Proteus S.A.

Trademark Trial and Appeal Board

Mar 25, 2003

No. 75625873 (T.T.A.B. Mar. 25, 2003)

Paper No. 16
TJQ
Mailed: March 25, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Proteus S.A.
________
Serial No. 75/625,873
_______
John A. Clifford and Kristina M. Foudray of Merchant &
Gould for applicant.
Tracy L. Fletcher, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Proteus S.A. to register
the mark PHENOMICS for “industrial enzyme research in the
chemical and agricultural fields.”1
The Trademark Examining Attorney refused registration
under Section 2(e)(1) of the Trademark Act on the ground
1 Application Serial No. 75/625,873, filed January 25, 1999,
alleging an intention to use the mark in commerce and a claim of
priority under Section 44(d) based on a French application.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/625,873
2
that applicant’s mark, if used in connection with
applicant’s services, would be merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
Applicant, while stating that “the term ‘phenomics’
may relate in some way to the field of molecular
biotechnology,” argues that its mark is just suggestive,
and that the Examining Attorney has not met her burden to
show that the mark is merely descriptive. Applicant
contends that there are numerous possible interpretations
of the term “phenomics,” suggesting that the term means
“that something is ‘phenomenal,’” or that the term “may be
a play on the word ‘fee’ such as ‘feenomics.’” Applicant
also points to the existence of a third-party registration
which initially was cited as a Section 2(d) bar to the
registration sought by applicant. Applicant asserts that
the registration of PHENOMICS for consultation and
information services in the fields of medicine and genetics
shows that applicant’s mark should be registered too.
Applicant is critical of the Examining Attorney’s evidence,
maintaining that none of the references to the term
“phenomics” relates to industrial enzyme research in the
chemical and agricultural fields. At best, applicant
Ser No. 75/625,873
3
argues, the evidence “demonstrates that the term phenomics
may be descriptive of certain pharmaceuticals, analysis of
specific multiple proteins, and limited medical uses.”
Lastly, applicant urges that any doubt be resolved in its
favor, thereby allowing others in the industry an
opportunity to oppose the registration sought by applicant.
Applicant has submitted one of its brochures covering its
services. Applicant’s literature states that applicant “is
a contract research company for the biotech industry” with
research focus on “the discovery and the design of novel
industrial enzymes” and “the design of rapid nucleic acid
analysis techniques.” The literature identifies PHENOMICS
as applicant’s proprietary technology for biodiversity
screening.
The Examining Attorney maintains the record shows that
“phenomics” is the name for a new field of scientific study
involving phenotypes and which complements genomics, and
that the term has been used in reference to the study of
the anatomy and function of cells and whole organisms. In
support of the refusal, the Examining Attorney submitted
dictionary definitions,2 and articles retrieved from the
2 Pursuant to the Examining Attorney’s request to take judicial
notice, the new dictionary listings cited in her brief have been
considered. See: University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 75/625,873
4
NEXIS database and the Internet.
It is well settled that a term is considered to be
merely descriptive of services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes a quality, characteristic or feature thereof or
if it directly conveys information regarding the nature,
function, purpose or use of the services. 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 services in order for it to
be considered to be merely descriptive thereof; rather, it
is sufficient if the term describes a significant attribute
or feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the services for which registration is sought.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The term “phenotype” is defined as “the totality of
the observable functional and structural characteristics of
an organism as determined by interaction of the genotype of
the organism with the environment in which it exists; any
particular characteristic or set of characteristics of an
organism so determined; a group of organisms exhibiting the
same set of such characteristics.” The term “phenome”
means “the whole of the phenotypic characteristics of an
Ser No. 75/625,873
5
organism.” Oxford Dictionary of Biochemistry and Molecular
Biology (revised ed. 2000). The Internet and NEXIS
database evidence reveals widespread use of the term
“phenomics” in connection with an emerging field of
scientific study. The following are examples of these
uses:
The study of the genotype—phenotype
relationship, through the use of
genomic data and analysis of
multigeneic functions in this manner,
constitutes a field of its own; one
which may be called “phenomics.”
Phenomics is expected to rise as a new
scientific endeavor, one that seeks to
analyze, interpret, and predict the
genotype-phenotype relationship from
genomic data. Given all the biological
data and computer power available
today, the development of phenomics
seems inevitable...this method can be
used for a broad range of scientific
interests, all related to the deepest
goal of understanding the genotype-
phenotype relationship.
(American Chemical Society and American
Institute of Chemical Engineers, April
24, 1999)
Phenomics will be based on the study of
integrated cellular systems and basic
physical–chemical laws.
(Gene Therapy Weekly, August 9, 1999)
Plant Development and Reproduction
Tailoring Plants for a Changing
Environment
The business unit Plant Development and
Reproduction brings together know-how
from the fields of genetics, physiology
and gene engineering to provide
innovative approaches to industry,
Ser No. 75/625,873
6
agriculture and horticulture. Our core
interests are:
Phenomics (large scale phenotype
analysis). The development of new
high-throughput technologies for the
functional analysis of genes enabling
rapid molecular and physiological
assessment of phenotypes.
(www.plant.wag-ur.nl)
Paradigm Genetics is industrializing
the process of gene function discovery
for four major sectors of the global
economy: human health, nutrition, crop
production and industrial
products...Paradigm’s GeneFunction
Factory™ is based on a state of the art
phenomics platform integrated with
metabolic profiling and gene expression
profiling technologies.
(www.ca.us.biz.yahoo.com)
Welcome to the Evolution of the
Phenomics Revolution
Phenomics is a field of study borne
from the completion of the human genome
project to effect this end. Simply
put, it is study of genomic information
to better understand the complex
relationship between genotype and
phenotype.
(www.dnaprint.com)
Based on the evidence of record, we find that the mark
is merely descriptive of industrial enzyme research in the
chemical and industrial fields that involves the study of
genotype-phenotype relationship. Although applicant
contends that the descriptive meaning is confined to the
pharmaceutical and medical fields, the Examining Attorney’s
evidence shows that phenomics has much broader
Ser No. 75/625,873
7
applicability, including to the chemical and agricultural
fields. In any event, as pointed out by the Examining
Attorney, applicant’s recitation of services, which
includes enzyme research in the chemical field, is broad
enough to encompass pharmaceutical and medicinal chemistry.
The existence of a single third-party registration for
the mark PHENOMICS does not compel a different result in
this case. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if some prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”]. While uniform treatment under the Trademark Act
is an administrative goal, our task in this appeal is to
determine, based on the record before us, whether
applicant’s particular mark sought to be registered here is
merely descriptive of the services recited in the
application. As is often stated, each case must be decided
on its own merits. See, e.g.: In re Best Software Inc.,
58 USPQ2d 1314 (TTAB 2001).
Decision: The refusal to register is affirmed.