Tuesday, December 12, 2006

"PROGRAMMED PROTEIN" Merely Descriptive of DNA Research Services, Says TTAB

Affirming a Section 2(e)(1) refusal to register, the Board found the mark PROGRAMMED PROTEIN to be merely descriptive of "medical research services relating to DNA and gene synthesis." In re Centocor, Serial No. 78448489 (November 29, 2006) [not citable].

Examining Attorney Evelyn Bradley relied on a dictionary definition of "programmed" and on Internet excerpts and NEXIS articles using the phrase "programmed protein" or the individual words in various medical contexts. Moreover, Applicant Centocor's business plan stated that its services will involve the design and development of protein pharmaceuticals and that the proteins are produced "by programming the sequence into the synthetic DNA and expressing it in the host cells." The Board therefore concluded that "protein" is descriptive of Applicant's services "inasmuch as it is the resulting product of the services." "Programmed" is likewise descriptive "inasmuch as it is the means by which the services create the product."

Centocor argued that its mark "refers to the use of a computer for the design of the proteins, and hence the use of the term PROGRAMMED." The Board, however, pointed to the PTO's dictionary evidence to find that the term PROGRAMMED "has a meaning in the genetic field that directly describes what applicant does: to code in an organism's program; to provide with a biological program."

Centocor further contended that "the simple term PROGRAMMED PROTEIN does not aptly describe these complicated and sophisticated medical research services." Moreover, it urged that no one else uses the term PROGRAMMED PROTEIN.

As to the latter point, the Board reiterated that even if Applicant were the first and only user of the term, that does not mean that the term is not merely descriptive. As to the former, the problem with Applicant's argument is that the mark must be considered in the context of Applicant's services, not in the abstract.

The Board opined that the average consumer of Applicant's research services "would certainly know and be familiar with the terms programmed and protein as used in the field of DNA and gene synthesis." It concluded that "PROGRAMMED PROTEIN immediately describes, without need for conjecture or speculation, a significant feature or function of applicant's services, namely the provision of programmed proteins."

Therefore, the Board affirmed the Section 2(e)(1) refusal.

TTABlog note: Certain of the PTO's website evidence came from foreign sources, but the Board rejected Centocor's argument that this evidence was therefore irrelevant, noting the "highly technical nature of the services and the sophistication of the prospective customers for the services," and citing In re Remacle. For a discussion of Remacle and the probative value of foreign website evidence, see Welch and Lamport Hammitte, "The TTAB and Foreign Website Evidence: Quo Vadis?," 20 Allen's Trademark Digest No. 6 (December 2006).

Centocor also contended that "cached pages" are not "competent evidence of the current use of the terms under consideration." The Board disagreed, observing that cached pages "do provide evidence of use of a term just as an excerpt from an earlier magazine publication or old newspaper article would."

Text Copyright John L. Welch 2006.


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