BioArray Solutions Ltd.

Trademark Trial and Appeal Board

Jun 4, 2008

No. 78908764 (T.T.A.B. Jun. 4, 2008)

Mailed: June 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re BioArray Solutions Ltd.
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Serial No. 78908764
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George B. Snyder, of Kramer Levin Naftalis & Frankel LLP for
BioArray Solutions Ltd.

Barney L. Charlon, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
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Before Quinn, Hairston and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark Judge:

Applicant, BioArray Solutions Ltd., filed an application to
register its proposed mark “BEADCHIP” in standard character
format on the Supplemental Register for goods ultimately
identified as: “single or multiple randomly assembled microbead
arrays for use in medical research and scientific applications;
kits for arrays and assemblies comprising nucleotide probes or
proteins attached to microbeads for use in medical research and
scientific applications” in International Class 1, and “single
or multiple randomly assembled microbead arrays for use in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78908764
2
diagnostic applications; kits for arrays and assemblies
comprising nucleotide probes attached to microbeads for use in
diagnostic applications” in International Class 5.1
The trademark examining attorney refused registration under
Trademark Act Section 23(c), 15 U.S.C. §1091(c), on the ground
that the mark is generic and incapable of registration.
Applicant has appealed from the refusal. Both applicant and the
examining attorney have submitted briefs. After careful
consideration of all of the arguments and evidence of record, we
affirm the refusal to register.
Genericness
The test for determining whether a mark is generic involves
a two-step inquiry. First, what is the genus (category or
class) of goods or services at issue? Second, is the term
sought to be registered understood by the relevant public
primarily to refer to that genus (category or class) of goods or
services? See H. Marvin Ginn Corporation v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986).
The Office has the burden of proving genericness by "clear
evidence" of the public's understanding thereof. In re Merrill

1 Application Serial No. 78908764; filed June 15, 2006; alleging a date
of first use and first use in commerce for both International Classes
on December 15, 2003.

Serial No. 78908764
3
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
1. The genus of applicant's goods and
the relevant public for the goods.

The genus of goods is the wording used in the recitation,
“single or multiple randomly assembled microbead arrays for use
in medical research and scientific applications; kits for arrays
and assemblies comprising nucleotide probes or proteins attached
to microbeads for use in medical research and scientific
applications”; and “single or multiple randomly assembled
microbead arrays for use in diagnostic applications; kits for
arrays and assemblies comprising nucleotide probes attached to
microbeads for use in diagnostic applications.” More broadly,
the genus of applicant’s goods may be identified as a particular
type of “microarray technology.”
2. The meaning of “beadchip” to the relevant public.
Evidence of the relevant public's understanding of a term
may be obtained from any competent source including consumer
surveys, dictionary definitions, newspapers and other
publications. In re Northland Aluminum Products, Inc., 777 F.2d
1556, 227 USPQ 961, 963 (Fed. Cir. 1985). The examining
attorney has submitted three types of evidence to demonstrate
use of the term “beadchip” as a generic term for a particular
type of “microarray technology” as identified in the
Serial No. 78908764
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application. First, the examining attorney submitted patents
and patent applications by various parties showing generic use
of the term “beadchip” to identify applicant’s goods. Second,
the examining attorney submitted online research database
results for various parties also showing generic use of the term
“beadchip” to identify applicant’s goods. Finally, the examining
attorney submitted a glossary definition showing that the term
“beadchip” is used to generically identify applicant’s goods.
To counter the examining attorney’s assertion of
genericness, applicant submitted arguments to refute the
examining attorney’s evidence. Applicant further submitted its
own evidence to show both its own use of the term “BEADCHIP” as
a purported mark, and recognition by third parties of
applicant’s purported rights in “BEADCHIP” as a mark. We have
considered all the arguments and evidence of record bearing on
consumer perception of “beadchip.”
a) Patents and patent applications showing generic use
of the term “beadchip” to identify applicant’s
goods.

The examining attorney submitted evidence of patents and
patent applications showing generic use of the term “beadchip”
in connection with applicant’s identified goods. Several of the
references are from third parties apparently unrelated to
applicant. Excerpts from the third-party patent and patent
Serial No. 78908764
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application cites containing generic use of the term “beadchip”
to identify applicant’s goods are as follows:
U.S. Patent Registration No. 7164533, assigned
to CyVera Corporation, entitled “Hybrid random
bead/chip based microarray,” and making several
additional generic references to this genus of
microarray technology.

Patent Application No. 20060008821, which
relates to the analysis of peptides, proteins,
DNA and RNA, including the following references
in the preamble: “Within an inside of a bead
chip forming a reactor flow pass therein,
rinsing liquid flow passes are also provided in
one body” and “The bead chip is made of a PDMS
(Polydimethylsiloxane: (C2H6SIO)n);” and
including the following reference in paragraph
[0008] of the Background of the Invention:
“However, for applying such the bead-chip array
apparatus into the inspection apparatus, there
is a demand of further increasing the
efficiency of reaction, so as to shorten a
measuring time.”

Patent Application No. 20060275891 including
the following reference in the preamble: “When
detecting fluorescence of a bead chip array,
reflected light from a bead is detected at the
same time, so as to recognize the bead
position.

However, most troubling to applicant’s argument of
nongenericness is use by applicant itself of the term “beadchip”
as a generic term in its own patent application:2

Patent Application No. 20040002073, which
relates to methods and processes for the
identification of polymorphic gene expression,

2 Two of the listed inventors have been identified by applicant as key
employees working on beadchip technology.
Serial No. 78908764
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includes the following reference at [0256]:
“The composition of bead chip containing 26 CF
mutations is provided below.”

In response to this evidence by the examining attorney,
applicant stated that applicant was not aware “as far as
applicant can see” of having used the term ‘beadchip’ in this
patent application.” (Appl’s Brief at 6) Notably, applicant
does use the term “beadchip” in this application, but not in a
trademark fashion. Rather, applicant includes “beadchip” as a
generic identification of a particular type of “microarray
technology.”
b) Research databases and publications showing generic
use of the term “beadchip” to identify applicant’s
goods.

The examining attorney submitted evidence of research
databases and publications showing generic use of the term
“beadchip” to identify applicant’s goods. Excerpts are as
follows:
The University of Washington’s L2L Microarray
Analysis Tool is a library of microarrays used
in genetic experiments. It refers to various
microarry technologies from different companies,
including “Whole genome bead chips for analyzing
6 samples simultaneously” and “Bead chips that
permit analysis of 8 samples for characterized
RefSeq transcripts,” from Illumina Inc.

The Life Sciences Conference–Expo webpage
includes an abstract regarding testing begun in
2005 by The Center for Inherited Disease
Research of a database management system for an
Illumina Inc. platform, in which “all stages of
processing, from DNA plate through association
Serial No. 78908764
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to a beadchip, while recording reagent lot
numbers,” are tracked, and in which “[r]igorous
data validation ensures that reagents scanned
are valid for each phase and that each plate or
beadchip scanned is ready for processing in the
phase being recorded.”

The January 2004 article from Drug Discovery &
Development reports on the introduction by
Illumina Inc. of “two new Sentrix BeadChips for
whole-genome expression profiling of multiple
samples on a single chip” and that “[t]he first
BeadChip holds six whole-genome human samples on
one chip” while “[t]he second BeadChip product
analyzes eight samples.”

The Gene Expression Omnibus of the National
Center for Biotechnology Information (NCBI), a
division of the National Library of Medicine at
the National Institutes of Health, provides a
list of microarray studies, including several
involving a “16-sample beadchip.”

c) Glossary definition showing that the term
“beadchip” is used to generically identify
applicant’s goods.

The examining attorney submitted evidence of a glossary
definition showing that the term “beadchip” is used to
generically identify applicant’s goods, as follows:
The glossary of genomic terms provided by
Cambridge Healthtech Institute includes under
the sub-heading “Microarrays glossary” . . .
generic use of the terms “bead arrays, bead
chips and bead microarrays.”

Applicant argues that these three categories of evidence
presented by the examining attorney to show genericness are not
compelling because either 1) the term “beadchip” is used as an
adjective rather than a noun for which applicant seeks
Serial No. 78908764
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registration; 2) several instances of the use of the term
“beadchip” as cited by the examining attorney either show “bead
chip” with a space, or “bead/chip” with a forward slash; 3) the
term “beadchip” is used by a rival company, Illumina, and
therefore is being used in a subversive manner to undermine
applicant’s purported trademark rights; 4) the term “beadchip”
is used by third parties merely parroting rival company,
Illumina, and therefore only adds to Illumina’s subversive
tactics; 5) the term “beadchip” is used without context (in the
glossary definition); or 6) the submissions by the examining
attorney are duplicative. To further its argument, applicant
presented its own evidence as follows:
d) Use by applicant of “BEADCHIP” as a purported mark.
Applicant argues that it uses the term “beadchip” as a
mark, and that therefore the term should not be considered
generic. See In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807 (Fed. Cir. 2001). Applicant submitted
several examples of its purported use of “BEADCHIP” as a mark,
including two trade journal articles that discuss applicant’s
use of the “beadchip” technology. In support of its argument
that the trade journal publications evidence its nongeneric use
as a mark, applicant cites the case of Plyboo America Inc. v.
Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999). However, Plyboo
presented quite a different factual scenario. In Plyboo, the
Serial No. 78908764
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applicant submitted its trade journal publications as evidence
of its use of the proposed mark. The applicant in Plyboo
capitalized its proposed mark and placed it in quotations. The
Board found however that the Plyboo applicant’s capitalization
or putting into quotations of the purported mark was neutral,
and “arguably as consistent with descriptive or generic use as
it is with trademark use.” Id. at 1638. The weight that the
Board accorded the trade-journal evidence in Plyboo was due
instead to the definition that applicant provided with each use
of the proposed mark in its articles. In particular, the Plyboo
applicant followed use of the proposed mark with a description
of the identified goods. Id.
Applicant here capitalized “beadchip” in its articles, but
tellingly did not anywhere define the term. Instead, applicant
used the term “beadchip” throughout its articles in a generic
fashion, showing that applicant expected its readers to already
be aware of the common definition of “beadchip” as a
technological term rather than a proprietary mark. Furthermore,
applicant’s intent in capitalizing the mark in its trade journal
articles is ambiguous and not overtly consistent with use as a
mark, since rather than capitalizing all of the letters, or even
just the first letter, applicant capitalized both the “B” and
the “C,” as follows: “BeadChip.” Accordingly, this case must be
distinguished from the scenario presented in Plyboo.
Serial No. 78908764
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e) Recognition by third parties of applicant’s
purported rights in “BEADCHIP” as a mark.

To demonstrate its argument that third parties have
recognized its rights in its proposed “BEADCHIP” mark, applicant
submitted correspondence from a competitor, Illumina, and from
the publisher of a trade journal, Transfusion, as well as an
erratum published by Transfusion. As brief background,
applicant published two articles with Transfusion, one in 2005
and one in 2007. In the 2005 article, Transfusion apparently
misattributed the source of applicant’s use of the beadchip
technology to applicant’s rival, Illumina, by showing the
following in the articles: “BeadChip (Illumina)”. Both
applicant and Illumina took issue with this mischaracterization.
Illumina was concerned that it would lead readers to
believe that Illumina had undertaken the beadchip technology
cited in the article. Accordingly, counsel for Illumina sent a
letter to applicant citing the mistake. Apparently believing
that the error was intentional on the part of applicant,
Illumina’s counsel stated: “we insist that you refrain from
associating your company with our client.” Although applicant
argues that Illumina’s letter indicates a belief of applicant’s
rights in the proposed “BEADCHIP” mark, we read it as simply
asking applicant not to misattribute the source of the beadchip
work discussed in the article. Our interpretation is supported
by two particular pieces of evidence. First, other use of
Serial No. 78908764
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parentheticals in the articles show that they refer to the
source of where work was done, and not to the source of a
purported mark. An example is evidenced on page 737 of the 2007
article, with the following quote: “The bar code on each blood
tube (=donor ID) was scanned with a sample entry module provided
as part of the control software for the array imaging system
(BioArray Solutions).” Clearly this parenthetical does not
intend to show applicant’s purported rights in a mark for the
term “control software for the array imaging system.” Rather,
it shows that applicant undertook the scanning cited in that
sentence. Second, the letter from counsel for Illumina goes on
to assert in connection with applicant’s pending trademark
application: “our client maintains that the word “beadchip” in
any form should be free for all in the industry to use in
connection with bead-based arrays and assemblies, and that no
one party should monopolize such term by obtaining federal,
state or international trademark rights.” Accordingly, we do
not view this letter as in any way supporting applicant’s
argument of third-party recognition of its purported trademark
rights.
Meanwhile, applicant was also upset by the publisher’s
error attributing its beadchip work to applicant’s rival and
requested an erratum by the publisher, which was duly granted.
After the publication of its 2007 article in Transfusion,
Serial No. 78908764
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applicant again took issue with an alleged mistake by the
publisher over the characterization of the term “beadchip” in
the article, this time since the publisher had omitted the TM
symbol that applicant wanted the publisher to include alongside
the term. Therefore, applicant asked the publisher to issue a
correction. The publisher did so, but not for the reason
applicant claims. In particular, the publisher specifically
took issue with applicant’s claim of ownership rights in the
purported “BEADCHIP” mark, citing in an email message to
applicant, “the numerous other users” of the term beadchip to
identify this genus of goods.
Ultimately, under threat from applicant, the publisher did
issue a corrected version of the 2007 article including the
following statement: “BioArray Solutions Ltd., Warren, New
Jersey, uses ‘BeadChip’ as its trademark.” Given the
circumstances of this erratum by the publisher and in light of
the publisher’s concurrent comments to applicant, we do not view
it as an acknowledgement of the publisher’s belief of
applicant’s rights in the proposed “BEADCHIP” mark. Indeed,
even if this were viewed as an acknowledgement of trademark
rights by the publisher, one isolated instance is outweighed by
the remainder of the evidence showing generic use.
In sum, we find applicant’s arguments and evidence
regarding the nongenericness of the proposed “BEADCHIP” mark to
Serial No. 78908764
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be unconvincing. We also find applicant’s protests against the
probative value of the examining attorney’s submitted evidence
to be equally unconvincing. The term “beadchip” has a
particular, generic meaning for microarray technology. See In
re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999); Dial-A-Mattress, 57 USPQ2d at 1810. This is
evident from the particular technical meaning attested to both
by applicant (in its recitation of goods) and by the examining
attorney (via evidence of the relevant public’s understanding of
the word). That some have used the word as an adjective or with
a space or forward slash is irrelevant since they have used it
to mean the same thing. Applicant actually presents the best
evidence of this, since applicant itself has repeatedly used the
term “beadchip” as an adjective in its trade journal articles
(“’BeadChip’ array; “BeadChip analyses”; “BeadChip panel”;
“BeadChip format”), belying applicant’s argument that such use
is different or that it is “demonstrative of the author’s
presumed lack of familiarity with ‘beadchip’ as a common noun.”
(Appl’s Brief at 8).
The Board has held that adjectives, not just nouns, can be
deemed to be generic. Adjectives are generic if they name a key
characteristic or feature of the goods or services. In re
Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998)
(Applicant's proposed mark “ATTIC” did not fall within the
Serial No. 78908764
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classic case of a generic noun, but rather was a generic
adjective; nonetheless the Board held that because the term
“attic” “directly names the most important or central aspect or
purpose of applicant's goods, that the sprinklers are used in
attics, this term is generic and should be freely available for
use by competitors”). See also In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985)
(“BUNDT” for coffee cake held generic); In re Sun Oil Co., 426
F.2d 401, 165 USPQ 718 (CCPA 1970) (“CUSTOMBLENDED” for gasoline
held generic); In re Helena Rubenstein, Inc., 410 F.2d 438, 161
USPQ 606 (CCPA 1969) (PASTUERIZED for face cream held generic);
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991) (“MULTI-
VIS” for multiple viscosity motor oil held generic). Thus, it
is irrelevant that the term “beadchip” is sometimes used as an
adjective, since it is still being used in a generic manner to
refer to this genus of microarray technology.
Meanwhile, applicant’s attempt to discount the evidence of
use of the “beadchip” term by its rival Illumina is not
convincing. Clearly, Illumina has shown in its letter to
applicant that it believes the term “beadchip” to be generic.
That Illumina also uses it that way merely follows its own
assertion. That third parties also use the term “beadchip”
generically shows Illumina to be correct.
Serial No. 78908764
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Applicant’s protest as to the probative value of the
glossary definition taken out of context is duly noted.
However, the glossary definition simply adds to the record and
to the use by applicant itself, both in its own patent
application, and in its trade journal articles, of the term
“beadchip” as a generic identification of the goods in this
genus.
Upon full consideration of all of the evidence in the
record, we simply cannot conclude that this is a “mixed record”
as alleged by applicant. Rather, we are convinced by the "clear
evidence" of the public's understanding of the term “beadchip”
as generic for the genus of goods for which applicant seeks to
register the proposed mark. Merrill Lynch, Pierce, Fenner &
Smith, Inc., 4 USPQ2d at 1143. We find that the proposed mark
“beadchip” is incapable of distinguishing applicant’s services,
and that it therefore is not registrable on the Supplemental
Register.
Decision: The refusal to register is affirmed.