TTAB Affirms Genericness Refusal of "BEADCHIP" for .... Guess What?
Finding that the PTO had met its burden to prove genericness by clear evidence, the Board affirmed a refusal to register the term BEADCHIP on the Supplemental Register, for "single or multiple randomly assembled microbead arrays for use in medical research and scientific applications; kits for arrays and assemblies comprising nucleotide probes or proteins attached to microbeads for use in medical research and scientific applications" in International Class 1, and for "single or multiple randomly assembled microbead arrays for use in diagnostic applications; kits for arrays and assemblies comprising nucleotide probes attached to microbeads for use in diagnostic applications" in International Class 5. In re BioArray Solutions Ltd., Serial No. 78908764 (June 4, 2008) [not precedential].
The Board, as usual, deemed the genus of the goods to be defined by Applicant's identification of goods. "More broadly, the genus of applicant's goods may be identified as a particular type of 'microarray technology.'" The question then was how the relevant public understood the term BEADCHIP.
Examining Attorney Barney L. Charlon relied on patents, patent applications, research databases, and publications showing generic use of "beadchip" to identify Applicant's goods. He also cited a definition in the glossary of genomic terms provided by the Cambridge Healthtech Institute.
Applicant BioArray Solutions rather feebly argued that the term beadchip is used as an adjective rather than a noun; that several uses cited by the PTO show "bead chip" with a space, or "bead/chip" with a slash; that one use is by a rival who is attempting to undermine Applicant's rights; that other third parties who use "beadchip" are merely parroting the subversive rival; that the term "beadchip" is used "without context" in the glossary; and that the PTO submissions are duplicative.
However, the Board pointed out that Applicant used the term "beadchip" throughout its own articles in a generic fashion. "Most troubling" was Applicant's use of "beadchip" as a generic term in its own patent application. And, of course, adjectives as well as nouns can be generic. See In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC generic for sprinklers]. In sum, the Board found Applicant's evidence of nongenericness "unconvincing."
Considering all the evidence, the Board could not conclude that this is a "mixed record" as alleged by Applicant. It was convinced by the "clear evidence" of the public's understanding of "beadchip" as generic for the genus of Applicant's goods.
Text Copyright John L. Welch 2008.