Osiris Thera-peutics, Inc.

Trademark Trial and Appeal Board

Dec 19, 2000

No. 75516973 (T.T.A.B. Dec. 19, 2000)

12/19/00
Paper No. 11
JQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Osiris Therapeutics, Inc.
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Serial No. 75/516,973
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William Squire of Carella, Byrne, Bain, Gilfillan, Cecchi,
Stewart & Olstein for applicant.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Quinn and Wendel, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Osiris Therapeutics,
Inc. to register the mark ALLOGEN for “allogeneic human
mesenchymal stem cells for medical therapy namely, for use
in conjunction with transplantation of tissues and solid
organs.”1
1 Application Serial No. 75/516,973, filed July 10, 1998, based
on an allegation 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. 75516973
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The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, if used in connection
with applicant’s goods, would be merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
The Examining Attorney maintains that the applied-for
mark is merely descriptive, citing to excerpts retrieved
from the MEDLINE database which show, according to the
Examining Attorney, “informational non-trademark use of the
term ‘allogen’ in relation to the transplantation of
tissues or organs.” (brief, p. 3) The Examining Attorney
concludes that the term is used in the field to describe
allogeneic matter.
Applicant argues that the mark sought to be registered
is not an English word and, thus, would not have a readily
recognized meaning when encountered by purchasers.
Applicant critiques the MEDLINE evidence submitted by the
Examining Attorney, contending that the cited uses of
“allogen” are either misuses or errors in translation from
a foreign language. Applicant also asserts that the
evidence shows “conflicting uses of a possible abbreviation
Ser No. 75516973
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for other terms such as allogeneic or alloantigen.”
(brief, p. 6) Applicant has referred to a dictionary
listing of the term “allogeneic,” and has introduced
product literature.
It is well settled that a term is considered to be
merely descriptive of goods, within the meaning of Section
2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof
or if it directly conveys information regarding the nature,
function, purpose or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods in order for it to be
considered merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
feature of them. Moreover, whether a term is merely
descriptive is determined not in the abstract, but in
relation to the goods for which registration is sought, the
context in which it is being used on or in connection with
those goods, and the possible significance that the term
would have to the average purchaser of the goods because of
the manner of its use. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). Accordingly, whether consumers could
guess what the product is from consideration of the mark
Ser No. 75516973
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alone is not the test. In re American Greetings Corp., 226
USPQ 365, 366 (TTAB 1985).
The term “allogeneic” is defined as “having cell types
that are antigenically distinct; in transplantation
biology, denoting individuals (or tissues) that are of the
same species but antigenically distinct, as opposed to
syngeneic and xenogeneic.” Dorland’s Illustrated Medical
Dictionary (28th ed. 1994).
The Examining Attorney has submitted excerpts
retrieved from the National Library of Medicine’s MEDLINE
database. The excerpts show uses of the term “allogen,”
including the following: “allogen-specific T-cell
proliferation;” allogen blood-forming precursor cells;”
“allogen-induced gamma-interferon production;” “allogen
cartilage preserved in thiomersalate has been
transplanted;” “allogen plasma;” “transplantation of
allogen or autogen bone-chips;” “modified MHC can be
considered a universal allogen;” “allogen transfusions;”
and “allogen induced lymphoproliferative responses.”
Given the dictionary definition of the term
“allogeneic” and the use thereof as a descriptor in the
identification of goods (“allogeneic human mesenchymal stem
cells”), there can be no dispute as to the mere
descriptiveness of this term. The real question here is
Ser No. 75516973
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whether a shortened form of the term is also merely
descriptive. We find that it is.
The MEDLINE excerpts clearly show that there has been
some usage of the term “allogen” in a descriptive manner in
the medical transplantation field. Individuals researching
this area of medicine would be exposed therefore to this
usage. Given the meaning of “allogeneic” relative to cells
used in transplantation, and the use of “allogen” in the
English text of articles pertaining to this area, we find
that individuals in this field would view the term
“allogen” as a merely descriptive term, no different than
they would view the term “allogeneic.” Applicant’s
arguments relating to misuses, conflicting uses or errors
in translation are unsupported by the record.
Decision: The refusal to register is affirmed.
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