Grifols Worldwide Operations Limited

Trademark Trial and Appeal Board

Jul 30, 2021

88814504 (T.T.A.B. Jul. 30, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 30, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Grifols Worldwide Operations Limited
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Serial No. 88814504
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Ashly I. Boesche and Janet A. Marvel of Pattishall, McAuliffe, Newbury, Hilliard &
Geraldson LLP, for Grifols Worldwide Operations Limited.

Elaine Xu, Trademark Examining Attorney, Law Office 128,
Travis Wheatley, Managing Attorney.
_____

Before Zervas, Adlin and English,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Grifols Worldwide Operations Limited (“Applicant”) seeks registration on the
Principal Register of the standard character mark BGG NAVIGATOR for “medical
testing services for diagnostic or treatment purposes; genetic testing for medical
purposes” in International Class 44.1 According to Applicant, “BGG appearing in the
mark means or signifies or is a term of art for BLOOD GROUP GENOTYPING in the

1 Application Serial No. 88814504 was filed on February 28, 2020 claiming a bona fide intent
to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 88814504
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relevant trade or industry or as used in connection with the goods/services/collective
membership organization listed in the application.”2
The Examining Attorney has determined that the term BGG in the mark is merely
descriptive of a characteristic of Applicant’s medical and genetic testing services, and
must therefore be disclaimed. See Trademark Act §§ 2(e)(1) and 6(a), 15 U.S.C.
§§ 1052(e)(1) and 1056(a).
After the Trademark Examining Attorney issued a final requirement for a
disclaimer, Applicant filed a request for reconsideration. The Examining Attorney
was not persuaded and denied the request for reconsideration and Applicant filed this
appeal. Both Applicant and the Examining Attorney filed briefs. We affirm the
disclaimer requirement.
I. Applicable Law
Absent a showing of acquired distinctiveness, merely descriptive terms are
unregistrable under Trademark Act Section 2(e)(1), and, therefore, are subject to
disclaimer if the mark is otherwise registrable. An Examining Attorney may
therefore require an applicant to disclaim an unregistrable component of a mark
otherwise registrable. Trademark Act Section 6(a). Failure to comply with a
disclaimer requirement is grounds for refusal of registration. La. Fish Fry Prods.,
Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (citing In re Stereotaxis,

2 June 19, 2020 Response to Office Action, TSDR 1. Page references to the application record
refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. TTABVUE
references refer to the Board’s docket system.
Serial No. 88814504
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Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)) (“The PTO can condition
the registration of a larger mark on an applicant’s disclaimer of an ‘unregistrable
component of a mark otherwise registrable.’ 15 U.S.C. § 1056(a)”); see also In re
Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (merely
descriptive term unregistrable without a disclaimer).
Thus, a term must be disclaimed apart from the mark as shown if it is deemed to
be merely descriptive of the subject goods or services. “A term is merely descriptive if
it immediately conveys knowledge of a quality, feature, function, or characteristic of
the goods or services with which it is used.” In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)); In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 217-18 (CCPA 1978).
Evidence that a term is merely descriptive to the relevant purchasing public may
be obtained from any competent source, In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001), such as dictionaries, newspapers, or surveys.
In re Bayer, 82 USPQ2d at 1831. It also may be obtained from websites and
publications. In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir.
2017). In short, “the [US]PTO has satisfied its evidentiary burden if ... it produces
evidence including dictionary definitions that the separate words joined to form a
compound have a meaning identical to the meaning common usage would ascribe to
those words as a compound.” In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110,
1111-12 (Fed. Cir. 1987).
Serial No. 88814504
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If the term is an abbreviation, initialism, or acronym, it will be refused
registration if the words it represents are descriptive of the goods or services at issue
and if the abbreviation, initialism, or acronym is generally understood as
“substantially synonymous” with the descriptive words it represents. In re Thomas
Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011) (holding NKJV substantially
synonymous with merely descriptive term “New King James Version” and thus
merely descriptive of bibles), citing Modern Optics, Inc. v. Univis Lens Co., 234 F.2d
504, 110 USPQ 293, 295 (CCPA 1956) (“[A]s a general rule, initials cannot be
considered descriptive unless they have become so generally understood as
representing descriptive words as to be accepted as substantially synonymous
therewith.”). Accordingly, for BGG to be considered descriptive of Applicant's
services:
(1) the term BGG must be found to be an abbreviation,
initialism, or acronym for specific wording;
(2) that specific wording must be merely descriptive of
Applicant's services; and
(3) a relevant consumer viewing the term in connection
with applicant's goods will recognize it as the equivalent of
the merely descriptive wording it represents.
In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ
1075, 1076 (TTAB 1984)).
II. Examining Attorney’s Evidence
The Examining Attorney submitted the following with the July 31, 2020 Office
Action:
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•onlinelibrary.wiley.com
Next-generation sequencing: academic overkill or high
resolution routine blood group genotyping?
Blood group genotyping (BGG) has been in routine clinical
practice ever since the molecular determination of blood
groups was achieved, during the early to mid 1990s. (TSDR
2-3).
• clipmag.com
“Q&A: Mark Yazer, MD, on the Benefits of Blood Group
Genotyping in Specialty Patient Populations.”
Using these techniques in an RUO manner also means that
we cannot label the RBC unit as antigen-negative solely
based on the genotype data: we still have to confirm the
antigen status [illegible text] to be antigen-negative based
on BGG testing is much better than screening units at
random. Also, since BGG requires specialized knowledge
and skills that are not widely taught in medical schools or
technologist training programs, I think it has, up to now,
been adopted mainly in large tertiary care facilities that
treat patients who are at high risk of [missing text] might
hinge upon the ability to get reimbursed for performing the
testing, and the number of people interested in, and
qualified to interpret the results of, this sort of testing.
(TSDR 4, 11).
• www.ncbi.hlm.nih.gov
“Complete RHD next-generation sequencing:
establishment of reference RHD alleles.”
***
Unlike serological testing, genotyping provides the
freedom to analyze a wider range of blood antigens
including low-frequency antigens, for instance: Go, BARC,
and Tar which can cause HDFN and alloimmunization.
Complete blood group genotyping (BGG) could be widely
used in transfusion practice where serology fails to clarify
issues or resolve discrepancies. Extensive efforts have been
made to alternatively use molecular genotyping ranging
from low to high throughput. Different DNA microarray-
Serial No. 88814504
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based tests were introduced that enable genotyping of
variant blood groups by targeting specific single-nucleotide
polymorphisms (SNPs). Although these assays are very
accurate, they have limitations. They are designed to
target predefined nucleotides or DNA regions through
polymerase chain reaction (PCR), whereas novel variants
remain unknown. Complete DNA sequencing could be the
most effective technique to thoroughly study blood group
variations and overcome limitations in other assays
Since it was introduced in 2005, next-generation
sequencing (NGS) has greatly impacted the genetic
research field by elevating both throughput and data
generated, and at the same time lowering significantly the
cost of sequencing per nucleotide. NGS is used in HLA
testing, which creates a strong impetus to introduce NGS
for BGG. Genotyping could be used to genotype blood
transfusion-dependent patients who are at risk of
alloimmunization. It could be used to genotype donors and
create a database that would make finding and recall of
compatible donors for transfusion easier. For these
databases, reference sequences for all blood group genes
are critical to allow effective BGG. (TSDR 14, 16-17).
• www.diagnostic.grifols.com (Applicant’s website)
Offering as “Blood Typing,” “Blood Group Genotyping” and
“Clinical Testing Services.” (TSDR 39-41).
In addition, the Examining Attorney submitted Google search results for “bgg
navigator” from which the Examining Attorney concludes “is primarily used in
connection with Applicant.”3

3 September 24, 2020 Office Action, TSDR 1.
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III. Applicant’s Evidence
Applicant submitted four lists of acronyms for “BGG” including “Bovine Gamma
Globulin,” and “Biomass Gasification Group.”4 According to Applicant, “Bovine
Gamma Globulin,” appears to be a more commonly-recognized acronym for BGG in
the medical industry.5
IV. Analysis
Applicant stated in its response to the first Office Action that “BGG” has a
particular meaning, “a term of art for BLOOD GROUP GENOTYPING.”6 Because of
its statement made early in the prosecution of the application, we give little weight
to Applicant’s later statement in its Request for Reconsideration that “Bovine Gamma
Globulin” “appears to be a more commonly-recognized acronym for ‘BGG’ in the
medical industry. In view thereof, its argument that the primary meaning of the term
is “Bovine Gamma Globulin” is not persuasive. The term appears on four lists of
acronyms for BGG, with each list containing numerous entries for the same term.7
Despite Applicant’s statement regarding the meaning or significance of BGG,
Applicant argues that the Examining Attorney’s evidence fails to indicate that
consumers commonly recognize BGG to stand for “blood group genotyping.” According
to Applicant:

4 November 10, 2020 Request for Reconsideration, TSDR 7-20. Those terms not in English on
the lists have little probative value because Applicant did not submit a translation of such
non-English terms.
5 Applicant’s brief, 5 TTABVUE 7.
6 June 19, 2020 Response to Office Action, TSDR 1.
7 November 10, 2020 Response to Office Action, TSDR 8, 12, 16 and 18.
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The two articles from “Wiley Online Library” and “US
National Library of Medicine National Institutes of
Health” are contained in complex medical journals with
which most consumers are unlikely to be familiar. Further,
most consumers are unlikely to comprehend the content of
these articles …. Thus, these articles do not demonstrate
the understanding of the average consumer; rather, they
are reflective of only a small niche of scholars who may
recognize the significance of “BGG.”8
Applicant adds:
Moreover, the interview with Dr. Mark Yazer from “CLP
Clinical Lab Products” is further indicative of the fact that
the meaning for BGG is only recognized by a limited
number of consumers. The article interviews Dr. Mark
Yazer, an associate professor of pathology and contains a
summary of “Improving the transfusion service's ability to
provide antigen-matched RBC units for alloimmunized
patients.” Again, this article would likely to be
incomprehensible to most, indicating again that few
consumers would recognize the meaning of “BGG” as
contained in Grifol’s mark.9
Applicant has not indicated the nature or identity of consumers of the identified
services, and, based on the identification of services, there is no reason to believe that
they do not include trained individuals in the fields of medicine and genetic testing
who would likely know the meaning and significance of the term. It seems logical that
Applicant would use the term Blood Group Genotyping and its initialism based on an
expectation that relevant consumers would understand them. In addition, Applicant
uses the term BGG in its website,10 and its website is not directed to “only a small

8 Applicant’s brief, 5 TTABVUE 8-9.
9 Id., 5 TTABVUE 9.
10 Applicant's own merely descriptive use of the term in question is especially probative
evidence of mere descriptiveness. Cf. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987).
Serial No. 88814504
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niche of scholars who may recognize the significance of ‘BGG.’”11 Under the heading
“Collect your sample and prepare for shipping,” Applicant’s website instructs, “Collect
5 to 7 ml of peripheral blood from patient in BD Vacutainer® SSTTM serum tubes.”12
Further, Applicant has not only conceded the meaning or significance of the term, it
has also indicated that meaning or significance is “in the relevant trade or industry
or as used in connection with the goods/services/collective membership organization
listed in the application.”13 Thus, we are not persuaded by Applicant’s argument that
consumers will not recognize the significance of BGG as used in connection with the
identified services.
Applicant also argues that “consumers must exercise a multi-stage reasoning
process to go from ‘BGG’ in Grifols’ mark, to the various types of medical testing and
genetic testing services that Grifols’ mark covers. Therefore, ‘BGG’ is suggestive of
the Grifols’ medical and genetic testing services.”14 The determination of whether a
mark or term is merely descriptive is made in relation to an applicant’s identified
goods or services. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d
1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). The evidence in the

11 Applicant’s brief, 5 TTABVUE 8-9.
12 July 31, 2020 Office Action, TSDR 42.
13 June 19, 2020 Response to Office Action, TSDR 1.
14 Applicant’s brief, 5 TTABVUE 5. Applicant also states, “[c]onsumers must further
investigate and learn more about Grifols and its services before immediately understanding
the meaning BGG as used in Grifols’ mark.” Id., 5 TTABVUE 7. Applicant, however, has not
supported its statement with evidence. “Attorney argument is no substitute for evidence.”
Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005).
Serial No. 88814504
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record reflects the existence of genetic testing through a test named “blood group
genotyping.” “Genotype” is “the genetic constitution of an organism.”15 Because
“medical testing services for diagnostic or treatment purposes; genetic testing for
medical purposes” may include “blood group genotyping” or “BGG,” the term
immediately identifies a feature of, and hence is merely descriptive of, Applicant’s
services. Relevant consumers, including clinical professionals, will not need to engage
in multistage reasoning to arrive at the significance of the term which is the subject
of the disclaimer requirement and will recognize it as the equivalent of the merely
descriptive wording it represents.
Decision: The requirement for a disclaimer is affirmed. Our decision will be set
aside if Applicant disclaims the term “BGG.” Applicant is allowed until 30 DAYS from
the mailing date of this opinion to submit the disclaimer, in which case this
application will proceed to publication.16 See In re Serial Podcast, LLC, 126 USPQ2d
1061, 1078 (TTAB 2018).

15 https://www.britannica.com/science/genotype (accessed July 26, 2021). We take judicial
notice of this definition. The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed
format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
16 The standardized format for the required disclaimer text is as follows: “No claim is made
to the exclusive right to use the term BGG apart from the mark as shown.” TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 213.08(a)(i) (July 2021).