Quest Diagnostics Investments LLC

Trademark Trial and Appeal Board

Aug 9, 2016

No. 86315136 (T.T.A.B. Aug. 9, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Quest Diagnostics Investments LLC
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Serial No. 86315136
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David J. Davis and Shima S. Roy of Baker & McKenzie LLP
for Quest Diagnostics Investments LLC.

Cory Boone, Trademark Examining Attorney, Law Office 104
(Dayna Browne, Managing Attorney).
_____

Before Taylor, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Quest Diagnostics Investments LLC (“Applicant”) seeks a Principal Register
registration for the proposed mark BRCA SHARE, in standard characters, for:
Providing an on-line database and portal featuring medical
and genetic data; Providing an online database and portal
in which information about medical and genetic data can
be accessed and exchanged; Providing an on-line database
and portal featuring information that can be accessed and
exchanged regarding gene mutations, genomics, medical
diagnostic test results, and cancer-related data and
information, for use by physicians, hospitals, medical
researchers, public health organizations, government
organizations, and other medical professionals; Providing
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medical information about gene mutations, genomics,
medical diagnostic test results, and cancer-related data1

The Examining Attorney refused registration on the ground that Applicant’s
proposed mark is merely descriptive of the identified services under Section 2(e)(1) of
the Act. After the refusal became final, Applicant appealed and filed a motion for
reconsideration which was denied. Applicant and the Examining Attorney filed
briefs.
The Examining Attorney’s descriptiveness refusal is based in part on the
following definitions of the proposed mark’s constituent terms:
BRCA—“either of two genes (BRCA1 or BRCA2) that, if
inherited in a mutated form, may predispose some carriers
to develop breast or ovarian cancer”2

SHARE—“to partake of, use, experience, occupy, or enjoy
with others” and “to tell (as thoughts, feelings, or
experiences) to others”3

Office Actions of July 30, 2014 and February 19, 2015. He also relies on the following
evidence:
• “BRCA” is defined as an acronym for “breast cancer.”4

• Wikipedia indicates that a “BRCA mutation” is “a
mutation in either of the genes BRCA1 and BRCA2.
Harmful mutations in these tumor suppressor genes
produce a hereditary breast-ovarian cancer syndrome
in affected families.”5

1 Application Serial No. 86315136, filed June 19, 2014 based on an intent to use the proposed
mark in commerce under Section 1(b) of the Trademark Act.
2 http://dictionary.reference.com/browse/BRCA?r=66
3 http://www.merriam-webster.com/dictionary/share
4 http://www.acronymfinder.com/BRCA.html and http://www.abbreviations.com/BRCA
5 http://en.wikipedia.org/wiki/BRCA_mutation
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• A National Cancer Institute Fact Sheet entitled
“BRCA1 and BRCA2: Cancer Risk and Genetic Testing”
indicates that “BRCA1 and BRCA2 are human genes
that produce tumor suppressor proteins. These proteins
help repair damaged DNA and, therefore, play a role in
ensuring the stability of the cell’s genetic material.
When either of these genes is mutated … cells are more
likely to develop additional genetic alterations that can
lead to cancer.”

Office Action of July 30, 2014; see also Office Action Response of January 30, 2015
Ex. 1.
Applicant relies on an April 21, 2015 New York Times article, “New Genetic Tests
for Breast Cancer Hold Promise,” which discusses Applicant’s BRCA SHARE
initiative:
… the nation’s two largest clinical laboratories, [Applicant]
Quest Diagnostics and LabCorp, normally bitter rivals, are
joining with French researchers to pool their data to better
interpret mutations in the two main breast cancer risk
genes, known as BRCA1 and BRCA2. Other companies and
laboratories are being invited to join the effort, called
BRCA Share … The entire testing industry is now
scrambling to pool data to lower that rate, and in some
cases to catch up to Myriad, which has kept much of its
data proprietary as a competitive advantage. Various data-
sharing efforts are already underway, including by ClinVar
and the BRCA Challenge. Now there is also BRCA Share,
which is based on a database of genetic variants
maintained by Inserm, a French government health
research institute. [Applicant] Quest Diagnostics agreed to
provide money to improve that database and pay for
experiments on cells that could help determine whether
certain mutations raise the risk of cancer. “We are going to
help them make it better,” said Dr. Charles M. Strom, vice
president for genomics and genetics at [Applicant] Quest.
He said BRCA Share would be open to others, with LabCorp
becoming the first to join. Participants will have to
contribute their data to the database. Companies will pay
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for access to the data on a sliding scale based on their size,
while others will have access to the data without paying, he
said.

Office Action Response of August 19, 2015 Ex. F (emphasis added). Applicant also
introduced a GenomeWeb article from the same date entitled “Quest, Inserm Launch
BRCA Datasharing Initiative; LabCorp First to Join,” which states:
BRCA Share, which is open to additional participants,
builds on a curation process for BRCA data … BRCA Share
members will contribute de-identified clinical patient data
on BRCA1 and BRCA2 and will have access to each other’s
data … [Applicant] Quest will license BRCA data,
including from the UMD-BRCA1/2 database, and
sublicense it to commercial labs or academic groups who
commit to sharing their own BRCA data.

Id. Ex. E (emphasis added). Both of these articles appear to be based in part on a
press release for BRCA Share, which Applicant apparently authored at least in part.
The press release refers to the services to be offered under the proposed BRCA
SHARE mark as the “BRCA Gene Datashare Initiative,” and states that “BRCA
Share provides several features unique to a gene datashare program.” Id. Exs. C and
D.
This evidence establishes that BRCA SHARE is merely descriptive, within the
meaning of Section 2(e)(1), because it immediately conveys knowledge of a feature,
function, characteristic or purpose of the services for which it is intended to be used.
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)
(quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009)); and In re Abcor Development,
588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Indeed, Applicant intends to use
the mark for “providing an online database and portal in which information about
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medical and genetic data” (which encompasses information about BRCA mutations
and breast cancer) “can be accessed and exchanged,” in other words “shared,” or
“partaken of or told to others.”
While Applicant attempts to make much of alleged differences in meaning
between the words “access” and “exchange” on the one hand, which are used in
Applicant’s identification of services, and the word “share” on the other, which is used
in Applicant’s proposed mark, its arguments are belied by its own press release, and
by the context in which the mark is intended to be used. Indeed, the BRCA Share
press release refers to BRCA SHARE as a “gene datashare program,” and:
• states that its members “will pool de-identified clinical laboratory
patient data on BRCA1 and BRCA2;”

• states that “[d]ata curation, which includes review of shared data for
duplicate entries and confirmation that all data provided meets the
same level of scientific rigor, is imperative to ensure data can be used
for commercial applications as well as for research;”

• quotes LabCorp’s Chairman and Chief Executive Officer as stating
“LabCorp is pleased to be the first participant in BRCA Share. We
strongly support this initiative and believe that broader access to key
UMD-BRCA1/2 database information through BRCA Share will
yield significant improvements in BRCA Diagnostics, and enhance
patient care and treatment;” and

• states that “[u]nder BRCA Share, all members will have access to the
same pool of jointly contributed BRCA data. Quest Diagnostics will
license BRCA data, including from Inserm’s UMD-BRCA1/2
databases, and form sublicense agreements with any commercial lab
or academic party that commits to share BRCA data with the group’s
members.”

Office Action Response of August 19, 2015 Ex. C (emphasis added). In other words,
as used in the proposed mark, the term “share” has essentially the same meaning as
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the words “access” and “exchange,” in that data about BRCA1 and BRCA2 from
various sources will be pooled, made available to others and transferred or otherwise
disseminated. Applicant itself relies on a dictionary definition of “exchange” as “an
occurrence in which people give information to each other.” Id. Ex. A; see also Office
Action Response of August 19, 2015 (According to Applicant, “[t]he initiative relies on
voluntary participation by diagnostic companies and research centers to provide data,
which is then shared free of charge to non-commercial researchers.”) (emphasis
added).6 That “access,” “exchange” and “share” can have other meanings in different
contexts is simply irrelevant, because “so long as any one of the meanings of a term
is descriptive, the term may be considered to be merely descriptive.” In re Chopper
Industries, 222 USPQ 258, 259 (TTAB 1984); see also, In re IP Carrier Consulting
Group, 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979).
Furthermore, whether a mark is merely descriptive is determined not in the
abstract, but in relation to the services for which registration is sought, the context
in which it is being used on or in connection with the services, and the possible
significance that the mark would have to the average purchaser of the services
because of the manner of its use. Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). It is settled that “[t]he question is not whether someone presented with
only the mark could guess what the goods or services are. Rather, the question is

6 Merriam-Webster dictionary.
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whether someone who knows what the goods or services are will understand the mark
to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17
(TTAB 2002). Here, someone who knows what Applicant’s services are will
immediately understand that BRCA SHARE refers to the service of collecting,
“curating” and providing gene-related and cancer-related information and allowing
the information to be accessed, exchanged and shared by others.
Applicant’s other arguments against the refusal are also unavailing. It does not
matter that Applicant’s identification of services does not include the terms BRCA,
BRCA1 or BRCA2, because Applicant seeks registration for a database and portal
containing “genetic data,” including information about “gene mutations, genomics” as
well as “cancer-related data and information,” all of which encompass BRCA and
BRCA-related data and information. See In re Analog Devices Inc., 6 USPQ2d 1808,
1810 (TTAB 1988), aff’d 10 USPQ2d 1879 (Fed. Cir. 1989) (“registration is properly
refused if the subject matter for registration is descriptive of any of the goods for
which registration is sought”). Applicant’s argument that the proposed mark
immediately conveys the sharing of actual gene mutations that might lead to cancer,
as opposed to information related thereto, is not credible; it is highly unlikely that
anyone would believe that Applicant is offering the ability to “share” a potentially
deadly gene mutation with a human subject. There is no incongruity in combining
the terms “BRCA” and “SHARE.” In fact, Applicant’s press release and the New York
Times article make clear that BRCA Share will not be the only initiative focused on
the exchange of genetic (or medical or cancer-related) information. Office Action
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Response of August 19, 2015 Exs. C (“BRCA Share provides several features unique
to a gene datashare program.”) and F (“The entire testing industry is now scrambling
to pool data to lower that rate, and in some cases to catch up to Myriad, which has
kept much of its data proprietary as a competitive advantage. Various data-sharing
efforts are already underway, including by ClinVar and the BRCA Challenge.”). We
would expect at least some of those interested in Applicant’s services to be well aware
of unrelated initiatives with similar goals. In fact, when the term “BRCA,” which
Applicant admits is descriptive, is combined with “share,” which immediately conveys
providing information which may be “accessed and exchanged,” the “mark as a whole,
i.e., the combination of the individual parts,” does not convey “any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.” In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). To
the contrary, from “the perspective of a prospective purchaser or user” of Applicant’s
services, “because … the combination of the terms does not result in a composite that
alters the meaning of [any] of the elements … refusal on the ground of descriptiveness
is appropriate.” In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009).
Applicant’s arguments based on the issuance of registrations for different marks
used for different goods and services are essentially irrelevant. In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to Nett Designs’ application, the PTO’s
allowance of such prior registrations does not bind the Board or this court.”); see also
In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014) (“Although the United
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States Patent and Trademark Office strives for consistency, each application must be
examined on its own merits. Neither the Examining Attorney nor the Board is bound
to approve for registration an Applicant’s mark based solely upon the registration of
other assertedly similar marks for other goods or services having unique evidentiary
records.”). Finally, it is not relevant that Applicant is the first and only user of the
term BRCA SHARE. In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1083 (TTAB
2010); In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983).
In short, the record establishes, and we have no doubt, that BRCA SHARE is
merely descriptive of Applicant’s services. Moreover, whether or not they have done
so yet, Applicant’s competitors and others in the fields of genetic and cancer research
should be free to use the terms BRCA and SHARE in combination to describe their
own “datashare initiatives,” or similar programs which might lead to better
treatments or cures for deadly diseases. See, In re Boston Beer Co. L.P., 47 USPQ2d
1914, 1920-21 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999)
and In re Abcor Development, 200 USPQ at 217 (“The major reasons for not protecting
[merely descriptive] marks are … to maintain freedom of the public to use the
language involved, thus avoiding the possibility of harassing infringement suits by
the registrant against others who use the mark when advertising or describing their
own products.”).

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Decision: The refusal to register Applicant’s proposed mark as merely descriptive
under Section 2(e)(1) of the Trademark Act is affirmed.