Advanced Solutions Life Sciences, LLC

Trademark Trial and Appeal Board

May 22, 2020

87917274 (T.T.A.B. May. 22, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 22, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Advanced Solutions Life Sciences, LLC
_____

Serial No. 87917274
_____

Karen Kreider Gaunt of Dinsmore & Shohl LLP,
for Advanced Solutions Life Sciences, LLC.

John Yard, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Kuhlke, Adlin and Lebow,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Advanced Solutions Life Sciences, LLC (“Applicant”) seeks registration on the
Principal Register of the standard character mark BIOASSEMBLY for services
ultimately identified as “Biomanufacturing for others, namely, manufacturing of
biological tissue and organs using biological matter in the manufacturing process,”
in International Class 40.1

1 Application Serial No. 87917274, filed on May 11, 2018, based upon Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b). The original identification read as follows: “Manufacturing process
by which biology is assembled to create living constructs such as organs, tissue constructs.”
Serial No. 87917274
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The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground that BIOASSEMBLY is merely descriptive of Applicant’s
services under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). In
addition, the Examining Attorney refused registration for Applicant’s failure to
comply with a request for information pursuant to Trademark Rule 2.61(b), 37
C.F.R. § 2.61(b), regarding the nature of Applicant’s services in order to permit
proper examination of the application.
When the refusals were made final, Applicant appealed and requested
reconsideration. The Examining Attorney denied the request for reconsideration
and the appeal was resumed. The Examining Attorney and Applicant filed briefs.
We affirm the refusal to register on both grounds.
I. Trademark Rule 2.61(b) Requirement for Information
Trademark Rule 2.61(b) provides that “[t]he Office may require the applicant to
furnish such information ... as may be reasonably necessary to the proper
examination of the application.” The underlying purpose of the rule is to encourage
high-quality, efficient examination. It recognizes that an applicant is often in the
best position to provide the facts and information that the USPTO needs to properly
examine an application and assess registrability of the applicant’s mark.
TRADEMARK MANUAL OF EXAMINING PROCEDURE § 814 (Oct. 2018)
(“TMEP”). According to the U.S. Court of Appeals for the Federal Circuit, the
wording “reasonably necessary” in this context should be interpreted broadly, and
applies to information that is “relevant to” registrability or “reasonably calculated”
Serial No. 87917274
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to lead to such relevant information. Cf. Star Fruits S.N.C. v. United States, 393
F.3d 1277, 73 USPQ2d 1409, 1414 (Fed. Cir. 2005) (discussing Patent Rule
1.105(a)(1), which is the patent counterpart of Trademark Rule 2.61(b)).
“Applicants are expected to provide direct and complete responses to a
requirement for information. Examining attorneys are not expected to infer direct
answers from responses that provide mere hints as to the answer.” In re ADCO
Industries-Technologies, L.P., 2020 USPQ2d 53786 *2 (TTAB 2020); see also In re
AOP LLC, 107 USPQ2d 1644, 1651 (TTAB 2013). Noncompliance is a proper ground
for refusing registration. In re AOP, 107 USPQ2d at 1651; see also In re
Cheezwhse.com Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67
USPQ2d 1699, 1701 (TTAB 2003); TMEP § 814.
In the Office Actions, the Examining Attorney required Applicant to “explain
whether the wording in the mark ‘BIOASSEMBLY’ has any significance in the
biofabrication trade or industry or as applied to applicant’s goods and/or services, or
if such wording is a ‘term of art’ within applicant’s industry.” June 30, 2018 Office
Action, TSDR 1.2 In addition the Examining Attorney required Applicant to:
[S]ubmit additional information about applicant’s
services. The requested information should include fact
sheets, brochures, and/or advertisements. If these
materials are unavailable, applicant should submit
similar documentation for services of the same type,
explaining how its own services will differ. If the services
feature new technology and no information regarding
competing services is available, applicant must provide a
detailed factual description of the services. Factual

2 All references to the application record are to the USPTO’s Trademark Status and
Document Retrieval (TSDR) system.
Serial No. 87917274
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information about the services must clearly indicate what
the services are and how they are rendered, their salient
features, and their prospective customers and channels of
trade.
Id. The Examining Attorney advised Applicant that the information was necessary
to permit proper examination of the application. Id.
Applicant did not provide any of the required information in its December 28,
2018 Response. After the Final Office Action issued, Applicant provided the
following response in its Request for Reconsideration:
With Regard to the Examiner’s request for information
about applicant’s services, Applicant states that it does
not have any relevant information to provide at this time.
Applicant filed the present application on an intent-to-use
basis, and the actual services are still in the research and
development phase, thus, the materials that the
Examiner is seeking are not readily available.
August 5, 2019 Request for Recon., TSDR 8.
We find that the Examining Attorney’s information requirements were
reasonably necessary to the proper examination of the applications, as stated in
Trademark Rule 2.61(b). The information is directly relevant to whether the
proposed mark is merely descriptive of the identified biomanufacturing services.
In its brief, Applicant asserts that it “believes that the nature of Applicant’s
Services is readily apparent from the identification services in the application itself,
and that no further information should be necessary for proper examination.” App.
Brief, 23 TTABVUE 16.3 Applicant’s response is insufficient. If they are in

3 Citations to the briefs are to TTABVUE, the Board’s online file record.

Serial No. 87917274
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development, there would at least be information about the nature of the services
and how such services would be offered beyond the scant wording in an
identification of services. See In re AOP, 107 USPQ2d at 1651 (affirming Rule
2.61(b) refusal based on evasive response to information requirement that was
relevant to potential descriptiveness and misdescriptiveness refusals). Applicant
could, at a minimum, explain how a biomanufacturing process that assembles
biological material works -- what is generally involved. Applicant goes on to state:
While the Examining Attorney appears to have assumed
that Applicant’s patent application, filed in 2014, details
the services Applicant intends to provide under the
present mark, his assumption is unwarranted and untrue.
Applicant’s patent application and Applicant’s Services in
the present mark are only related in that they both exist
in the same general field, however, there is no other
factual connection between the claims in Applicant’s
patent application and the services Applicant intends to
provide in the present mark. Applicant filed its
BIOASSEMBLY mark on an intent-to-use basis and the
Applicant’s Services are still being developed.
App. Brief, 23 TTABVUE 17.
The Examining Attorney refutes this characterization of the patent’s relevance:
[T]he [A]pplicant’s assertion that the materials are not
available appears to be contradicted by its ownership of
U.S. Patent No. 9,910,9352, filed in 2014, which provides
in extreme detail the applicant’s planned activities and
means to accomplish them in the field of biological tissue
assembly, and its ownership of U.S. Reg. No. 4969119,
which applicant asserts in its brief is for “goods related to
the technology referenced in the present application”
(Applicant’s appeal brief, page 5). Moreover, assuming
arguendo no information as to these services was directly
available from the applicant itself, clearly others in the
field are engaged in similar services, as the record amply
reflects.
Serial No. 87917274
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Ex. Att. Brief, 25 TTABVUE 14.
We find it hard to believe a patent titled “System and workstation for the
design, fabrication and assembly of bio-material constructs” has “no factual
connection” to the same Applicant’s “Biomanufacturing for others, namely,
manufacturing of biological tissue and organs using biological matter in the
manufacturing process.” If there truly is no connection, Applicant should have at
least detailed why that is so, rather than simply claiming in conclusory fashion that
they are not “directly related.” App. Reply Brief, 26 TTABVUE 2. In addition,
although Applicant may be developing its services, Applicant could still provide
information about the field and these types of services. Importantly, the point of
requesting information is to better understand whether or not the proposed mark is
merely descriptive. As it turns out, the Examining Attorney found much of that
information discussed below.
In view of the above, the refusal to register Applicant’s proposed mark because
Applicant failed to respond sufficiently to the Trademark Rule 2.61(b) final
requirement for information is proper and is affirmed.
Applicant’s failure to comply with the Trademark Rule 2.61(b) requirements is a
sufficient basis, in itself, for affirming the refusal to register Applicant’s proposed
mark. See DTI P’ship, 67 USPQ2d at 1702; In re Joseph Edward Page, 51 USPQ2d
1660, 1665 (TTAB 1999). Nevertheless, for the sake of completeness, we now
address the refusal under Trademark Act Section 2(e)(1).
Serial No. 87917274
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II. Mere Descriptiveness
A mark is deemed to be merely descriptive of services, within the meaning of
Section 2(e)(1), if it immediately conveys information of a quality, feature, function,
or characteristic of them. In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re TriVita, Inc., 783 F.3d 872,
114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a mark is
merely descriptive must be made “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
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). It is not
necessary, in order to find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a “single feature or attribute”
of the goods or services. In re Chamber of Commerce, 102 USPQ2d at 1219; In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
The Examining Attorney asserts that the proposed mark BIOASSEMBLY
“immediately and directly describes a feature of the services, namely, assembly or
manufacturing of biological tissue and organs using biological matter in the
manufacturing process.” Ex. Att. Brief, 25 TTABVUE 8. The Examining Attorney
asserts that the term is descriptive because: (1) “it combines two descriptive terms
to create a descriptive whole which immediately and directly conveys information
Serial No. 87917274
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about the services without creating any commercial impression separate and apart
from its component terms;” and (2) “it is a term of art in the industry denoting the
assembly of biological tissue to create, fabricate or manufacture biological
constructs for medical and other uses.” Id.
In support of his position that the mark combines two descriptive terms in a
manner that does not result in a new commercial impression, the Examining
Attorney relies on the following definitions:
Bio – n. … 2. Biology … adj. … 2. Biological … bio- 1. a
combining form meaning “life” occurring in loanwords
from Greek; on this model, used in the formation of
compound words.4
Assembly – noun … a collection of parts, as of machinery,
put together to form a whole.5
He also relies on a Wiktionary online dictionary entry definition for “bioassembly”
as “the assembly of biological tissue.”6
To support his position that it is a term of art in the industry, he submitted
several scholarly articles and abstracts, a twitter page, and Applicant’s patent, all
using the term “bioassembly” in a descriptive manner. A few examples are
reproduced below with “bioassembly” bolded:
Mekhilary, NV, et al, Automated 3d Bioassembly of
Micro-tissues for Biofabrication of HybridTissue
Engineered Constructs. Biofabriaction, (January 12,
2018) … We describe an automated 3D bioassembly
platform capable of fabricating simple hybrid constructs

4 June 30, 2018 Office Action, TSDR 2 (www.infoplease.com based on the RANDOM HOUSE
UNABRIDGED DICTIONARY (1997)).
5 Id. at 5 (www.wordsmyth.net).
6 February 5, 2019 Office Action, TSDR 2 (https://en.wiktionary.org).
Serial No. 87917274
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via a two-step bottom-up bioassembly strategy, as well
as complex hybrid hierarchical constructs via a multistep
bottom-up bioassembly strategy;7
Vladimir Mironov, The Second International Workshop on
Bioprinting, Biopatterning and Bioassembly. Journal
Entry/Meeting Highlights, Taylor and Francis Online
(November 2005);8
Yubing Zie, et al, Bioassembly of Three-Dimensional
Embryonic Stem Cell-scaffold Complexes using
Compressed Gasses. Biotechnology Progress, Volume
25(2), (March/April 2009);9
Vera Geduric, et al, Layer-by-layer Bioassembly of
Cellularized Polylactic Acid Porous Membranes for Bone
Tissue Engineering. Journal of Material Science (2017) …
Layer-by-Layer (LBL) bioassembly is based on “bottom-
up” approach, which considers assembly of small
cellularized blocks.10;
Cynthia M. Smith, et al, Three-Dimensional
Bioassembly Tool for Generating Viable Tissue-
Engineered Constructs. Tissue Engineering (November
2004) … A direct-write bioassembly system was
designed and fabricated to permit layer-by-layer
placement of cells and extracellular matrix on a variety of
material substrates. … These results indicate the
potential for utilizing a direct-write, three-dimensional
bioassembly tool to create viable, patterned tissue-
engineered constructs;11
Longjun Gu, et al. Bioengineering 3D Microtissues Using
Bioassembly, Cardiovascular Regenerative Medicine
(June 2019). … As one of the mainstream technical routes
in bifabrication, bioassembly has been widely used for

7 Id. at 3 (https://www.ncbi.nlm.nig.gov). A more extensive excerpt of this article is found
attached to the October 5, 2019 Reconsideration Letter, TSDR at 3-34
(https://iopscience.iop.org) where “bioassembly” is used throughout as a term of art.
8 Id. at 5 (https://www.tandfonline.com).
9 Id. at 9 (https://deepblue.lib.umich.edu).
10 Id. at 11 (https://www.semanticscholar.org).
11 October 5, 2019 Reconsideration Letter, TSDR 35-36 (https://www.liebertpub.com).
Serial No. 87917274
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generating 3D cardiac microtissues. In this chapter,
emerging bioassembly techniques used for constructing
cardiac microtissues are summarized, according to
external or internal driving forces for cell manipulation,
including acoustic force, magnetic force, gravity, and
molecular recognition. … The definition of biofabrication
is the generation of defined biological products from living
cells, biomaterials, bioactive molecules, and extracellular
matrix (ECM) by one of two distinct strategies:
bioprinting and bioassembly. … Bioassembly has
recently emerged as a well-accepted technical alternative
to biofabrication. The first clear definition of bioassembly
was provided by the International Society for
Biofabrication in 2016. Bioassembly represents the
manufacture of hierarchical structures with defined 2D or
3D organization using the automatic assembly of
preformed cell-containing fabrication units, … Compared
with bioprinting, a large number of cells can be assembled
into a closely packed cytoarchitecture in a short time by
bioassembly. … These advantages make bioassembly an
optimal choice for constructing cardiac microtissues. Over
the past decade, several emerging bioassembly
techniques have been developed for bioengineering
cardiac microtissues … .;12
Wenkun Zhu, et al, Bioassembly of fungal
hyphae/carbon nanotubes composite as versatile
adsorbent for water pollution control. Chemical
Engineering Journal. Volume 339 (May 2018);13
Rodrigo A. Rezende, Nanotechnological Strategies for
Biofabrication of Human Organs. Journal of
Nanotechnology. Volume 2012 (2012) … Biofabrication
may be defined as an application principle of engineering
and information sciences for automated robotic
bioassembly of living 3D human tissue and organs.;14
and
Our latest work on bioassembly is finally out: … on how
microparticles can be designed with different shapes and

12 Id. at 37-58 (https://link.springer.com).
13 Id. at 59-74 (https://www.sciencedirect.com).
14 Id. at 94-104 (https://www.hindawi.com).
Serial No. 87917274
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size and help cellular self-assembly #bifabrication
#bioassembly15
Finally, the Examining Attorney attached Applicant’s patent that includes the
following excerpt with “bioassembly” bolded:
A bioassembly system having a tissue/object modeling
software component fully and seamlessly integrated with
a robotic bioassembly workstation component for the
computer-assisted design, fabrication and assembly of
biological and non-biological constructs. … The disclosure
relates to computer-assisted design of tissue structure
models, robotic fabrication and bioassembly, and a
workstation for the design, fabrication and assembly of
complex biological constructs. The bioassembly system
enables users to design/model, fabricate and/or analyze
complex tissue structures facilitated by novel Tissue
Structure Information Modeling (TSIM) software.16
The Examining Attorney explains that “Applicant’s services are seen to be the
joining or putting together of living tissue to create or assemble a larger biological
whole. Applicant’s own original, indefinite, identification of services ‘manufacturing
process by which biology is assembled to create living constructs such as organs,
tissue constructs’ indicates the descriptiviness of the mark, denoting biological
assembly and/or assembly of biological material.” Ex. Att. Brief, 25 TTABVUE 5
(emphasis added). In other words, assembling biology is Applicant’s manufacturing
process.
The record is clear: BIOASSEMBLY immediately tells consumers that a feature
or purpose of Applicant’s “Biomanufacturing for others, namely, manufacturing of

15 Id. at 105 (https://twitter.com).
16 Id. at 75-93 (http://patft.uspto.gov).
Serial No. 87917274
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biological tissue and organs using biological matter in the manufacturing process,”
is to assemble biological matter.
While we agree that BIOASSEMBLY consists of individual components, the
combination of the prefix “bio” with the word “assembly” does not present a unique,
incongruous or otherwise nondescriptive meaning. Rather, the individual
components of the term BIOASSEMBLY retain their descriptive meaning in
relation to the services and the combination results in a composite that is itself
merely descriptive. See In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB
2009). It immediately and directly conveys that Applicant’s services assemble
biological material.
It is sufficient that a proposed mark merely describe a function or purpose to be,
at minimum, merely descriptive. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-static cloth used for
cleaning computer and television screens). Chamber of Commerce of the U.S., 102
USPQ2d at 1219; see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely descriptive even if it
does not describe the ‘full scope and extent’ of the applicant’s goods or services”)
(citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807,
1812 (Fed. Cir. 2001)).
Applicant argues that the evidence does not show the required degree of
particularity because “the term ‘assembly’ is too broad and is not a common
designation for the manufacturing services listed in Applicant’s services … [and] to
Serial No. 87917274
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the extent that the mark conveys any information about Applicant’s Services, the
information conveyed is vague and lacks the degree of particularity required to find
a mark merely descriptive.” App. Brief, 23 TTABVUE 10. Further, Applicant argues
that because the word “assembly” is so broad it incorporates the “definitions of both
a product (i.e. ‘a collection of parts put together to form a whole’) and a service (i.e.
‘the process of joining things together’) … a congregation (i.e., ‘a group of people
gathered together for a specific purpose’)” and the prefix “bio” is “incapable of
distinguishing which definition of this broad term is referred to by a simple viewing
of Applicant’s Mark.” Id. Applicant concludes that because “the words ‘assembly’
and ‘manufacturing’ are clearly not synonymous for one another based on a review
of their respective definitions, for an observer to arrive at a conclusion about the
nature of Applicant’s services would take more than a modicum of imagination,
thought, or perception, which is highly indicative of suggestiveness.” Id.
Applicant’s argument completely ignores the well-established principle that the
determination of whether a mark is merely descriptive must be made in relation to
the goods or services for which registration is sought, not in the abstract. In re
Chamber of Commerce, 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In
re Bayer, 82 USPQ2d at 1831. This requires consideration of the context in which
the mark is used or intended to be used in connection with those goods/services, and
the possible significance that the mark would have to the average purchaser of the
goods or services in the marketplace. See In re Chamber of Commerce, 102 USPQ2d
at 1219; In re Bayer, 82 USPQ2d at 1831; In re Nett Designs, Inc., 236 F.3d 1339, 57
Serial No. 87917274
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USPQ2d 1564 (Fed. Cir. 2001). Our determination is based on “whether someone
who knows what the goods and services are will understand the mark to convey
information about them.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d
965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018) (quoting DuoProSS Meditech Corp. v.
Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)
(internal quotation omitted)). Moreover, “[t]hat a term may have other meanings in
different contexts is not controlling.” In re Franklin Cnty. Historical Soc’y, 104
USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979)); TMEP §1209.03(e). “It is well settled that so long as any one of
the meanings of a term is descriptive, the term may be considered to be merely
descriptive.” In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1590 (TTAB 2018)
(quoting In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984)).
Applicant argues the evidence is not sufficient to establish mere descriptiveness
because: 1) Applicant’s use of the term “bioassembly” in its patent is not sufficient
to show mere descriptiveness and the patent was filed before the involved
trademark application; 2) the use of “bioassembly” in scholarly articles is after
Applicant’s use of its other mark BIOASSEMBLYBOT and they do not constitute
extensive use by third parties; and 3) Wiktionary is not a reliable source because it
is an anonymously-updated crowd-sourced dictionary with little oversight and no
commonly used dictionary has an entry for “bioassembly.” App. Brief, 23 TTABVUE
12-13.
Serial No. 87917274
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Applicant’s point regarding the probative value of the Wiktionary entry is well
taken, but we need not rely on it in our determination. Moreover, while the several
dictionary searches showing no entry for “bioassembly” submitted by Applicant may
serve to reveal it is a fairly new term of art, they do not undercut the other evidence
submitted by the Examining Attorney.
Applicant’s argument that it used the term “bioassembly” before some of the
scholarly articles does not transform a merely descriptive term into a suggestive
term. The fact that an applicant may be the first to use a term does not make it
nondescriptive. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S.
111, 122 (2004) (trademark law does not countenance someone obtaining “a
complete monopoly on use of a descriptive term simply by grabbing it first”)
(citation omitted); Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397,
398 (CCPA 1960) (“Even novel ways of referring to a product may nonetheless be
merely descriptive.”); In re Bailey Meter Co., 102 F. 2d 843, 41 USPQ 275, 276
(CCPA 1939) (“The fact that appellant may have been the first and only one to
adopt and use the mark sought to be registered does not prove that the mark is not
descriptive . . . .”). We further note that Board precedent has recognized the
probative value of an Applicant’s own descriptive use, even in a patent. In re
Omniome, Inc., 2019 BL 503454 *4 (TTAB 2019) (descriptive usage of terms by
trademark applicant in its patent filings probative of mere descriptiveness).
With regard to the volume of third-party use evidence, we find it is sufficient in
amount to show descriptive use of the term “bioassembly” in the relevant field. In
Serial No. 87917274
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addition, Applicant’s reliance on a “competitive need” test is misplaced. The
examining attorney is not required to prove that others have used the mark at issue
or that they need to use it; the correct test is whether the mark conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514
(TTAB 2016); see also In re Walker Mfg. Co., 359 F. 2d 474, 149 USPQ 528 (CCPA
1966); (“The question . . . is not whether the Board or others may or would utilize
‘CHAMBERED PIPE’ to describe applicant’s goods, but whether this designation
does, in fact, describe such goods. That there are other words which others may
employ to describe or define applicant’s goods does not, in any way, lessen the
descriptive character of the words ‘CHAMBERED PIPE.’ …”) (quoting Board
decision with approval).
Finally, Applicant argues that the Examining Attorney’s position is inconsistent
with the Principal Register that includes five third-party registrations shown below
for marks “featuring the prefix ‘bio’ for highly related goods or services,” as well as
its own registration for BIOASSEMBLYBOT. App. Brief, 23 TTABVUE 13.
Mark Goods and Services Registration No.
BIORESPONSE
RESTORATION
Bio-hazard biological
clean-up services;
Cleaning of carpet,
furniture and drapery;
Crime scene clean-up
services; … Restoration
services in the field of
water, smoke and fire
damage; … Trash clean-
up
5579895
Serial No. 87917274
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Bio-hazard biological
decontamination services;
Mold remediation
services; …
BIORINSE Cleaning, disinfection, and
sterilization of allograft
bone and tissue samples
and of human bone and
tissue to be used for
implantation

Treatment of allograft
bone and tissue samples
and of human bone and
tissue to be used for
surgical implantation
5345217
BIOSWEEP Environmental
remediation services,
namely, treatment of air,
odor and hard and soft
surfaces; Odor
neutralization services
5464051
BIOPATH Environmental
decontamination services,
namely, treatment of soil
to eliminate persistent
organic pollutants and
other harmful
contaminants to restore
indigenous bacteria to pre-
contaminant exposure
state, enabling the
bacteria to metabolize the
contaminants; …

Environmental testing
and inspection services,
namely, evaluating and
testing of contaminated
sites and analyzing
testing data; …
5184658
BIOMODE Distribution services,
namely, delivery of anti-
4325147
Serial No. 87917274
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bacterial, anti-fungal,
anti-insect and anti-
allergy applications for
home, commercial and
personal use

Custom manufacture of
anti-bacterial, anti-fungal,
anti-insect and anti-
allergy applications for
home, commercial and
personal use

As to Applicant’s prior registration for BIOASSEMLYBOT “for goods related to
the technology referenced in the present application,” App. Brief, 23 TTABVUE 6,
we agree with the Examining Attorney that Applicant’s registration “filed in 2013
and approved for publication over 5 years ago, is for a different mark containing
additional elements than the mark at issue and is not for biological fabrication
services but for goods, biological workstations with multiple functions and
components.” Ex. Att. Brief, 25 TTABVUE 11-12. The same may be said for the
third-party registrations cited by Applicant for marks with different terms added to
the prefix “bio” for different types of services. More importantly, third-party
registrations are not conclusive on the question of descriptiveness as each case must
stand on its own merits, and a mark that is merely descriptive must not be
registered on the Principal Register simply because other such marks appear on the
register. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1067 (TTAB
2011). The question of whether a mark is merely descriptive must be determined
Serial No. 87917274
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based on the evidence of record at the time registration is sought. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
This is not a record where there is any doubt that BIOASSEMBLY merely
describes a feature of Applicant’s services that involve assembling biology to create
organs or tissue constructs.

Decision: The refusal to register BIOASSEMBLY as merely descriptive under
Section 2(e)(1) is affirmed.