Cell Thera-peutics, Inc.

Trademark Trial and Appeal Board

Aug 19, 2003

EX (T.T.A.B. Aug. 19, 2003)

THIS DISPOSITION IS CITABLE
AS PRECEDENT OF THE T.T.A.B.
Mailed: August 7, 2003
Designated as a Citable Precedent: August 19, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cell Therapeutics, Inc.
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Serial Nos. 75/313,795 and 75/313,796
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Joanne Ludovici-Lint of McDermott, Will & Emery, for Cell
Therapeutics, Inc.
Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
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Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Cell Therapeutics, Inc. (applicant) seeks to register
on the Supplemental Register CELL THERAPEUTICS, INC. in
typed drawing form for “pharmaceutical preparations,
namely, bio-chemical signaling pathway modulators of non-
living nature, for use in all fields of medicine, medical
research and pharmacology” (Ser. No. 75/313,795) and for
“laboratory research and development services in the field
of biomedical and therapeutic products that affect cellular
Ser. Nos. 75/313,795 and 75/313,796
2
signaling pathways” (Ser. No. 75/313,796). Both intent-to-
use applications were filed on June 24, 1997. In each of
the applications, applicant disclaimed the exclusive right
to use INC.
The Examining Attorney has refused registration in
each of the applications on the basis that applicant’s mark
CELL THERAPEUTICS, INC. is a generic term for applicant’s
goods and services.
When the refusals to register were made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing. Because the two applications involve common
questions of law and fact, they will be decided in this one
decision.
At the outset, our determination will focus upon
whether the phrase CELL THERAPEUTICS is a generic term for
applicant’s goods and services. In this regard, we note
that applicant has never argued that the addition of INC.
would cause its mark in its entirety (CELL THERAPEUTICS,
INC.) to be not generic assuming that it were proven that
CELL THERAPEUTICS was generic for applicant’s goods and
services. See applicant’s briefs pages 15 and 16. See
also In re Packaging Specialists, Inc., 221 USPQ 917, 919
(TTAB 1984) (“The element INC. [is] recognized, in
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3
trademark evaluation, to have no source identifying or
distinguishing capability.”); In re Paint Products Co., 8
USPQ2d 1863, 1866 (TTAB 1988).
Thus, the issue before this Board is whether the
phrase CELL THERAPEUTICS is a generic phrase for
applicant’s goods and services. Because applicant is
seeking to register a phrase and not a single or compound
word, “the Board cannot simply cite [dictionary]
definitions and generic uses of the constituent terms of
the mark … in lieu of conducting an inquiry as to meaning
of the disputed phrase as a whole to hold a mark, or a
phrase within the mark, generic.” In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir.
1999).
In this case, unlike the situation in American
Fertility Society, the Examining Attorney has made of
record significant evidence showing that the entire phrase
“cell therapeutics” is a generic phrase for applicant’s
goods (pharmaceutical preparations for use in all fields of
medicine, medical research and pharmacology) and for
applicant’s services (laboratory research and development
services in the field of therapeutic products that affect
cellular pathways). Hence, we find that the PTO has
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established that said phrase is generic as applied to
applicant’s goods and services.
To begin with, we note that the Examining Attorney has
made of record from Webster’s New Riverside University
Dictionary (1994) definitions of the words “cell” and
“therapeutics” which are, respectively, as follows:
“Biology. The smallest structural unit of an organism that
is capable of independent functioning.” and “Medical.
Treatment of disease.” Thus, based upon these dictionary
definitions and other evidence to be discussed below, a
medical doctor or researcher (the purchaser or user of
applicant’s goods and services) would readily understand
that the phrase “cell therapeutics” is a generic term for
various goods and services that treat cells including
pharmaceutical preparations for use in medicine, medical
research and pharmacology, and for
laboratory research in the field of therapeutic products
that affect cellular signaling pathways.
However, as required by American Fertility Society,
the Examining Attorney’s evidence by no means stops with
mere dictionary definitions of the individual terms “cell”
and “therapeutics.” Quite to the contrary, the Examining
Attorney has made of record a plethora of articles from the
NEXIS database as well as a lesser number of articles from
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the Internet showing that the phrase “cell therapeutics” in
its entirety is routinely used to name medical products and
services that are designed to combat diseases of the cells.
Of the numerous stories making generic use of the
phrase “cell therapeutic,” the following are but a small
sample. In the August 18, 1999 edition of Chemical
Business there appears the following statement: “Osiris has
developed proprietary technology to isolate and greatly
expand adult stem cells for their use as cell therapeutic
products for the regeneration of tissues damaged through
injury, aging or degenerative disease.” The January 7,
1998 edition of Business World contains the following
sentence: “This firm has focused its research on five
principal areas, namely: hypoxic cancer cell therapeutics,
tumor amplified protein expression cancer therapy …” The
September 9, 1999 edition of PR Newswire contains the
following statement: “Doctor Sznol will oversee the
company’s chemical program for Promycin, an anticancer cell
therapeutic that targets oxygen-depleted tumor cells …”
The August 18, 1999 edition of Chemical Week contains the
following sentences: “Cambrex has made a $5 million equity
investment in cell therapeutics company Osiris Therapeutics
(Baltimore) as part of a deal to develop new stem-cell
products and culture media. Cambrex [has a] presence in
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high-growth stem-cell research and [is in] a unique
position in the production of future adult stem-cell
therapeutic products.” The Boston Herald of June 16, 1999
contains the following statement: “There has been a very
favorable response moving forward with human embryo stem-
cells in the development of cell therapeutics.” The
November 26, 1998 edition of Chemical Business contains the
following sentence: “Imrx’s majority owned subsidiary
Nexell Therapeutics, Inc. is focused on cell therapeutics
for cancer and other life threatening diseases.”
As noted, these are but a few of the plethora of
stories made of record by the Examining Attorney from the
NEXIS database and, to a lesser extent, the Internet. In
response to this massive body of evidence, applicant levels
essentially two arguments. First, at page 8 of its briefs,
applicant makes the following argument: “The excerpted
articles submitted by the Examining Attorney largely
comprise use of the wording ‘CELL THERAPEUTICS’ as broad
references to a general field of study or research, not
direct and unambiguous references to [applicant’s]
underlying research and development services.” In essence,
applicant is arguing that none of the numerous stories
submitted by the Examining Attorney explicitly reference
applicant’s identification of goods and services which are,
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as previously noted, “pharmaceutical preparations, namely,
bio-chemical signaling pathway modulators of a non-living
nature for use in all fields of medicine, medical research
and pharmacology” and for “laboratory research and
development services in the field of biomedical and
therapeutic products that affect cellular signaling
pathways.” Applicant is technically correct. However, if
we were to adopt applicant’s test, then no word or term
would be found to be generic provided that applicant
submitted a highly detailed description of its goods and
services. By way of analogy, the term “cancer
therapeutics” is an extremely broad term that covers a wide
array of goods and services that are designed to treat
cancer. If an applicant were to seek registration of this
generic term “cancer therapeutics” for “pharmaceutical
preparations, namely, bio-chemical signaling pathway
modulators of a non-living nature, for use in all fields of
medicine, medical research and pharmacology,” we seriously
doubt that any Examining Attorney could find from the NEXIS
database or the Internet a story that would use this
clearly generic term in connection with precisely the
identification of goods chosen by the applicant.
Second, applicant correctly notes that a substantial
number of the stories selected by the Examining Attorney
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from the NEXIS database are from wire services, and that in
the past this Board has stated that such wire service news
stories are of limited probative value. In this regard,
applicant cites In re Professional Tennis Council, 1 USPQ2d
1917, 1918 n.5 (TTAB 1986) and In re Appetito Provisions
Co., 3 USPQ2d 1553, 1555 n.6 (TTAB 1987). Two comments are
in order. First, taking a narrow focus, both of these
cases can be distinguished from the current case. In
Professional Tennis Council the primary concern was that
there was no evidence that the news releases appeared “in
any newspaper or magazine circulated in this country.”
Professional Tennis Council, 1 USPQ2d at 1918 n.5 (emphasis
added). While a few of the news releases in the present
case have emanated from foreign sources, the vast majority
have emanated from United States sources.
As for Appetito Provisions, the concern was that
stories from “news services [are] not presumed to have been
circulated among the general public [and hence their]
probative value regarding attitudes among purchasers is
limited.” Appetito Provisions, 3 USPQ2d at 1555 n.6
(emphasis added). In Appetito Provisions the goods and
services were Italian sausage and restaurant services.
Obviously, such goods and services are truly directed to
the general public who do not as a group have access to
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news wire stories. In stark contrast, the relevant public
in this case are highly sophisticated medical doctors and
researchers who do have access to news wire stories. In
this regard, it must always be remembered that in
determining whether a word or phrase is generic, we are
required to determine whether the word or phrase is generic
to the purchasing public. Magic Wand Inc. v. RDD Inc., 940
F.2d 638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991) (“This
court has stated that whether a term is entitled to
trademark status turns on how the mark is understood by the
purchasing public.”) (emphasis added); In re Montrachet
S.A., 878 F.2d 375, 11 USPQ 1393, 1394 (Fed. Cir. 1989)
(“Whether a term is entitled to trademark status turns on
how the mark is understood by the purchasing public.”)
(emphasis added).
Taking a broader view, we note that the Professional
Tennis Council and Appetito Provisions cases were decided
well over fifteen years ago. This Board would be blind if
it did not recognize that during the past fifteen years,
there has been a dramatic change in the way Americans
receive their news. In the 1980’s personal computers were
in their infancy as was the transmission of news stories
via the Internet. Put quite simply, we believe that
communications have changed dramatically during the past
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fifteen years such that by now it is by no means uncommon
for even ordinary consumers (much less sophisticated
doctors and researchers) to receive news not only via
tangible newspapers and magazines, but also electronically
through personal computers. Thus, it is much more likely
that newswire stories will reach the public because they
can be picked up and “broadcast” on the Internet. In
short, while we are not saying that newswire stories are of
the same probative value as are stories appearing in
magazines and newspapers, we think that the situation has
changed such that said newswire stories have decidedly more
probative value than they did when this Board decided the
Professional Tennis Council and Appetito Provisions cases.
One final comment is in order. During the course of
this proceeding, applicant made of record numerous third-
party registrations for various goods and services where
the marks included the word THERAPEUTICS. At page 15 of
its brief applicant “acknowledges that third-party
registrations are generally not conclusive on the question
of registerability and that each case must be considered on
its own merits.” However, applicant then goes on to note
that the “totality” of the registrations directly supports
a finding that its mark is not generic for its goods or
services. (Applicant’s briefs page 16).
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We simply disagree. To begin with, many of the third-
party registrations are for goods totally removed from
applicant’s goods and services. Such third-party goods
include “nail and cuticle oil” and “mattresses and cribs.”
In any event, it is a matter of law that “even if some
prior registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this court …
The Board (and this court in its limited review) must
assess each mark on the record of public perception
submitted with the application. Accordingly, this court
finds little persuasive value in the registrations that
[applicant] submitted to the examiner or the list of
registered marks [applicant] attempted to submit to the
Board.” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
Decision: The refusals to register are affirmed.