Biovector Thera-peutics, S. A.

Trademark Trial and Appeal Board

Nov 15, 2000

No. 75339348 (T.T.A.B. Nov. 15, 2000)

Paper No. 13
TLW
11/15/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Biovector Therapeutics, S.A.
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Serial No. 75/339,348
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Thomas D. Drescher of Wilson Sonsini Goodrich & Rosati for
Biovector Therapeutics, S.A.
Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas Vlcek, Managing Attorney).
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Before Hanak, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Biovector Therapeutics, S.A. (applicant) seeks to
register BIOVECTOR in typed drawing form for the goods and
services listed below. The intent-to-use application was
filed on August 12, 1997.
Class 5
Pharmaceutical preparations, namely, drug delivery systems,
drug carriers, pharmaceutical excipients, drug adjuvants,
drug activators and drug penetration enhancers; and
pharmaceutical preparations used for: neurology, pain,
cancer, immunotherapy, vaccines, namely, DNA vaccines,
autoimmune disease, hormonotherapy, endocrinology, anti-
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/339,348
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infectious, cardiology, deficiency disease, rheumatology,
allergy, otorhino-laryngology, pneumology, ophthalmology,
gene therapy and diagnostics;
Class 42
Pharmaceutical research and development services for
others.
The Examining Attorney refused registration on
multiple grounds. When the refusal to register was made
final, applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing.
There were two Office actions in this proceeding. In
both actions the Examining Attorney alleged that the mark
BIOVECTOR was both merely descriptive and generic for
applicant’s goods and services. Indeed, in the first
office action, the Examining Attorney informed applicant
that because applicant’s mark was generic, the Examining
Attorney could not “recommend an amendment to proceed under
Trademark Act Section 2(f).” In essence, the Examining
Attorney advised applicant that it would be pointless for
applicant to present evidence in an effort to demonstrate
that its mark had acquired distinctiveness in the sense
that the mark now served to indicate goods and services
coming solely from applicant.
In addition, in both Office actions the Examining
Attorney asked applicant to “submit any informative
Ser No. 75/339,348
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literature regarding all the goods and services for which
applicant has asserted a bona fide intent to use the mark.”
In both Office actions, the Examining Attorney made
reference to Trademark Rule 2.61(b).
However, in his appeal brief, the Examining Attorney
never contended that applicant’s mark was generic for
applicant’s goods or services. Rather, the Examining
Attorney contended simply that said mark was merely
descriptive of applicant’s goods and services. In
addition, in his appeal brief, the Examining Attorney made
clear for the first time that applicant’s failure to
provide informative literature regarding its goods and
services was a separate ground for refusal.
In view of the foregoing, we find that in his appeal
brief, the Examining Attorney has now abandoned his
contention that applicant’s mark is generic as applied to
applicant’s goods and services. Moreover, we note that, in
any event, the Examining Attorney has not established that
applicant’s mark BIOVECTOR is generic for applicant’s goods
and services. It is beyond dispute that “the burden of
showing that a proposed trademark [or service mark] is
generic remains with the Patent and Trademark Office.” In
re Merrill Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987). Moreover, it is incumbent upon the Examining
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Attorney to make a “substantial showing … that the matter
is in fact generic.” Merrill Lynch, 4 USPQ2d at 1143.
Indeed, this substantial showing “must be based on clear
evidence of generic use.” Merrill Lynch, 4 USPQ2d at 1143.
Thus, “a strong showing is required when the Office seeks
to establish that a term is generic.” In re K-T Zoe
Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed.
Cir. 1994). Moreover, any doubt whatsoever on the issue of
genericness must be resolved in favor of the applicant. In
re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
As the Examining Attorney concedes, the term BIOVECTOR
is not listed in any dictionary. The only evidence the
Examining Attorney has made of record in support of his
claim of genericness are 32 excerpts of stories appearing
in printed publications and wire service releases. In
virtually all of these stories, the term BIOVECTOR is used
to refer to applicant’s products and company. In only two
or three of the stories is the term BIOVECTOR used to refer
to products not associated with applicant. In sum, the
Examining Attorney’s evidence simply does not constitute
the required strong, substantial showing that applicant’s
mark BIOVECTOR is indeed generic as applied to applicant’s
goods and services.
Ser No. 75/339,348
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However, the aforementioned evidence may be sufficient
to establish that applicant’s mark BIOVECTOR is merely
descriptive of applicant’s good and /or services. However,
as previously noted, in Office action number one the
Examining Attorney strongly discouraged applicant from
attempting to establish that even if its mark was merely
descriptive, that nevertheless it had acquired
distinctiveness pursuant to Section 2(f). According,
because the Examining Attorney has now abandoned his claim
that the mark is generic and because in any event the
evidence does not establish that the mark is generic, we
find it prudent to remand this file to the Examining
Attorney to afford applicant, after it files its amendment
to allege use, the opportunity, if it so desires, to argue
in the alternative and submit Section 2(f) evidence in a
effort to establish that its mark has acquired
distinctiveness, assuming for the sake of argument that the
mark is indeed merely descriptive.
Finally, as for the refusal on the basis that
applicant has not furnished literature describing its good
or services, we reverse. In neither of the two Office
actions did the Examining Attorney make it clear that the
failure to comply with this request would constitute a
separate basis for a refusal to register. It was only in
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his brief that the Examining Attorney clearly articulated
the fact that applicant’s failure to provide descriptive
literature was in and of itself a separate ground for
refusal. There is no dispute that the failure to comply
with such a request can constitute a separate ground of
refusal. In re Babies Beat Inc., 13 USPQ2d 1729, 1731
(TTAB 1990). However, this separate ground of refusal
should be made clear during the examination process and
should not be made clear for the first time in the
Examining Attorney’s brief. In any event, applicant has
now attached to its reply brief a substantial body of
literature describing its BIOVECTOR goods and services.
Decision: The refusal to register on the basis that
applicant failed to provide descriptive literature for its
BIOVECTOR goods and services is reversed. The refusal to
register on the basis that applicant’s mark is generic for
applicant’s goods and services is considered withdrawn, and
in the alternative, is reversed for failure make the
required strong, substantial showing that applicant’s mark
is indeed generic. As for the mere descriptiveness
refusal, this file is returned to Examining Attorney with
the instruction that he issue a third Office action
affording applicant the opportunity to file an amendment to
allege use and any evidence that applicant wishes to submit
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in an effort to prove that pursuant to Section 2(f) of the
Trademark Act, applicant’s mark, if considered to be merely
descriptive, has acquired distinctiveness indicating goods
and services coming solely from applicant. If applicant
submits Section 2(f) evidence and this persuades the
Examining Attorney that the mark has acquired
distinctiveness, then the mark will be passed to
publication. If applicant responds but declines to submit
Section 2(f) evidence or if the Examining Attorney deems
such evidence to be insufficient, then the Examining
Attorney will issue a final Office action refusing
registration and the file will, in due course, be returned
to this board.
E. W. Hanak
T. J. Quinn
H. R. Wendel
Administrative
Trademark Judges,
Trademark Trial and
Appeal Board
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