Epi-genomics GmbH

Trademark Trial and Appeal Board

Mar 6, 2003

No. 76000873 (T.T.A.B. Mar. 6, 2003)

Mailed: March 6, 2003
Paper No. 15
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Epigenomics GmbH
________
Serial No. 76/000,873
_______
Edward M. Kriegsman of Kriegsman & Kriegsman for
Epigenomics GmbH.
Glenn G. Clark, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Quinn, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An application has been filed by Epigenomics GmbH (a
German corporation) to register on the Principal Register
the mark DIGITAL PHENOTYPE for the following goods and
services:
“diagnostic reagents for scientific
purposes including forensic examination;
diagnostic test kits for scientific
purposes, consisting of reagents,
working solutions, plasters, namely,
adhesive tape, slides and solid matrix
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/000873
2
material, all sold together as a unit”
in International Class 1;
“diagnostic reagents for medical
purposes for diagnosing inflammations,
infections, diseases of the central
nervous system, heart, circulation,
neurologic, endocrine, autoimmune and
genetic diseases and cancers, consisting
of reagents, working solutions,
plasters, namely, adhesive tape, slides
and solid matrix material, all sold
together as a unit; medical diagnostic
test kits consisting of reagents,
working solutions, plasters, namely,
adhesive tape, slides and solid matrix
material, all sold together as a unit,
for determining the presence of
pathogens in the environment” in
International Class 5;
“laboratory equipment, namely, an
apparatus for testing a sample, for
demonstrating the presence of analytical
elements in samples and to determine
types of samples in connection with
distribution patterns and an apparatus
for the production of a series of
molecular biological data and parts
thereof” in International Class 9;
“providing multiple-user access to the
Internet” in International Class 38; and
“research and development services for
third parties in the field of diagnostic
chemicals, forensic methods,
compositions and devices, measuring
apparatuses for use in product research
and development, in methods for
preparation and purification in water
treatment plants; methods for testing
the environment and determining
industrial quality; chemical separation
analysis and diagnosis, forensic and
medical genetics testing for third
parties; computer programming for others
Ser. No. 76/000873
3
in the field of data processing;
computer services, namely, providing a
searchable database in the field of DNA-
related data on a global computer
network” in International Class 42.1
The Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that the mark DIGITAL
PHENOTYPE, when used on and in connection with the goods
and services of applicant, is merely descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
The Examining Attorney states in his brief that
“applicant’s proposed mark, DIGITAL PHENOTYPE, merely
describes the functions, features, uses, characteristics
and purposes of the relevant goods and services,” and that
“the most persuasive evidence of record in support of the
refusal under Section 2(e)(1) is the applicant’s own web
site” (unnumbered pp. 4-5), which includes the following
statement: “Epigenomics’ proprietary technology makes the
detection of hundreds of thousands of DNA methylation
signals a reality. These signals can be digitized into a
1 Application Serial No. 76/000,873, filed March 15, 2000. The
application is based on Section 44 of the Trademark Act, 15
U.S.C. §1126, German Registration No. 399 58 557 (filed September
16, 1999, issued November 19, 1999 and expiring September 30,
2009).
Ser. No. 76/000873
4
long string of ones and zeros, creating a Digital
Phenotype that reflects genetic activity in a particular
cell or tissue, i.e., whether it is functioning normally or
whether it is sick.” (Emphasis added by Examining
Attorney).2 The Examining Attorney also points to the
following definitions from The American Heritage Dictionary
(Third Edition 1992):
(1) “digital...4. Expressed in digits,
especially for use by a computer.
5. Using or giving a reading in
digits: a digital clock”;3
(2) “digital computer A computer that
performs calculations and logical
operations with quantities
represented as digits, usually in
the binary number system”; and
(3) “phenotype 1.a. The observable
physical or biological
characteristics of an organism, as
determined by both genetic makeup
and environmental influences. b.
The expression of a specific trait,
such as stature or blood type,
based on genetic and environmental
influences.”
2 The Examining Attorney submitted two pages from applicant’s
website and he quoted the material in his October 24, 2001 Final
Office action. The wording on the printouts of both website
pages is cut off on the right side and thus, the Board cannot
read the full statement from applicant’s web pages, but rather
only from the Examining Attorney’s quote thereof.
3 The Examining Attorney requested in his brief on appeal that
the Board take judicial notice of three more dictionary
definitions of “digital.” The request is granted. See TBMP
§712.01.
Ser. No. 76/000873
5
Further, the Examining Attorney argues that “a
‘digital’ recording or observation will more accurately
record and communicate data and research [than] an ‘analog’
recording” (brief, unnumbered p. 7); that applicant’s goods
and services are “digital”; that applicant’s laboratory
equipment in International Class 9 “is presumed to use or
include digital computers”; that “applicant’s goods in
International Classes 1 and 5 appear to be highly
specialized goods that will be used with the applicant’s
computerized services in International Class[es] 38 and 42
and the computerized laboratory equipment in International
Class 9” (brief, unnumbered p. 8); that “the word
‘phenotype’ describes the functions, features, uses and
subject matter of the applicant’s services”; and that
specifically, “applicant’s goods and services are used to
digitize the visible properties of an organism that are
produced by the interaction of the genotype and the
environment.” (Brief, unnumbered p. 8.)4
4 In his brief, the Examining Attorney referred to some of the
excerpted stories retrieved from the Nexis database as well as
the printouts of pages from third-party Internet sites which he
had previously made of record. The stories retrieved from the
Nexis database were either uses of the two words “digital” and
“phenotype” in completely separate contexts or were uses which
referred to applicant corporation and used DIGITAL PHENOTYPE in a
trademark manner. Several of these stories were repeats of the
same story. Of the few third-party websites, all but one also
referred to applicant corporation and generally the term DIGITAL
PHENOTYPE was used in a trademark manner.
Ser. No. 76/000873
6
Finally, the Examining Attorney argues that the two
words when combined do not form a unique or incongruous
mark with a separate, non-descriptive meaning.
Applicant argues that the Examining Attorney has
improperly dissected the mark into its component words and
failed to consider the mark as a whole; that the Examining
Attorney must establish that the mark, considered in its
entirety, immediately describes an ingredient, quality,
characteristic, or feature of the identified goods and
services, and he has failed to meet his burden of proof;
that applicant’s goods and services are not “digitized
readouts” but are various diagnostic reagents, diagnostic
test kits, laboratory equipment, research and development
services and Internet access services; that the term is
incongruous because the dictionary definitions show the
word “digital” refers to expressing in digits, especially
for a computer, while the word “phenotype” refers to
observable physical characteristics which are not generally
reducible to digital expression; and that the mark DIGITAL
PHENOTYPE is used exclusively by applicant with no evidence
of use by others.
A mark is merely descriptive if it “forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods [or services].” Abercrombie &
Ser. No. 76/000873
7
Fitch Company v. Hunting World, Incorporated, 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976) (emphasis added). See
also, In re Abcor Development Corporation, 616 F.2d 525,
200 USPQ 215 (CCPA 1978). Moreover, in order to be merely
descriptive, the mark must immediately convey information
as to the ingredients, qualities or characteristics of the
goods or services with a “degree of particularity.” See In
re TMS Corporation of the Americas, 200 USPQ 57, 59 (TTAB
1978); and In re Entenmanns Inc., 15 USPQ2d 1750, 1751
(TTAB 1990), aff’d, unpub’d, Fed. Cir. February 13, 1991.
Further, it is well established that the determination
of mere descriptiveness must be made not in the abstract or
on the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
See In re Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB
1995).
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
Ser. No. 76/000873
8
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. See In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). In this case, we agree with the Examining Attorney
that applicant’s goods and services are highly specialized.5
The evidence of record (dictionary definitions,
printouts of two pages from applicant’s website, some
excerpted stories retrieved from the Nexis database,
printouts from a few third-party websites, and the
arguments of the Examining Attorney and applicant) does not
establish that the mark DIGITAL PHENOTYPE as a whole is
merely descriptive of the identified goods and/or services.
See Bose Corp. v. International Jensen Inc., 963 F.2d 1517,
22 USPQ2d 1704 (Fed. Cir. 1992); In re Classic Beverage
Inc., 6 USPQ2d 1383 (TTAB 1988); and Manpower, Inc. v. The
Driving Force, Inc., 212 USPQ 961 (TTAB 1981), aff’d 538
F.Supp. 57, 218 USPQ 613 (EDPA 1982). That is, based on
the record now before us, it has not been established that
applicant’s mark, when used on or in connection with its
goods and services recited above, conveys an immediate idea
5 A requirement by the Examining Attorney under Trademark Rule
2.61(b) that applicant provide information about its “highly
specialized” and rather complex goods and services could have
been helpful in this case.
Ser. No. 76/000873
9
about the goods and/or services with any degree of
particularity. It is not clear how the relevant purchasers
would regard the term DIGITAL PHENOTYPE; and there is no
evidence that the relevant consumers would readily
understand a connection between DIGITAL PHENOTYPE and the
various diagnostic kits, laboratory equipment, and research
and development and Internet access services. The
significance of the mark and specifically what it describes
about the goods and/or services, when applied to or used in
connection with the goods and/or services, is ambiguous and
unclear. The Examining Attorney has left too much for
speculation and assumption.6
The Board has noted many times that if there is
doubt about the “merely descriptive” character of a mark,
that doubt is resolved in applicant’s favor, allowing
publication of the mark so that any third party may file an
opposition to develop a more comprehensive record. See In
re Atavio, 25 USPQ2d 1361 (TTAB 1992).
Decision: The refusal to register under Section
2(e)(1) is reversed.
6 The Board must assume that the dictionary, Nexis and Internet
evidence submitted by the Examining Attorney is the best case
possible for the Examining Attorney’s position that the mark is
merely descriptive of the identified goods and services. See In
re Homes & Land Publishing Corp., 24 USPQ2d 1717, 1718 (TTAB
1992).