Structural Bio-informatics, Inc.

Trademark Trial and Appeal Board

Jun 13, 2001

No. 75476096 (T.T.A.B. Jun. 13, 2001)

06/13/01
Hearing: Paper No. 13
March 6, 2001 DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Structural Bioinformatics, Inc.
________
Serial No. 75/476,096
_______
James C. Weseman and Felix J. D’Ambrosio of The Law Offices of
James C. Weseman for Structural Bioinformatics, Inc.
Jessie Warman Billings, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Quinn, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
An application has been filed by Structural Bioinformatics,
Inc. to register the mark shown below:
for “consulting services in the field of bioinformatics and in
the use of computer software and databases relating thereto.”1
The Trademark Examining Attorney has refused registration
under Section 2(e)(1) of the Act, 15 U.S.C. 1052(e)(1), on the
1 Application Serial No. 75/476,096, filed on April 2
upon an allegation of a bona fide intention to use the m
commerce in connection with the above identified service
42.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB8, 1998, based
ark in
s in Int. Cl.
Serial No. 75/476,096
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ground that applicant’s mark is merely descriptive of the
services recited in the application.
When the refusal was made final, applicant appealed. Both
applicant and the Trademark Examining Attorney have filed
briefs. At applicant’s request, an oral hearing was held before
this Board.
We affirm the refusal to register.
The Trademark Examining Attorney maintains that the term
“GeneNetX,” when sounded out phonetically, is the word
“genetics,” and that despite the novel spelling of the word, it
is merely descriptive of applicant’s consulting services in the
field of bioinformatics.
On the other hand, applicant argues that its intention is
that both “Gene” and “Net” should be given their ordinary
emphasis and be pronounced separately (i.e., “Gene”-“Net”-“X”),
in which case the Trademark Examining Attorney is in error about
the pronunciation of this coined term. Secondly, applicant
contends that the Trademark Examining Attorney has too easily
glossed over the differences between the fields of genetics and
bioinformatics.
It is well settled that a term is considered to be merely
descriptive of goods and/or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
Serial No. 75/476,096
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describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
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 characteristics, properties or functions of the goods or
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 thereof. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the very goods or services for which
registration is sought. In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979).
The first question before us is whether the term “Genetics”
is merely descriptive in connection with applicant’s services.
We first turn to the evidence made of record by the Trademark
Examining Attorney to support her contention that the term
“genetics” is merely descriptive of applicant’s consulting
services.
The Trademark Examining Attorney has submitted a dictionary
definition of the word “genetics” as meaning “the branch of
science that deals with heredity, especially the mechanisms of
hereditary transmission and the variation of inherited
characteristics among similar or related organisms.” She has
Serial No. 75/476,096
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also placed into the record a variety of excerpts from the
LEXIS/NEXIS database, of which the following are representative:
David Baker, an assistant professor of
biochemistry and bioengineering at the UW, also
is digging deeply into bioinformatics.
Baker and his colleagues are trying to take
genetic sequence information and, with
computational help, analyze it to try and predict
the shapes and functions of various proteins… .
(“21st Century Marriage – Biology, Computers,”
Seattle Post-Intelligencer, May 18, 1999, P. A-1)
… Researchers from the Southeast and Mid-Atlantic
region will discuss the latest in the emerging
field of bioinformatics – the study of
quantitative genetics using advanced
mathematical, statistical and computational
analysis… . (“A Pure Sport,” The News and
Observer (Raleigh, NC), February 17, 1999, p. B5)
… As biologists worldwide use their skills to
create genetic roadmaps, called genomes, students
of bioinformatics are learning to harvest that
information with the help of computer programs… .
(“RPI helps to bring genetic mapping into
computer age,” The Times Union, (Albany, NY),
September 26, 1998, p. B1)
In fact, when applicant states its position on this
question in some detail, it corroborates the above, as follows:
Applicant agrees that the field of bioinformatics
(the relevant field for applicant’s services)
does include aspects in common with the field of
genetics, but it is the difference between the
Companies can also use bioinformatics to analyze
genetic data and pinpoint individuals who,
because of their genetic makeup, would benefit
from a new drug … . (“Bay State biotechs see
future growth in bioinformatics,” Boston Business
Journal, February 12, 1999, p. 1)
Serial No. 75/476,096
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two fields which helps to refute the erroneous
conclusions drawn by the Examining Attorney.
Bioinformatics, the stated field for applicant’s
services, involves the use of computers and
sophisticated information processing techniques
to extract information from gene and protein
structure, and utilize the information in the
design and development of novel drugs, proteins
and other molecular structures.
(Applicant’s reply brief, p. 2).
As to the field of bioinformatics, the common strand
throughout applicant’s briefs and all of the NEXIS excerpts
contained in the record is the use of computers to process large
amounts of biologically-derived information. While some of the
quotations in the file use the term “bioinformatics” to describe
broadly any use of computers to handle biological information,
many are used in a narrower sense to describe the use of
computers to understand the molecular components of living
things, and especially genetic material.
Furthermore, these excerpts, like applicant’s recital of
services, all demonstrate that much of the current
bioinformatics work is concerned with the technology of
databases. The best known of these databases involves “The
Human Genome Project,” a detailed map of human DNA. (“Genome
research center gets new home,” The Santa Fe New Mexican, August
15, 1999, p. D-1). The biologists and geneticists quoted in
these excerpts who talk about “doing bioinformatics” are using
Serial No. 75/476,096
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computers to store, retrieve, analyze or predict the composition
or the structure of biomolecules, including genetic material.
Clearly, genetics and bioinformatics are closely related
fields, and increasingly, are overlapping. Applicant concedes
that bioinformatics “does include aspects in common with the
field of genetics.” There are differences in that genetics is a
traditional life science while bioinformatics has married
advanced computation to the life sciences. However, under the
test for merely descriptive matter under the Lanham Act, we find
that in fact, the word “genetics” conveys information about one
of the primary purposes for the current importance of, and
recent spectacular growth in, the field of bioinformatics.
Accordingly, we conclude that if the term in question were the
word “genetics,” undoubtedly it should be held merely
descriptive of a primary purpose for the field of
bioinformatics, and that logic extends to applicant’s
“consulting services” in this field.
Having found the term “genetics” merely descriptive in this
context, we turn next to the question of whether, as argued by
the Trademark Examining Attorney, applicant’s alleged trademark,
“GeneNetX,” would be perceived by relevant consumers as the term
“genetics”?
Whether a novel spelling of a descriptive term is also
merely descriptive depends upon whether purchasers would
Serial No. 75/476,096
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perceive the different spelling as largely the equivalent of the
descriptive term. As Professor McCarthy notes, a “slight
misspelling of a word will not generally turn a descriptive word
into a non-descriptive mark.” 2 T.J. McCarthy, McCarthy on
Trademarks and Unfair Competition, §11.31 (4th Ed. 1998).
Nonetheless, applicant argues that the Trademark Examining
Attorney has taken liberties with its corrupted spelling:
The distinct syllables “Gene” and “Net” are not
pronounced “ge-net” or “genet,” as the [Trademark
Examining Attorney’s] argument concludes, but
instead are encouraged to be pronounced
separately and distinctly as “Gene” and “Net” –
precisely as applicant intends.
(Applicant’s reply brief, p. 2).
The predecessor to our primary reviewing Court had to face
this question under the terms of the Lanham Act on a number of
instances. See Andrew J. Mcpartland, Inc. V. Montgomery Ward &
Co., Inc., 76 USPQ 97 (CCPA 1947), cert. denied, 333 U.S. 875,
77 USPQ 676 (S. Ct. 1948) [“KWIXTART,” phonetic spelling of
“quick start,” is descriptive of electric storage batteries];
and In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355
(CCPA 1953) [“FASTIE,” as phonetic spelling of “fast tie,”
connotes that which unites or joins quickly, and hence the
notation is descriptive of the function and character of tube
sealing machines]. Our own precedent demonstrates that a slight
misspelling of a descriptive (or misdescriptive) term is
Serial No. 75/476,096
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insufficient to avoid the proscription of Section 2(e)(1), so
long as the corrupted term is likely to be perceived by the
public as the equivalent of the descriptive term. See In re
Organik Technologies Inc., 41 USPQ2d 1690 (TTAB 1997)
[“ORGANIK,” phonetic equivalent of word “organic,” is
misdescriptive of applicant's cotton textiles and clothing]; In
re State Chemical Manufacturing Co., 225 USPQ 687 (TTAB 1985)
[“FOM,” equivalent to word “foam,” is descriptive for foam rug
shampoo]; and In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982)
[“TOOBS,” the phonetic equivalent of the word “tubes,” is a
descriptive name that may be used for applicant’s bathroom and
kitchen fixtures in the form of curved tubes which serve as
holders and racks].
Granted that prior decisions are of limited value in
deciding trademark issues such as this, comparing the alleged
mark, “GeneNetX,” with the word “genetics,” whether one focuses
on the visual or alleged phonetic differences, we find that the
corruption herein is no more significant than with rejected
terms like KWIXTART/quick start batteries,2 FASTIE/fast tie
2 For example, in Mcpartland v. Montgomery Ward supra, if one
slowly and carefully articulates each syllable of KWIXTART, logically
breaking the two syllables between the letters “x” and “t,” the
pluralized sound (ĭks) of the first syllable of the asserted mark
(KWIX or quicks) creates “quicks-tart.” In effect, with the corrupted
spelling, the “s” sound has moved from the second syllable to the
first, producing a slightly different ĭks (or “x”) sound, and changing
the second syllable from “start” to “tart.” If one analyzes the
phonemes involved, “quicks-tart” is arguably distinguishable as
Serial No. 75/476,096
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sealing machines,3 ORGANIK/non-organic cotton fabrics, FOM/foam
carpet cleaner or TOOBS/curved tube fixtures. We are without
any doubt that applicant’s mark “GeneNetX” would be perceived by
the relevant public to be the equivalent of “genetics.”
As seen in the cases from the predecessor to our reviewing
Court, cited supra, the corrupted spelling need not be
pronounced exactly the same as the descriptive term. In
ordinary usage, the “jēn•nĕt” of applicant’s claimed mark will
not be easily distinguished from the “je•nĕt” of the descriptive
word, genetics.4
And finally, in spite of the phonetic analysis above, it
has been repeatedly stated that “there is no correct
pronunciation of a trademark.” In re Belgrade Shoe, 411 F.2d
1352, 162 USPQ 227 (CCPA 1969), and Yamaha International Corp.
v. Stevenson, 196 USPQ 701 (TTAB 1977), and cases cited therein.
sounded out from the descriptive term, “quick-start.” However, such a
fine difference did not stop the Court from finding QUIXTART to be
descriptive of “quick-starting” batteries.
3 In Hercules Fasteners supra, where the CCPA found FASTIE to be
descriptive for “fast tie” sealing machines, the Court’s decision was
not changed by the fact that normally one might find a strong, double
“T” sound at the confluence of these two syllables “fast” • “tie”.
4 Similar to the strong, double “T” sound at the confluence of the
two syllables “fast”•“tie” (“FASTIE”) in Hercules Fasteners supra, in
the instant case the normal pronunciation of the first two syllable
herein (“Gene” and “Net”) would provide for a long, double “N” sound
at the confluence of these two syllables (jēn•nĕt).
Serial No. 75/476,096
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Next, applicant points out that its mark emphasizes the
word “Net,” with its alternative meaning readily picked out by
the computer literate:
… any individuals or companies working in the
field of bioinformatics will be highly
knowledgeable and computer literate. To such
individuals and companies, the relevant consuming
public, the novel spelling and presentation
inherent in applicant’s mark, and particularly
the emphasis in setting apart the term “Net” will
be suggestive of the use of internet or computer
services … and involve “genes,” the lead
component of the subject mark.
As to applicant’s argument that the “Net” portion of the
mark may have a connotation of the Internet, we find that such a
suggestion will not detract from the overwhelming impression of
the mark as a whole as being the phonetic equivalent of the word
“genetics,” even for those who are experts with computers and
the Internet. Moreover, we agree with the position of the
Trademark Examining Attorney that this might explain the origins
of the “Gene” and “Net” syllables of applicant’s mark, but there
is no suggestion in the file for what role the capitalized and
final letter “X” plays in this mark,5 other than to create a
novel combination having the phonetic equivalence of “genetics.”
With respect to the alleged sophistication of applicant’s
prospective purchasers, we acknowledge that despite the absence
5 “The mark could properly (or phonetically) be pronounced as
‘Gene-Net-X’ (or ‘Gene-Net-Ten’ if the ‘X’ were perceived as a Roman
numeral)… .” (Applicant’s brief, p. 2).
Serial No. 75/476,096
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of any evidence on this point, these services are likely to be
directed to fairly knowledgeable persons. However, we conclude
that the sophistication of purchasers herein does not help
applicant much in this case. The fact is that this misspelling,
when used in connection with the identified services, will be
perceived as “genetics” whether the purchasers are highly
educated or not. One could even argue that one knowledgeable
about this field might spot “genetics” even more readily than
others.
Finally, we should respond to applicant's argument that the
concept of “fair-use” protects others doing consulting work in
the field of bioinformatics in their use of the descriptive word
“genetics.” While that is undoubtedly true, that fact does not
absolve this Board from our responsibility to apply Section
2(e)(1) of the Lanham Act to the case before us. Furthermore,
under our trademark law, all of applicant’s competitors have
“the right to be free from claims of exclusive right by others
and from harassment based on such claims” against their use in
their businesses of language which is accepted terminology in
that field. See State Chemical Manufacturing, supra.
Decision: The refusal to register is affirmed.