Precedential No. 8: TTAB Affirms Genericness Refusal of "NF-LIGHT" for Specimen Analysis Kits For Detecting Neurological Markers

[Note: I, the TTABlogger, argued this case on appeal before the Board, as evidenced by the opinion itself.] In another “key aspect” genericness case, the Board upheld a refusal to register the proposed mark NF-LIGHT for “specimen analysis kits containing reagents and assays for detecting neurological biomarkers in biological samples, serum, blood, plasma, saliva, and cerebrospinal fluid in human and animal samples used by medical and clinical researchers in labs and institutions,” finding the term to be generic for the goods. The Board first found that Applicant Uman’s ELISA kits are “a subset of the broad genus of goods identified in the application, and neurofilament light – the particular ‘neurological biomarker’ detected by applicant’s kit – is a subcategory and key aspect of the genus.” Then it found that the relevant consumers of the goods (clinical and medical researchers) understand NF-Light as a generic term referring to neurofilament light. In re Uman Diagnostics AB, 2023 U.S.P.Q.2d 191 (TTAB 2023) [precedential] (Opinion by Judge Mark Lebow).

The Board took judicial notice that “an ‘ELISA’ the acronym for an ‘enzyme-linked immunosorbent assay," is “[a] sensitive immunoassay that uses an enzyme linked to an antibody or antigen as a marker for the detection of a specific protein, especially an antigen or antibody.’”

Furthermore, "Neurofilaments (NFs) are the main structural proteins of neurons and are members of the class IV intermediate filament protein family. NFs are selectively expressed in the nervous system and are found at the highest levels in long projection axons. They are composed of four subunits, namely NF light (NFL), NF medium (NFM), and NF heavy (NFH) chain subunits plus an unstable alpha internexin subunit.”

Applicant Uman confirmed that its goods “detect the neurofilament light protein that is generated in the human brain.” In other words, the “target analyte” of Uman’s ELISA kits is neurofilament light.

We find that Applicant’s broadly worded identification of goods (the genus in this case) – specimen analysis kits containing reagents and assays for detecting neurological biomarkers in biological samples, serum, blood, plasma, saliva, and cerebrospinal fluid in human and animal samples used by medical and clinical researchers in labs and institutions”—encompasses the enzyme-linked immunosorbent assays (ELISA) kits for detecting neurological biomarkers, namely neurofilament light protein that Applicant actually provides under its purported mark. Applicant’s ELISA kits are thus a subset of the broad genus of goods identified in the application, and neurofilament light—the particular “neurological biomarker” detected by Applicant’s kit—is a subcategory and key aspect of the genus.

The question, then, was whether “the relevant public (medical/clinical researchers) understands the term ‘NF-Light’ to refer primarily to that key aspect.” If so, then the term “NF-Light” is generic, “even if the public does not understand the term to refer to the broad genus as a whole.”

Numerous articles and dictionary references, in addition to third party uses, convinced the Board that “the term NF-LIGHT, or similar variation NF light, is a commonly used and well recognized abbreviation for the neurofilament light subunit, and is used as such by medical and clinical researchers in the relevant field of use. Indeed, the evidence shows the terms to be substantially synonymous." The evidence also showed the term NF-Light is so used by competitors, which is “strong evidence of genericness.”

Uman, relying on the CAFC’s Merrill Lynch decision, argued that the USPTO failed to meet its burden of proving that the proposed mark is generic because there was a “mixed record” of usage – i.e., generic usage as well as proper trademark use. The Board was unimpressed.

[T]his is not a "mixed record" case that compels a finding of non-genericness. "[T]he mere fact that a record includes evidence of both proper trademark use and generic use does not necessarily create a mixed record that would overcome an examining attorney's evidence of genericness." In re Am. Online, Inc., 77 U.S.P.Q.2d 1618, 1623 (T.T.A.B. 2006). Where the record shows a "mixture" of uses, our task remains the same: to determine whether a preponderance of the evidence shows that the proposed mark's "primary significance" to the relevant consuming public is to refer to the product or to indicate source.

The Board observed that “two decades of scientific journals consistently used the term ‘NF-Light’ or ‘NF Light’ as an abbreviation for “neurofilament light.” Moreover, the Merrill Lynch firm was recognized as a “pioneer” in providing the specific financial services involved in that case, but Uman was late to the party.

The scientific journal articles unearthed in this record show that the term “NF-LIGHT” has been used in the scientific community as an abbreviation for “neurofilament light” in scientific journals since at least as early as 2003, nine years before Applicant claims to have coined the term.

The Board found that Uman’s evidence of use of the term NF-LIGHT by third-parties in scientific articles that acknowledged the term as Uman’s trademark, was “the type of use less probative than the usage showing that it is understood as a generic term,” because it is an “industry practice in scientific journals to identify products that are used in the course of a study using the name for the product applied by the manufacturer.” The generic use of “NF-LIGHT” in some of the articles is “strong evidence of the primary significance of the term to the relevant public, and is not offset by the apparent ceremonial identification of the term as a trademark whenever Applicant’s goods are used in a study.”

We are convinced on this record that the relevant public perceives NF-LIGHT as substantially synonymous with, and a reference to, neurofilament light, a subcategory and key aspect of Applicant’s “specimen analysis kits containing reagents and assays for detecting neurological biomarkers in biological samples, serum, blood, plasma, saliva, and cerebrospinal fluid in human and animal samples used by medical and clinical researchers in labs and institutions.”

And so, the Board affirmed the refusal to register.

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TTABlogger comment: The Board states that the standard of proof for genericness is a "preponderance of the evidence" [without citation to authority], but both Merrill Lynch and Am. Online require "clear evidence."

Text Copyright John L. Welch 2023.