Gene medicine, Inc.

Trademark Trial and Appeal Board

Jul 28, 1998

No. 74598265 (T.T.A.B. Jul. 28, 1998)

Hearing: Paper No. 14
October 8, 1997 Hohein/MD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 7/28/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Genemedicine, Inc.
________
Serial No. 74/598,265
_______
William C. Steffin of Lyon & Lyon LLP and Charles A. Wendel, Esq.
for Genemedicine, Inc.
Carolyn C. Gray, Trademark Examining Attorney, Law Office 101
(R. Ellsworth Williams, Managing Attorney).
_______
Before Cissel, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Genemedicine, Inc. has filed an application to register
the mark "GENEMEDICINE, INC." and design, as reproduced below,
for "formulated nucleic acid pharmaceutical preparations for the
treatment of disease."1

1 Ser. No. 74/598,265, filed on November 14, 1994, which alleges a bona
fide intention to use the mark in commerce.
Ser. No. 74/598,265
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's goods, the mark
"GENEMEDICINE, INC." and design is merely descriptive of them.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We reverse the refusal to register.
Preliminarily, however, we note that there is an issue
as to whether applicant has conceded the mere descriptiveness of
the term "GENEMEDICINE" by voluntarily offering to disclaim such
term. Specifically, in the first Office action, the Examining
Attorney—-notably without any explanation or supporting evidence—
-refused registration of applicant's mark on the ground that it
is merely descriptive of applicant's goods. Applicant, in
response, traversed the refusal, stating that:
The Examiner has not shown that
"GENEMEDICINE" is descriptive of the goods
identified in the application or of any
particular goods. No evidence has been cited
by the Examiner supporting her position. In
order to facilitate the prosecution to a
Notice of Allowance, Applicant hereby
disclaims the exclusive right to use the word
mark "GENEMEDICINE" on or in association with
formulated nucleic acid pharmaceutical
preparations for the treatment of disease,
apart from the mark as shown. Applicant
believes that the design format in which
"GENEMEDICNE" is presented in this
application is sufficiently distinctive that
the design is allowable upon a disclaimer of
the word mark.
In support of its position, applicant cited In re
Clutter Control Inc., 231 USPQ 588, 589 (TTAB 1986), in which the
Board stated that: "When words which are merely descriptive, and
hence unregistrable, are presented in distinctive design, the
Ser. No. 74/598,265
3
design may render the mark as a whole registrable, provided that
the words are disclaimed, under Section 6 of the Trademark Act."
Applicant, noting that the Board in such case determined that the
mark "CONSTRUCT-A-CLOSET" and design, as illustrated below,
would be registrable on the Principal Register upon the filing of
a disclaimer of the term "CONSTRUCT-A-CLOSET" because, as the
Board stated, "the tube-like rendition of the letter ’C’ in the
words ’construct’ and ’closet’ make a striking commercial
impression, separate and apart from the word portion of
applicant’s mark," 231 USPQ at 589-90, likewise contended that:
Here, Applicant’s design is entitled to
registration on the Principal Register now
that the word mark "GENEMEDICINE" has been
disclaimed. The design has a distinctly
modern and uncluttered look making a striking
commercial impression, which was achieved by
forming the characters using straight lines
and simple geometric shapes. Also
contributing to the design’s striking
appearance is the complete encapsulation of
the characters in a solid rectangle.
The Examining Attorney, in her responsive Office
action, stated, however, that "[t]he disclaimer proposed by the
applicant has not been accepted." Continuing the refusal to
register applicant’s mark on the ground of mere descriptiveness,
the Examining Attorney noted that she "has determined that the
design element of the mark is merely a carrier" and that "[a]s
such it is not sufficiently distinct[ive] to warrant
registration" with a disclaimer of the term "GENEMEDICINE".
Ser. No. 74/598,265
4
Applicant, in reply, reiterated its contention that its
mark, in light of the assertedly distinctive design elements, is
registrable with a disclaimer of the term "GENEMEDICINE".
Applicant concluded its remarks by stating that, "[f]or the
foregoing reasons, Applicant continues its proposal for a
disclaimer of the word portion of this mark, and respectfully
submits that the [application for the] proposed mark is now in
condition for allowance."
The Examining Attorney, after considering applicant’s
arguments, was not persuaded and made the mere descriptiveness
refusal final. However, other than adding that "the proposed
mark appears to be generic as applied to the goods" and stating
that "applicant’s design element lends nothing to the commercial
impression of the word mark element," the Examining Attorney
offered no explanation for her determination of mere
descriptiveness (including the assertion of the ultimate form
thereof, namely, genericness) and made no mention of applicant’s
continued proffer of a disclaimer.
Applicant appealed the final refusal and indicated in
its initial brief that, among other things, it has disclaimed the
"GENEMEDICINE" term "of its design mark in order to facilitate
allowance of the application" in view of its theory that the
design elements of the mark are sufficiently distinctive to
permit registration if the proffered disclaimer is included. The
Examining Attorney, in her brief, contends--for the first time--
that applicant "has conceded that the mark is descriptive by
applicant’s consent ... to disclaim the word portion of the
Ser. No. 74/598,265
5
mark." Applicant, in its reply brief, insists, however, that it
has not conceded that its mark is merely descriptive. In
particular, applicant maintains that its "disclaimer of the word
portion of its mark was not an admission that the mark is
descriptive but was simply done to ’facilitate the prosecution to
a Notice of Allowance’," as it previously stated.
We are constrained to agree with applicant that it has
not, by voluntarily offering to disclaim the term "GENEMEDICINE,"
conceded the mere descriptiveness of such term as used in
connection with its goods. Instead, when viewed in the totality
of applicant’s argument as to the registrability of its mark, it
is clear that applicant has proffered only a conditional
disclaimer. That is, in order to facilitate the registration of
its mark, applicant has offered to disclaim the term
"GENEMEDICINE" provided that the Examining Attorney accepts
applicant’s contention that the design elements of the mark are
distinctive enough to allow registration of applicant’s mark with
the inclusion of such a disclaimer. However, inasmuch as the
Examining Attorney has not only stated that the disclaimer
proffered by applicant has not been accepted, but has indicated
that the design elements of applicant’s mark do not preclude the
mark as a whole from being merely descriptive within the meaning
of Section 2(e)(1), it is plain that applicant’s offer to
disclaim the term "GENEMEDICINE" simply cannot be taken as an
admission of the mere descriptiveness of that term for purposes
of this appeal.
Ser. No. 74/598,265
6
Turning, therefore, to the merits of the final refusal,
applicant asserts that the mark "GENEMEDICINE, INC." and design
is not merely descriptive of its formulated nucleic acid
pharmaceutical preparations for the treatment of disease.
Specifically, as noted previously, applicant maintains that its
mark is registrable, with a disclaimer of "GENEMEDICINE," in
light of the mark’s assertedly distinctive design elements, which
include "the uncluttered, modern typeface of the words, the light
tone of the words, and the dark shaded box surrounding,
contrasting, and encapsulating them." According to applicant:
The combination of the distinctive typeface
with a surrounding, contrasting box renders a
striking commercial impression. .... The
surrounding box heightens the effect of the
typeface to create a distinctive
presentation.
The design of Applicant’s mark, [with]
the words "GENEMEDICINE, INC." encapsulated
in a solid surrounding box, cleverly suggest
the method of delivering Applicant’s products
into a patient. Applicant’s products
encapsulate nucleic acid therapeutic drugs
inside a liquid or solid matrix, just as
Applicant’s mark encapsulates "GENEMEDICINE,
INC." inside a box. ....
Applicant, in any event, additionally points out that "[a]t no
time during the prosecution of the present application has the
Examining Attorney presented any evidence that applicant’s design
mark, as a whole, would be merely descriptive or generic."
The Examining Attorney, correctly noting that the Board
may properly take judicial notice of dictionary definitions,2

2 See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du
Ser. No. 74/598,265
7
argues on the other hand that, as set forth for the first time in
her brief, applicant’s mark is merely descriptive of its goods
because (footnote omitted):
A gene is defined by Webster’s II New
Riverside University Dictionary as a
functional hereditary unit that occupies a
fixed location on a chromosome, has a
specific influence on phenotype, and is
capable of undergoing mutation to various
allelic forms. Medicine is defined ... as
the science of diagnosing, treating, or
preventing disease or damage to the body or
mind. Id. Inc. or incorporated represents
an entity designation and has no trademark
significance[.] Id. Applicant’s design is
merely a border or carrier which has no
trademark significance. .... The design
does not create a distinctive commercial
impression. ....
In view thereof, the Examining Attorney insists that "[t]he sole
issue is whether the display of the mark creates a distinctive
commercial impression separate from the literal component[s]."
The Examining Attorney particularly contends that,
unlike the distinctive "double C configuration" in the "CONTRUCT-
A-CLOSET" and design mark at issue in In re Clutter Control Inc.,
supra, the rectangular design in applicant’s "GENEMEDICINE, INC."
and design mark functions simply as a carrier for the literal
terms therein and "is not sufficiently unique or distinctive as
to warrant registrability" of applicant’s mark. Common basic
shapes, such as a rectangle, are considered to be inherently
nondistinctive, the Examining Attorney correctly observes, "when
such common basic shapes are used as a vehicle or background for

Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/598,265
8
the display of word marks," citing Guess? Inc. v. Nationwide Time
Inc., 16 USPQ2d 1804, 1805 (TTAB 1990). In view thereof, and
since, as in In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB
1986), the Examining Attorney finds that the typeface in which
the wording in the mark appears "is insufficiently stylized to
create an inherently distinctive, registrable display," the
Examining Attorney concludes that applicant’s mark is merely
descriptive of its goods.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used on or in connection with those goods or services
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. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Consequently, "[w]hether consumers could guess what
Ser. No. 74/598,265
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the product [or service] is from consideration of the mark alone
is not the test." In re American Greetings Corp., 226 USPQ 365,
366 (TTAB 1985).
On the other hand, a mark is suggestive if, when the
goods or services are encountered under the mark, a multistage
reasoning process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361, 1362 (TTAB 1992) and In re TMS Corp. of the
Americas, 200 USPQ 57, 58 (TTAB 1978). The distinction,
furthermore, is often made on an intuitive basis rather than as a
result of precisely logical analysis susceptible of articulation.
See In re George Weston Ltd., 228 USPQ 57, 58 (TTAB 1985). Any
doubt as to whether a mark is merely descriptive or suggestive is
resolved, in accordance with the Board’s policy, in favor of the
applicant by allowing publication of the mark for opposition.
See, e.g., In re Morton-Norwich Products, Inc., 209 USPQ 791
(TTAB 1981) and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB
1972).
While, in the present case, we concur with the
Examining Attorney that, contrary to applicant’s contentions, the
Ser. No. 74/598,265
10
solid rectangular design in applicant’s mark is a common, basic
shape which serves simply as a carrier or vehicle for the display
of the words "GENEMEDICINE, INC." and that such words are
displayed in an ordinary, nondistinctive typeface, we agree with
applicant that the Examining Attorney has offered no evidence on
this record which prima facie shows that the terminology
"GENEMEDICINE, INC." is merely descriptive of applicant’s goods.
Although, to be sure, the term INC. merely describes the fact
that applicant’s products are produced and/or sold by an
incorporated entity and thus is lacking in trademark
significance,3 the dictionary definitions cited by the Examining
Attorney fail to establish that, to the doctors and medical
researches who, as applicant admits, would constitute its primary
customers, the designation "GENEMEDICINE" has a merely
descriptive significance. Such designation simply does not
immediately or directly describe any significant attribute,
function, feature, purpose, use or other aspect of applicant’s
formulated nucleic acid pharmaceutical preparations for the
treatment of disease. Purchasers, users and/or prospective
customers for such goods would, instead, have to pause and

3 See, e.g., In re E. I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984)
("addition of the term ’INC.’ [to the designation ’OFFICE MOVERS,
INC.’ for the services of moving office facilities] does not add any
trademark significance to the matter sought to be registered") and In
re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) (in
designation "PACKING SPECIALIST, INC." for distributorship services
for packaging material and equipment, "the element ’INC.’ ... [is]
recognized, in trademark evaluation, to have no source indication or
distinguishing capacity"). Counsel for applicant, in fact, conceded
at the oral hearing the lack of trademark significance of the term
"INC." in applicant’s mark. Since, in view thereof, such term must be
disclaimed, the application is hereby deemed to be amended to set
Ser. No. 74/598,265
11
reflect on the significance of the term "GENEMEDICINE" in order
to understand that applicant’s goods, presumably, act as a
medication by providing the substances which normal genes, unlike
defective or missing ones, customarily produce or supply.
Consequently, customers for, and others interested in,
applicant’s products would be left to speculate as to what
particular function(s) or other aspect(s) the term "GENEMEDICINE"
refers when used in connection with applicant’s goods, which are
not themselves genes but are instead formulated nucleic acid
preparations for the treatment of disease.4 Literally,

forth the following disclaimer: No claim is made to the exclusive
right to use "INC." apart from the mark as shown.
4 We judicially notice, in this regard, the dictionary definitions of
the following terms:
(a) "gene," which Webster’s New World College
Dictionary (3d ed. 1997) at 561 defines as "[g]enetics any
of the units occurring at specific points on the
chromosomes, by which hereditary characters are transmitted
and determined: each is regarded as a particular state of
organization of the chromatin in the chromosome, consisting
primarily of DNA and protein" and which The Random House
Dictionary of the English Language (2d ed. 1987) at 795
lists as meaning "the basic physical unit of heredity; a
linear sequence of the nucleotides along a segment of DNA
that provides the coded instructions for synthesis of RNA,
which, when translated into protein, leads to the expression
of heredity character";
(b) "medicine," which Webster’s New World College
Dictionary (3d ed. 1997) at 842 sets forth as signifying,
inter alia, "1 the science and art of diagnosing, treating,
curing, and preventing disease, relieving pain, and
improving and preserving health 2 the branch of this
science and art that makes use of drugs, diet, etc., as
distinguished esp. from surgery and obstetrics 3 a) any
drug or other substance used in treating disease, healing,
or relieving pain" and which The Random House Dictionary of
the English Language (2d ed. 1987) at 1194 similarly
defines, among other things, as "1. any substance or
substances used in treating disease or illness; medicament;
remedy. 2. the art or science of restoring or preserving
health or due physical condition, as by means of drugs,
surgical operations or appliances, or manipulations: often
divided into medicine proper, surgery, and obstetrics. 3.
Ser. No. 74/598,265
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applicant’s goods do not appear, on this record, to be medicines
for genes. Accordingly, while nucleic acids form parts of genes,
it would be only after reflection, or through the exercise of a
multistage reasoning process, that purchasers and other users of
applicant’s goods possibly could conclude that such goods may
serve to treat genetic diseases by, for example, supplying the
substances which the nucleic acid component(s) of a normal gene,
unlike a defective one, would provide. The mark "GENEMEDICINE,
INC." and design, therefore, is suggestive rather than merely
descriptive of applicant’s goods.
Decision: The refusal under Section 2(e)(1) is
reversed.

the art or science of treating disease with drugs or
curative substances, as distinguished from surgery and
obstetrics";
(c) "nucleic acid," which Webster’s New World College
Dictionary (3d ed. 1997) at 930 lists as signifying "any of
a group of essential complex organic acids found in all
living cells: the two types are DNA and RNA and consist of
long chains of nucleotide units with each unit composed of
phosphoric acid, a carbohydrate, and a base derived from
purine or pyrimidine" and which The Random House Dictionary
of the English Language (2d ed. 1987) at 1329 sets forth as
meaning "[biochem.] any of a group of long, linear
macromolecules, either DNA or various types of RNA, that
carry genetic information directing all cellular functions:
composed of linked nucleotides"; and
(d) "nucleotide," which Webster’s New World College
Dictionary (3d ed. 1997) at 930 defines as "1 any of several
phosphate esters of nucleosides: the basic unit of nucleic
acids 2 any of several compounds not found in nucleic
acids, which function as coenzymes" and which The Random
House Dictionary of the English Language (2d ed. 1987) at
1329 lists as signifying "[biochem.] any of a group of
molecules that, when linked together, form the building
blocks of DNA or RNA: composed of a phosphate group, the
bases adenine, cytosine, guanosine, and thymine, and a
pentose sugar, in RNA the thymine base being replaced by
uracil."
Ser. No. 74/598,265
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R. F. Cissel
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board