Thermo Fisher Scientific Oy

Trademark Trial and Appeal Board

Aug 16, 2011

No. 79069097 (T.T.A.B. Aug. 16, 2011)

Mailed:
August 16, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Thermo Fisher Scientific Oy
________

Serial No. 79069097
_______

Keith E. Danish of Hiscock & Barclay, LLP for Thermo Fisher
Scientific Oy.

Kevin M. Dinallo, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Zervas, Bergsman and Ritchie,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Thermo Fisher Scientific Oy (“applicant”) filed an
application on the Principal Register for the mark
WELLWASH, in standard character form, for “microplate
washers for laboratory use, and recorded computer operating
programs for the aforementioned goods,” in Class 9. The
application is based on a request for extension of
protection filed under Section 66(a) of the Trademark Act
of 1946, 15 U.S.C. §1144f(a). During the prosecution of
the application, applicant stated that the term WELLWASH
has no meaning or significance in the industry.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79069097
2
A microplate “is a flat plate with multiple ‘wells’
used as small test tubes.”1
A microplate typically has 6, 12, 24,
96, 384 or even 1536 sample wells
arranged in a 2:3 rectangular matrix. …

Each well of a microplate typically
holds somewhere between tens of
nanolitres to several milliliters of
liquid. The can also be used to store
dry powder or as racks to support glass
tube inserts. … Today there are
microplates for just about every
application in life Science [sic]
research which involves filtration,
separation, optical detection, storage,
reaction mixing or cell culture.

A photograph of microplates with 96, 384 and 1536 wells is
shown below.2

“Microplate washers combine buffer dispensing and
aspiration cycles to remove reagents from sample wells.

1 Wikipedia attached to applicant’s February 11, 2010 Response.
2 Id.
Serial No. 79069097
3
Microplate washers include automatic washing devices and
manually-operated washers for all configurations of
microplates and strips. … Automated microplate washers can
be programmed to deliver a slow gentle drip of fluid on a
plate, or to provide a full force, high pressure washing.”3
The Trademark Examining Attorney refused to register
applicant’s mark WELLWASH under Section 2(e)(1) of the
Trademark Act of 1946, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s mark is merely descriptive. According to
the Examining Attorney, the mark WELLWASH “merely describes
a feature or function of the goods, namely, the goods
feature the ability and function to wash the wells of
laboratory microplates.”4
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products and services
it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods and
services for which registration is sought and the context
in which the term is used, not in the abstract or on the

3 GlobalSpec.com attached to the April 1, 2010 Office Action.
See also the Kauto Declaration ¶ 5 (October 1, 2010 Response).
4 Examining Attorney’s Brief, unnumbered page 3.
Serial No. 79069097
4
basis of guesswork. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the
question is not whether someone presented only with the
mark could guess what the products are. Rather, the
question is whether someone who knows the products will
understand the mark to convey information about them.
In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB
2002); In re Patent & Trademark Services Inc., 49 USPQ2d
1537, 1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
The evidence discussed below has been made of record
by the examining attorney and applicant.
Serial No. 79069097
5
1. Applicant’s website (thermo.com) describes the
WELLWASH microplate washer as follows:5
Wellwash AC

The Wellwash AC is a fast and reliable
96-well plate washer that guarantees
excellent washing precision and low
residual volumes. …

Product Detail

High-quality 96-well microplate washing
with robot compatibility

… this microplate washer for 96-well
plates guarantees excellent washing
precision and low residual volumes.

* * *

Superb washing performance and very low
residual volumes for reliable results

Washing performance is excellent.
Residual aspiration volumes after the
washing cycle are less than 1µl per
well when the advanced sweep aspiration
is used. During the advanced sweep
aspiration is function [sic], the wash
head moves in quick steps instead of
scraping the bottom to the well. The
aspiration is performed in 3 positions:
in the middle and in both corners of a
microplate well. …

2. The OpticsPlanet.com website advertises the sale
of applicant’s products.6 It identifies the product as
“Thermo Fisher Scientific Wellwash 4 Mk2 Microplate

5 August 7, 2009 Office Action.
6 Id.
Serial No. 79069097
6
Washer.” The advertisement claims that applicant’s product
has “excellent washing efficiency with low residual volumes
of less that 5µl per well,” as well as interchangeable wash
heads.
3. What appears to be an HTML version of a brochure
advertising applicant’s product.7 The brochure provides the
following information:
The Thermo Scientific Wellwash and
Wellwash Versa are easy-to-use strip
washers that offer convenience through
a graphical user interface, eight
language versions and a USB port.

* * *

The Thermo Scientific Wellwash is the
basic model for washing 96-well plates
only. … The Thermo Scientific Wellwash
Versa is the advanced mode which can
also was cells and 384-well plates,
offering enhanced flexibility need for
research use.

* * *

The wash and waste bottles in the
Wellwash washers are not pressurized to
minimize the risk of spillage and to
prevent the washing liquid from being
drawn into the aspiration pump, which
could damage the instrument.

* * *

The wash parameters for the Wellwash
Versa can be adjusted to achieve a
gentle wash to remove excess liquid

7 April 1, 2010 Office Action.
Serial No. 79069097
7
without disturbing the cell layer,
critical for washing applications.

* * *

The Wellwash washers efficiently remove
liquid from the wells.

4. An excerpt from the Tecan website (tecan.com)
advertising the “96 Plate WasherTM The high performance
microplate washer for 96-well plates.”8
The 96 Plate Washer (96 PW) is a high
performance microplate washer for 96-
well plates. Due to its advanced wash
head design the 96 PW processes all
wells of a 96-well microplate
simultaneously allowing a dramatic
reduction of the total processing time
to a couple of seconds.

5. A number of other websites advertising microplate
washers indicating that microplates are composed of
numerous wells.9 The specifications for 3D Microplate
Washer identified one of its specifications as “Number of
wells washed simultaneously.”
6. A second excerpt from what appears to be
applicant’s website describing the process of cleaning
microplates.10

8 Id.
9 Id.
10 October 25, 2010 Office Action.
Serial No. 79069097
8

7. The declaration of Kai Kauto, applicant’s
Business Director for Sample Preparation and Analysis
Business.11 Mr. Kauto provided the following testimony:
a. “The applicant and its competitors customarily
identify such [microplate washers] as ‘microplate washers’
or ‘plate washers,’ not ‘well washers.’”
b. “The applicant and its competitors generally
refer to ‘wells’ only when identifying the number of wells
in the microplates that can be accommodated in the
particular microplate being offered, e.g., ’96-well’, ‘384-
well’.”
c. “Applicant would not identify the product or its
function as a ‘well washer’ but as a microplate washer.

11 October 1, 2010 Response.
Serial No. 79069097
9
‘Well washer’ would be an inadequate description of a
product with a complex function.”
We find that the mark WELLWASH directly informs
consumers and potential consumers of microplate washers
that applicant’s product is a microplate washer. As noted
above, the test of whether a mark is merely descriptive is
not whether someone can look at the mark and guess what the
goods are; rather, the test is whether the mark informs
relevant consumers about a quality, characteristic,
feature, purpose or function of the product. In this
regard, the mark WELLWASH directly informs relevant
consumers that applicant’s product washes the microplate
wells which comprise an essential component of a
microplate.
As indicated above, applicant contends that a
microplate washer is called a microplate washer or plate
washer, not a well washer. In its brief, applicant
specifically argued that WELLWASH is not the normal or
natural way of describing a microplate washer.12 In other
words, because WELLWASH is not a natural or obvious way to
reference a microplate washer, the combination of the words

12 Applicant’s Brief, p. 5. See also Applicant’s Brief, p. 8
(“WELLWASH is a play on words, creating a unique commercial
impression that is not descriptive”).
Serial No. 79069097
10
“well” and “wash” is incongruous. However, because the
term WELLWASH is not ordinarily used to describe a
microplate washer is not a controlling factor in
determining whether it is merely descriptive where, as
here, it projects a readily understood significance to the
ordinary purchaser. In re MBAssociates, 180 USPQ 338, 339
(TTAB 1973). Moreover, the fact that there are other
equally or more descriptive terms for applicant's product
does not remove or ameliorate the descriptiveness of
applicant’s mark. Roselux Chemical Co., Inc. v. Parsons
Ammonia Company, Inc., 299 F.2d 855, 132 USPQ 627, 632
(CCPA 1962); In re The Officers’ Organization For Economic
Benefits, Limited, 221 USPQ 184, 186 (TTAB 1983); Hartford
Fire Insurance Co. v. The Structured Settlements Co., 215
USPQ 1145, 1150 (TTAB 1982).
In this case, the ordinary purchaser of a microplate
washer knows that a well is an essential component of a
microplate and that, therefore, the mark WELLWASH directly
informs that consumer that applicant’s product washes the
microplate wells. Thus, the term WELLWASH directly
describes the purpose of the product and, as such, it
possesses nothing more than a merely descriptive
significance. In this regard, the combination of the words
Serial No. 79069097
11
“well” and “wash” are not incongruous when used in
connection with a microplate washer.
Applicant also argues that the term WELLWASH can have
multiple meanings thereby taking it out of the category of
a descriptive mark. For example, applicant asserts that
WELLWASH could mean “wash something well,” a machine that
can wash wells and cells, or as an imperative “Well, Wash!”
Thus, applicant concludes that “with all these meanings and
messages … its mark … conveys a unique commercial
impression to the consumer.”13 We disagree. As indicated
above, the issue of descriptiveness is determined in
relation to the goods for which registration is sought and
the context in which the term is used, not in the abstract
or on the basis of guesswork. When the term WELLWASH is
used in connection with microplate washers, the commercial
impression engendered by applicant’s mark directly conveys
that the product washes the wells of the microplate.
In view of the foregoing, we find that applicant’s
mark WELLWASH for “microplate washers for laboratory use,
and recorded computer operating programs for the
aforementioned goods” is merely descriptive.
Decision: The refusal to register is affirmed.

13 Applicant’s Brief, p. 9.