Paracel, Inc.

Trademark Trial and Appeal Board

Oct 17, 2005

No. 78079533 (T.T.A.B. Oct. 17, 2005)

10/17/05

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

Trademark Trial and Appeal Board
_____________

In re Paracel, Inc.
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Serial No. 78079533
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Jorge C. Barreno for Paracel, Inc.

Howard B. Levin, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_____________

Before Seeherman, Hanak and Walters, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Paracel, Inc. (applicant) seeks to register in typed
drawing form TRANSCRIPTASSEMBLER for “computer software used
for collection, organization, analysis, integration and
communication of scientific data in the field of
biotechnology and life science.” The intent-to-use
application was filed on August 16, 2001.
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney refused registration on the basis that
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2
applicant’s mark is merely descriptive of applicant’s
computer software. When the refusal to register was made
final, applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
an oral hearing.
A mark is merely descriptive pursuant to Section 2(e)(1)
of the Trademark Act if it immediately conveys information
about a significant quality or characteristic of the relevant
goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791
F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). Of course, it
need hardly be said that the mere descriptiveness of a mark
is judged not in the abstract, but rather is judged in
relationship to the goods or services for which the mark is
sought to be registered. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 216 (CCPA 1978). Finally, a mark
need describe only one significant quality or characteristic
of the relevant goods or services in order to be held merely
descriptive. In re Gyulay, 3 USPQ2d at 1010.
At pages 3 to 5 of its brief, applicant has provided
what it refers to as “a brief technology background.” The
Examining Attorney has not taken issue with the facts set
forth in this background. Applicant notes that for many
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3
years “scientists have been trying to understand the role of
genes in the formation of diseases.” Applicant states that
there are “30,000 more or less known genes.” Genes consist
of strands of DNA which are “too long and complex to handle
for researchers.” Thus, “instead of studying an entire gene,
researchers work on smaller pieces of each gene.” According
to applicant, one of the many ways to work on shorter
portions of each gene is “to focus on ‘transcripts.’”
However, applicant states that often times a transcript is
“still too long to study given current technology. Thus,
researchers look at Expressed Sequence Tag (EST). EST is a
small portion of a transcript.”
Having provided the Board with the foregoing overview of
the relevant technology, applicant commences at page 5 of its
brief to explain how its computer software functions.
According to applicant, its computer software “clusters and
assembles millions of sequences of EST to find the sequences
of transcripts.” (Emphasis added). At page 6 of its brief,
applicant acknowledges that “scientists, researchers,
academicians, and other persons involved in life science and
biotechnology commonly use the phrase ‘transcript assembly.’”
Continuing at page 6 of its brief, applicant further
acknowledges that “the same scientists, researchers,
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academicians, and other persons understand what a speaker or
a writer means with the phrase ‘transcript assembly,’ i.e.,
the software clusters, organizes information about the
sequence of EST to determine the information about the
sequence of a piece of gene.” At page 8 of its brief,
applicant concedes that its “mark is highly suggestive,”
consisting simply of the “common words” TRANSCRIPT and
ASSEMBLER.
Based just upon the foregoing information provided by
applicant itself, we find that applicant’s mark
TRANSCRIPTASSEMBLER is merely descriptive of its computer
software which, to use applicant’s words, “assembles millions
of sequences of EST to find the sequences of transcripts.”
(Applicant’s brief page 5, emphasis added). Moreover, as
previously noted, applicant has acknowledged that the phrase
“transcript assembly” is commonly used and well understood by
scientists and other in fields of life science and
biotechnology. (Applicant’s brief page 6).
In creating its “mark” TRANSCRIPTASSEMBLER, applicant
has merely taken the commonly used and well understood phrase
“transcript assembly”; condensed it; and changed the word
“assembly” to the related word “assembler.” Scientists and
others who commonly use the term “transcript assembly” to
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5
describe a particular type of computer software would
likewise understand that applicant’s “mark”
TRANSCRIPTASSEMBLER is but a mere variation of “transcript
assembly.”
Indeed, while we have no doubt that highly educated
scientists and others working in the fields of life science
and biotechnology would have absolutely no trouble in readily
understanding that the ASSEMBLER portion of applicant’s
“mark” is but a mere variation of the word “assembly,” we
also note that the Examining Attorney has made of record
evidence showing that others have used the word “assembler”
to describe the very type of computer software for which
applicant seeks to register the “mark” TRANSCRIPTASSEMBLER.
At its website, TIGR (The Institute of Genomic Research) has
defined the word “assembler” as follows: “A tool for assembly
of large sets of overlapping sequenced data such as ESTs,
BACs or small genomes.” Indeed, TIGR has produced its own
assembler which was described in a publication entitled TIGR
Assembler (1995).
Finally, if there is even the slightest doubt that
applicant’s “mark” TRANSCRIPTASSEMBLER is merely descriptive
of computer software which organizes scientific data in the
fields of biotechnology and life science, said doubt is
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completely removed when one reviews applicant’s own
advertisement entitled “Paracel TranscriptAssembler™ … A
Complete Solution for Accurate EST Assembly.” The first two
sentences of this advertisement read as follows: “Paracel
TranscriptAssembler™ is a complete, high-capacity solution
for EST-based transcript reconstruction. It provides a
comprehensive pipeline for all the steps required to
accurately filter, mask, cluster and assemble transcripts.”
Decision: The refusal to register is affirmed.