Monday, May 23, 2011

WYHA? TTAB Affirms Mere Descriptiveness Refusal of ATHEROABZYME for Diagnostic Test Kits

Examining Attorney Myriah A. Habeeb refused registration of the mark ATHEROABZYME under Section 2(e)(1), finding it merely descriptive of diagnostic testing materials for atherosclerotic conditions. Dictionary definitions, Applicant’s own patent application, Applicant’s website, and third-party webpages showed that ATHEROABZYME “describes a class of antibody, or at least an antibody that is present in atherogenic conditions,” and that Applicant’s goods test for those antibodies. Faced with this evidence, Would You Have Appealed? In re Cambridge Theranostics Limited, Serial No. 79049471 (May 10, 2011) [not precedential].

The Board found that "Athero-" is a recognized prefix in the medical field that refers to “a medical condition marked by ‘an abnormal fatty deposit in an artery.’” “Abyzme” is an antibody that catalyzes lipid oxidation in the body. Applicant stated that its goods test for levels of abzymes in the blood, and that "a high level of abzyme activity in the sample" may indicate an atherogenic condition. Applicant’s patent application explained that Abyzme is a diagnostic marker for atherosclerosis, and refers repeatedly to "AtheroAbzyme" as indicating a type of abzyme. The Board concluded:

“Ultimately, the term ATHEROABZYME as a whole describes the function or use of applicant's testing materials, and it describes the goods more completely than either word alone. The medical professionals who would be the purchasers for applicant's diagnostic test would immediately understand that the goods test for the presence of an atherogenic condition, and more particularly, for the presence of the marker for this condition.”

Applicant feebly argued that the record did not show use of the mark for its exact goods, but the Board observed that “terms that describe the purpose or function of the goods may be merely descriptive of the goods under Section 2(e)(1).” Moreover, the fact that Applicant sometimes used the “TM” symbol with the mark does not change it into a non-descriptive term.

Applicant asserted that third-party use of the term was de minimis, but the Board pointed out that even if Applicant were the first and only user of the term, it would still be descriptive of the goods. Furthermore, the third-party users employ the term "atheroabzyme" generically to denote a particular type of antibody, and not to indicate the source of any goods.

And so the Board affirmed the Section 2(e)(1) refusal to register.

TTABlog comment: Would I have appealed this one? Maybe. These decisions are often not as simple as they look in retrospect. But this was certainly going to be a difficult refusal to overcome.

Copyright John L. Welch 2011.


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