scientists, would undoubtedly
understand that applicant’s mark, if and when used in
connection with the identified services, relates to
cytokinetic research services. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987);
In re Intelligent Instrumentation Inc., 40 USPQ2d 1792
(TTAB 1996); and In re Time Solutions, Inc., 33 USPQ2d 1156
(TTAB 1994).
Finally, even if applicant became the first entity to
use the term “CYTOKINETICS” in relation to “consultation
and research services relating to drug discovery and
development and patient diagnosis,” such is not dispositive
where, as here, the term unquestionably projects a merely
descriptive connotation. See In re Tekdyne Inc., 33 USPQ2d
Ser. No. 75/557383
15
1949, 1953 (TTAB 1994), and cases cited therein. We
believe competitors would have a competitive need to use
this term. In this regard we particularly note the
evidence of use of the term “Cytokinetics” as part of the
name of a section of a department at the University of
Texas and as part of the name of a laboratory at the
University of California at San Diego. See 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2000).
Decision: The refusal to register under Section
2(e)(1) is affirmed.