Monday, June 22, 2020

TTABlog Test: Is HIGH SPEED STEPPING Merely Descriptive of Laboratory Analyzers?

In December 2019, the Board affirmed a mere descriptiveness refusal of Omniome, Inc.'s proposed mark SEQUENCING BY BINDING for goods and services directed to the analysis of biological analytes. [TTABlogged here]. Omniome was back before the Board in this case, seeking to register HIGH SPEED STEPPING, again for  goods and services directed to the analysis of biological analytes. Examining Attorney Caroline E. Wood maintained that the proposed mark is merely descriptive because "Applicant’s goods and services feature stepping motors that operate at high speed[.]" How do you think this came out? In re Omniome, Inc., Serial No. 87960945 (June 18, 2020) [not precedential] (Opinion by Judge Christen M. English).

stepper motor

Ominome acknowledged that hits technology incorporates a "stepper motor" and did not dispute that "high speed stepping" is descriptive of, or generic for, stepper motors or "perhaps goods and services for which stepper motors serve as a significant or touted feature thereof." It argued, however, that the proposed mark does not describe a "significant function or feature" of its technology "with any degree of "particularity" because a stepper motor is a small component in its technology that is also "commonly used by competitors," and in a myriad of other devices across countless industries." [An odd interpretation of "particularity" - ed.].

Of course, Omniome argued that HIGH SPEED STEPPING is merely suggestive of its technology. Its Head of Intellectual Property averred that that the phrase was "coined ... to be suggestive of newly developed scanning technology intended to be employed by Omniome's goods and services which relates to a methodology of taking sequential images of DNA colonies (or other biological analytes) on a surface in a flow cell, which flow cell is moved in a precise manner in a translational direction ...."

The Board was not impressed" "We need not resolve whether a “stepping motor” is a significant feature of the applied-for goods and services." See In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (“[T]he Board need not find that the examining attorney’s rationale was correct in order to affirm the refusal to register, but rather may rely on a different rationale.”)

Based on Mr. Murphy’s explanation, “high speed stepping” immediately and with particularity describes a characteristic and feature of Applicant’s intended goods and services, namely, that the goods and services involve imaging the surface of a flow cell by repeatedly moving through a three-step process at high speed (e.g. by “high speed stepping”).

Even it Omniome coined the phrase HIGH SPEED STEPPING for its technology "does not imbue the phrase with source identifying significance."  In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant may be the first to use a merely descriptive designation does not “justify registration if the term projects only merely descriptive significance.”).

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.


At 7:44 PM, Anonymous Anonymous said...

I guess if you shoot yourself in the foot with an argument about how your mark describes your goods, you won't be doing much high speed stepping anymore. Sorry, I couldn't help myself.


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