This Opinion is not a
Precedent of the TTAB
Mailed: July 30, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Intrexon Corporation
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Serial No. 85979979
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David. L. May and Lauren J. Arnold for Intrexon Corporation.
Patty Evanko, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
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Before Seeherman, Wolfson and Masiello,
Administrative Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Intrexon Corporation (“Applicant”) seeks registration on the Principal Register
of the mark BETTER (in standard characters) for the following services in Class 42:
Gene therapy services for others for product development
and scientific research purposes, namely, genetically
engineering DNA, biological organisms, cells, viruses,
pathogens, and special purpose cells for scientific,
research, medical and laboratory use.1
1 Applicant’s application was filed on January 11, 2012, based on Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b) (intent-to-use). Originally, the application, which was
assigned Serial No. 85514181, was for goods and services in Classes 1, 5, 40, 42, 44 and 45.
After a Notice of Allowance issued, Applicant filed a request to divide so that the Class 42
services identified above would be placed into a new application, and also filed a Statement
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Registration has been refused pursuant to Sections 1 and 45 of the Trademark Act,
15 U.S.C. §§ 1051 and 1127, and Trademark Rules 2.56(a) and 2.88(b)(2), on the
basis that the specimen does not show the applied-for mark in use as a service
mark. Specifically, the Examining Attorney asserts that the mark shown in the
specimen is not the mark shown in the drawing; that although Applicant has
applied to register the mark BETTER, the mark shown in the specimen is BETTER
DNA.
When the Examining Attorney made the refusal final, Applicant filed a request
for reconsideration on September 16, 2014 and a notice of appeal on September 19,
2014. The Board instituted the appeal and remanded the application to the
Examining Attorney for consideration of the request for reconsideration. After the
Examining Attorney denied the request for reconsideration, proceedings in the
appeal resumed. The appeal has been fully briefed.
An application based on Trademark Act Section 1(a) must include a specimen
showing the applied-for mark in use in commerce. 15 U.S.C. § 1051(a)(1). One of the
requirements of a statement of use is that it must include a specimen showing how
the mark is used in commerce. Trademark Rule 2.88(b)(2). Further, once a
statement of use has been filed, as is the case herein, the drawing of the mark must
be a substantially exact representation of the mark as used on or in connection with
the goods and/or services. Trademark Rule 2.51(b). Therefore, the issue we must
of Use for those services, amending the basis for the application to Section 1(a). The
processing of the request to divide was completed on August 28, 2013, with the above-
identified services placed in a child application, Serial No. 85979979. This is the application
that is the subject of this appeal. Applicant asserts first use and first use in commerce of
the mark in connection with these services as early as August 2010.
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determine is whether Applicant’s specimen shows use of the applied-for mark
BETTER.
The issue of whether a mark shown in the specimen supports use of the mark
shown in the drawing often arises in two ways, i.e., whether the specimen is
unacceptable because it does not support use of the mark shown in the drawing, or
the drawing is unacceptable because it is not a substantial representation of the
mark shown in the specimen. See In re Lorillard Licensing Co., 99 USPQ2d 1312,
1315 n. 7 (TTAB 2011). Because the Examining Attorney has taken the position
that the reason the applied-for mark, BETTER, is not a substantial representation
of the mark shown in the specimen is that it does not include the word DNA,
Applicant has relied on cases involving the issue of trademark mutilation. Also
relevant, however, are cases such as In re Yale Sportswear Corp., 88 USPQ2d 1121
(TTAB 2008), which involved the question of whether the drawing, showing the
mark as UPPER 90, was a substantially exact representation of the trademark as
shown in the specimen, where it appeared as UPPER 90°.
The question in this case is whether Applicant’s use of the mark as shown in the
specimen supports a registration for the mark shown in the drawing, which in turn
requires a judgment as to whether BETTER, as used in the specimen, comprises a
separate and distinct trademark in and of itself. Id. at 1123, citing Institut des
Appellations d’Origine v. Vintner’s Int’l Co., Inc., 958 F.2d 1574, 22 USPQ2d 1190
(Fed. Cir. 1992). Essentially, Applicant contends that the word BETTER creates a
separate and distinct commercial impression. The Examining Attorney argues that
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it does not, because as used in the specimen BETTER modifies DNA, and results in
a unitary term. In support of its position, Applicant asserts that certain well-known
third-party marks, although used with descriptive terms, retain their separate
commercial impression, and that certain third-party registrations for marks such as
PERFECT and STELLAR were allowed to register even though the specimens
showed that they were used with another term.
Although we can look to case law to understand the general principles which
govern this issue, the examples in such cases, as well as the third-party uses and
registrations relied on by Applicant, are of little help because the question we must
decide is determined by the overall commercial impression created by Applicant’s
use of its mark, which in turn is determined by the specimen. The specimen that
accompanied the statement of use consists of three pages,2 which Applicant states
are screenshots from Applicant’s website. In each of the pages which comprise
Applicant’s specimen, the term BETTER is followed by DNA, and the TM symbol
appears in superscript after DNA. BETTER DNA™ appears in this manner several
times. Although it is not possible to reproduce each entire page legibly, we show
relevant portions.
In the first screenshot (page 1 of the specimen), BETTER DNA, which is
preceded by a logo-type design and followed by the TM symbol, is set apart from the
rest of the text below the column on the right side of the page.
2 Four pages were submitted by Applicant, but page 2 is blank. We will reference the page
numbers as they appear in the Office’s TSDR database.
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The words BETTER DNA™ also appear in the text. As shown below, under the
heading, “Innovative Therapies for a Healthier World,” is the sentence, “Our Better
DNA™ approach seeks to facilitate new treatment modalities that provide
breakthroughs in therapeutic efficacy and safety.”
The screenshot which comprises page 3 of the specimen has, under the heading
“Making an Impact,” the sentence, “By engineering Better DNA™, Intrexon is
helping build a better world.
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Page 4 of the specimen has at the top of the page, in large all-capital letters, the
phrase, “POWERING THE BIOINDUSTRIAL REVOLUTION WITH BETTER
DNA™.”
One section of text has the heading, “DNA DETERMINES WHAT SOMETHING IS.
BETTER DNA™ DEFINES WHAT IT COULD BE.” The first sentence under this
heading is, “Intrexon’s Better DNA™ approach means realizing better products and
processes through the industrial engineering of synthetic biology.”
In each appearance of the “mark,” BETTER does not appear by itself, but is
followed by “DNA.” Moreover, the TM symbol does not follow the word BETTER,
Applicant’s claimed trademark, but the phrase BETTER DNA. In contrast, other
trademarks of Applicant’s are shown with the TM or R symbol between what is
highlighted as a trademark, and a descriptive word. In fact, on page 1 of the
specimen, in just the two paragraphs under the heading “Leveraging Proprietary
Intrexon Technologies,” we find the following sentences:
The mABLogix™ platform enables production of human β-cell
libraries….
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Our laser-enabled analysis and processing (LEAP™) instrument can
identify and purify high antibody-expressing cells of interest from
libraries of cells created by the UltraVector® platform.
The ECB platform leverages the rapid design, construction, and
optimization of DNA (UltraVector®) platform) in combination with the
RheoSwitch Therapeutic System® (RTS®) gene switch technology ….
The RTS® technology enables in vivo transcriptional regulation….
Product candidates using RTS® technology are in phase 1/2 clinical
trials….
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It should be noted that “UltraVector®” is depicted in an amber color, setting it apart
from the black type in which the rest of the paragraph appears. This same usage
also appears on p. 4 of the specimen.
As a result of the manner in which Applicant places the TM or R symbol
throughout the webpages, consumers will perceive the symbol as signaling the end
of the particular trademark. Because DNA always appears after BETTER, and the
TM symbol always appears after DNA, consumers will understand the mark that is
being claimed as a trademark to be BETTER DNA, and not BETTER per se.
Moreover, because of the meaning of the word BETTER,3 and the manner in
which it is used in the specimen, preceding “DNA,” it would be viewed as modifying
“DNA,” rather than as a separate word having its own commercial impression. We
agree with the Examining Attorney that as used on the specimen, the mark would
be viewed as BETTER DNA rather than BETTER per se.
We further agree that BETTER per se has a different connotation from BETTER
used as part of the phrase BETTER DNA. BETTER per se for the identified services
has an amorphous laudatory suggestion; however, BETTER as a modifier of DNA
has a specific connotation regarding the more desirable DNA connected with
Applicant’s gene therapy services. As a result, we find that the mark shown in the
specimen is not a substantially exact representation of the mark shown in the
drawing.
3 Comparative of GOOD; 3. more attractive, favorable, or commendable 4. More advantageous or effective
5. Improved in
accuracy or performance .
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The third-party uses and third-party registrations submitted by Applicant have
no real persuasive value. The fact that a company owns a trademark registration
and also uses its mark in a particular way (e.g., HERSHEY’S is a registered
trademark, and a candy bar has both the words MILK CHOCOLATE and
HERSHEY’S on the label), has no bearing on whether Applicant’s specimen shows
use of Applicant’s applied-for mark. Whether or not, in general, a mark can be used
with a descriptive term and still be perceived as a mark is not the question; for the
reasons discussed above, we find that Applicant’s specimen does not show use of its
applied-for mark BETTER. As for the third-party registration evidence, although it
shows that the involved examining attorneys found that the particular specimens
were acceptable to show use of the marks for the services identified in those
registrations, the acceptability of different specimens for different marks for
different services has very little bearing on whether Applicant’s specimen shows use
of its applied-for mark for its services. We must decide each case on its own merits,
and the USPTO’s allowance of prior registrations does not bind the Board. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Although neither Applicant nor the Examining Attorney has suggested this, we
want to make clear that the present situation is different from that in In re ECCS
Inc., 94 F.3d 1578, 39 USPQ2d 2001 (Fed. Cir. 1996), in which, due to the presence
or absence of a space, there was an internal inconsistency in the application, with
the drawing showing the mark as EXA MODULE and the specimen showing it as
EXAMODULE. There is no doubt that Applicant is attempting to register BETTER,
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and not BETTER DNA. Applicant has shown that it has another, different
application for BETTER DNA for the services identified in the subject application.
See Serial No. 85981670.4 Moreover, as noted above, Applicant argues that
BETTER creates a separate and distinct commercial impression even though it is
used with the term DNA.
In conclusion, we agree with the Examining Attorney’s position that the applied-
for mark, BETTER, is not the mark that is shown in the specimen, and therefore
that Applicant has failed to show use of the mark for which it seeks registration.
Decision: The refusal to register Applicant’s mark BETTER is affirmed.
4 Response filed September 16, 2014, p. 37-39.
