Adenocyte LLC

Trademark Trial and Appeal Board

Apr 29, 2020

87900765 (T.T.A.B. Apr. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Hearing: November 7, 2019 Mailed: April 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Adenocyte LLC
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Serial No. 87900765
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Tuvia Rotberg of Amster, Rothstein & Ebenstein LLP,
for Adenocyte LLC.

Cameron McBride, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Ritchie, Shaw, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Adenocyte LLC (“Applicant”) seeks registration on the Principal Register of the
mark ADENOCYTE, in standard characters, for:
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Medical devices, namely, devices for obtaining body fluid
samples and devices that facilitate the separation of
biologic tissues; diagnostic devices for use in diagnosing
cancer by the cytopathologic examination of cells in
International Class 10;
Medical and scientific laboratory services for diagnosing
cancer by the cytopathologic examination of cells in
International Class 42; and
Medical services, namely, medical consultations and
training with respect to diagnosing cancer by the
cytopathologic examination of cells in International Class
44.1
The Examining Attorney refused registration of Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely descriptive of the
identified goods and services. After the Examining Attorney made the refusal final,
Applicant requested reconsideration and appealed. On reconsideration, the
Examining Attorney maintained the descriptiveness refusal. The appeal proceeded
and has been fully briefed.
II. Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods of the applicant is merely
descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it
immediately conveys information concerning a feature, quality, or characteristic of
the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-
Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In

1 Application Serial No. 87900765 has a filing date of April 30, 2018, and is based on
Applicant’s assertion of a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. § 1051(b).
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re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). “The
major reasons for not protecting such [merely descriptive] marks are: (1) to prevent
the owner of a mark from inhibiting competition in the sale of particular goods [or
services]; and (2) 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
[or services].” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090 (Fed.
Cir. 2005) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA
1978)).
Descriptiveness must be assessed “in relation to the goods or [services] for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods [or
services] because of the manner of its use or intended use.” In re Bayer AG, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing Abcor Dev., 200 USPQ at 218).
The descriptiveness analysis concentrates on the recitation of goods and services set
forth in the application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d
1632, 1636 (Fed. Cir. 2016) (quoting Octocom Sys., Inc. v. Houston Comput. Servs.,
Inc., 918 F.2d 937, 16 USQP2d 1783, 1787 (Fed. Cir. 1990)). Evidence that a term is
merely descriptive to the relevant purchasing public “may be obtained from any
competent source, such as dictionaries, newspapers, or surveys.” Bayer AG, 82
USPQ2d at 1831; See In re Virtual Indep. Paralegals, 2019 USPQ2d 111512, *2
(TTAB 2019) (“Evidence of the public’s understanding of a term may be obtained
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from ‘any competent source, such as … dictionaries, newspapers and other
publications.’”) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786
F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)). The mark need not be merely
descriptive of all the recited goods or services, as we affirm the refusal if the mark
describes at least one of the goods or services in each class. See In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (for
single-class applications, stating that a descriptiveness refusal is proper, “if the
mark is descriptive of any of the goods for which registration is sought”) (quoting In
re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005)).
A. Arguments and Evidence
The Examining Attorney explains the descriptiveness refusal as follows:
Here, the evidence of record shows that goods and
services are used to obtain, diagnose, and treat cancerous
cells by the use of cytopathology. The mark in the present
case is the direct name for a very specific type of cell. In
fact, the evidence of record from the Farlex Partner
Medical Dictionary shows that ‘adenocystic carcinoma’ is
a specific type of cancer that can affect these very cells.
Thus,… the wording directly describes the type of cells
that can be obtained, diagnosed, and treated….2
The Examining Attorney introduced online dictionary entries for several relevant
terms:3
Adenocyte: A secretory cell of a gland
Adenocystic carcinoma: (adenoid cystic carcinoma)
carcinoma marked by cylinders or bands of hyaline or

2 9 TTABVUE 5 (Examining Attorney’s Brief).
3 TSDR August 28, 2018 Office Action at 5; TSDR March 18, 2019 Office Action at 5.
Serial No. 87900765
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mucinous stroma separated or surrounded by nests or
cords of small epithelial cells, occurring in the mammary
and salivary glands, and mucous glands of the respiratory
tract. Called also cylindroma.
Carcinoma: a malignant new growth made up of epithelial
cells tending to infiltrate surrounding tissues and to give
rise to metastases. A form of cancer, carcinoma makes up
the majority of the cases of malignancy of the breast,
uterus, intestinal tract, skin, and tongue.
He also submitted the American Medical Association webpage on “Cytopathology”
that describes it as “a diagnostic technique that examines cells from various body
sites to determine the cause or the nature of disease.”4 According to the webpage, a
cytopathologist engages in “the diagnosis of human disease by means of the study of
cells obtained from body secretions and fluids….”5 It explains that these specialists
“examine cells that have been exfoliated (shed), scraped from the body or aspirated
with a fine needle. Cell specimens are processed into slides and examined
microscopically for the diagnosis of cancer, precancerous conditions, benign tumors
and some infectious conditions.”6
Applicant concedes that “some of these goods and services may involve
adenocytes,” but argues that “to the extent that adenocytes are involved, they
represent a mere subset of cells that are implicated.”7 As Applicant characterizes
the term in its Reply Brief,8 “ADENOCYTE does not convey any information other

4 5 TTABVUE 9.
5 Id.
6 Id.
7 7 TTABVUE 6 (Applicant’s Brief).
8 Applicant’s Reply Brief does not comply with the requirement for double-spacing, but we
have considered it, regardless. See 37 C.F.R. § 2.126(a)(1); TBMP § 1203.01 (2019).
Serial No. 87900765
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than an umbrella term for a class of cells.”9 Applicant asserts, without evidentiary
support, that “a clinician would not refer to the cells connected with Applicant’s
services as adenocytes,” because “[a]denocyte refers to a broad class of cells – and
not to any particularized cells.”10 Applicant correctly notes that the record includes
no evidence of others using ADENOCYTE “in connection with medical devices or
medical services,”11 and Applicant submitted USPTO TESS search results for
“adenocyte,” reflecting Applicant’s pending application as the only result.12 Finally,
Applicant emphasizes that doubt as to whether ADENOCYTE crosses the line from
suggestive to descriptive should be resolved in its favor.
B. Analysis
We find that ADENOCYTE merely describes a feature of Applicant’s medical
and diagnostic devices and Applicant’s medical and scientific laboratory services. As
Applicant has acknowledged, adenocytes constitute at least some of the cells
involved in the identified goods and services, which focus on the cytopathologic
examination of cells to diagnose cancer. In fact, Applicant’s identification in this
intent-to-use application leaves open the possibility that the goods and services
could pertain to the cytopathologic examination of adenocytes in particular, which,
as a type of cell, would be encompassed by the broader language in the
identification referring to “cells”. In fact, Applicant’s goods and services involve

9 10 TTABUVE 2 (Applicant’s Reply Brief).
10 Id. at 7.
11 Id.
12 February 27, 2019 Response to Office Action at 10-11.
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diagnosing cancer by examining cells, and the record shows a type of cancer relating
specifically to such cells -- adenocystic carcinoma, also known as adenoid cystic
carcinoma. Accordingly, the proposed mark would immediately and directly convey
to Applicant’s consumers in the medical and scientific fields that the cytopathologic
examination of cells on which Applicant’s goods and service focus is or may be
performed on adenocytes.
As to Applicant’s argument that on the one hand, “adenocyte” refers to a mere
subset of the cells implicated by its goods and services, and on the other hand that it
refers to a broad class of cells, “the mark need not recite each feature of the relevant
goods or services in detail to be descriptive.” In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). So where, as here, the
proposed mark describes some but not all of the features of Applicant’s goods and
services, this nevertheless suffices to render the mark merely descriptive.
We have considered the absence of evidence of third-party use of this term in
reference to the identified goods and services, as well as Applicant’s search result
evidence regarding the trademark register. However, the fact that Applicant may be
the first and only user of the term for such goods and services does not obviate a
mere descriptiveness refusal. “Being ‘the first and only one to adopt and use the
mark sought to be registered does not prove that the mark is not descriptive.’” In re
The Swatch Group Mgmt. Servs. AG, 110 USPQ2d 1751, 1761 n.50 (TTAB 2014)
(quoting In re Bailey Meter Co., 102 F.2d 843, 41 USPQ 275, 276 (CCPA 1939)); see
also In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983). In
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In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993), for example, the Board
relied on dictionary definitions and newspaper excerpts to affirm a descriptiveness
refusal even in the absence of third-party use evidence, noting “that even if
applicant has been the first and/or, unlike its competitors, is presently the only user
of the term ‘LIGHTWEIGHTS’ in connection with shoes, such fact cannot alter the
merely descriptive significance of the term. [Internal citations omitted]. Such fact,
in short, is simply not dispositive where, as here, the term ‘LIGHTWEIGHTS’
unequivocally projects a merely descriptive connotation that applicant's shoes are of
less than average weight. [Internal citation omitted].”
Decision: We affirm the refusal to register the proposed mark on the ground
that it is merely descriptive of Applicant’s goods and services under Trademark Act
Section 2(e)(1).