Ruling that statements made in patent filings by a trademark applicant (and by third parties) are probative evidence as to the descriptiveness of a term, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of SEQUENCING BY BINDING for “reagents for analysis of biological analytes; research laboratory analyzers for analysis of biological analytes for non-medical purposes devices for analysis of biological analytes for medical purposes; analysis of biological analytes; development of new technology for others for analysis of biological analyte.” Dictionary definitions, industry articles, applicant’s patents and patent applications, and statements in its appeal briefs left the Board with no doubt that the proposed mark “immediately conveys information to the relevant target audience, microbiologists, concerning features and characteristics of Applicant’s reagents, analyzers, biological analysis devices and biological analysis services, i.e., a DNA sequencing process that relies on identifying binding sites to determine the sequence of DNA molecular structure.” In re Omniome, Inc., Serial No. 87661190 (December 19, 2019) [precedential] (Opinion by Judge Jonathan Hudis).

A mark is “merely descriptive” under Section 2(e)(1) “if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer A.G., 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Any doubt as to the mere descriptiveness of a proposed mark is resolved in favor of the applicant. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB 2016).

Applicant’s own usage of the proposed mark is evidence of its descriptiveness. “[W]hile it may be a truism of patent law that ‘a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning,’ Bell Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc., 262 F.3d 1258, 59 USPQ2d 1865, 1870 (Fed. Cir. 2001), descriptive usage of such terms by the trademark applicant in its patent filings can be, and in this case is, probative.”

While the Board, in Empire Tech., Tekdyne, and Int’l Game Tech., considered the patent filings of the trademark applicant and third parties as proof of mere descriptiveness, we pause here to specifically add such evidence to the list (that is, dictionaries, newspapers, surveys, websites, publications, advertising material directed to the goods or services, and the textual matter contained in an applicant’s own specimen of use) of the types of evidence from which mere descriptiveness may be obtained.

The Board first found, based on industry articles made of record and on the identification of goods and services in the subject application, that microbiologists are the relevant consumers for purposes of determining the descriptiveness of the proposed mark.

Examining Attorney John M. Wilke maintained that “the proposed mark is used by applicant to describe the process of gene sequencing by binding used in connection with applicant’s reagents and analyzers and also in applicant’s biological analysis services and product development services, i.e. that they feature the use of DNA sequencing based on binding sites.

Applicant argued that SEQUENCING BY BINDING is a coined term that has no recognized meaning other than as Applicant’s mark; that it does not describe the goods and services with “any degree of particularity; that there is no evidence of third-party descriptive use, and no evidence of the need of competitors to use SEQUENCING BY BINDING descriptively

The Board, however, did not agree that the proposed mark is suggestive, and instead found that it “immediately describes the function and purpose of Applicant’s goods and services:”

That is, the identified goods and services are used to sequence DNA by the process of binding. Applicant’s goods and services are identified broadly and are presumed to encompass goods and services of all types, including those for use in DNA sequencing by binding or conducting of analysis of biological analytes via DNA sequencing by binding.

Even if an applicant is the first user of a term, that does not render that term distinctive. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 72 USPQ2d 1833, 1838 (2004) (trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first”) (citation omitted); see also Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (even novel ways of referring to a product may nonetheless be merely descriptive).

The Board therefore affirmed the refusal to register.

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TTABlog comment: Judge Hudis’s opinion is a mini-treatise on the law of mere descriptiveness. Seems to me that the only thing making this opinion precedential is the holding regarding patent documents. BTW: Would You Have Appealed?

Text Copyright John L. Welch 2019.