Monday, April 10, 2006

Citable No. 21: TTAB Rejects Website Specimen for Genitope's "Fingerprint Man" Mark

In yet another citable decision, the Board affirmed a refusal, pursuant to Rules 2.56 and 2.88, of the "fingerprint man" design mark shown below, for "biopharmaceutical preparations used to treat cancer in humans, namely, individualized cancer treatments prepared specifically for each individual patient from whom tumor tissue has been received." It ruled that the website specimen submitted by Applicant Genitope Corporation is not a "display associated with the goods" and therefore is not acceptable to show use of the mark. In re Genitope Corp., 78 USPQ2d 1819 (TTAB 2006).

Rule 2.56(b)(1) provides: "A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The office may accept another document related to the goods or the sale of the goods when it is not possible to place the mark on the goods or packaging for the goods." Applicant asserted that its Internet webpage (shown below, in part) constituted a display associated with the goods, relying on In re Dell Inc., 71 USPQ2d 1725 (TTAB 2004).

Genitope's specimen of use

The last paragraph of the specimen webpage states: "For more information on personalized immunotherapy and our product, please see the Patient Backgrounder in the Patient Resources section of our website." The underlined phrases are links to other pages on Genitope's website.

The Board distinguished the Genitope situation from that in Dell because Genitope's webpage "does not provide a means of ordering the product."

"On the contrary, the webpage says that the study is closed to patient registration. Certainly there is nothing in the specimen which shows that one can 'click' on a link to order applicant's product, nor does it explain how to order it." *** At most, applicant's web page indicating how one can obtain 'more information on personalized immunotherapy and our product' may be seen as promotional material, but advertising is not acceptable to show trademark use on goods." (slip op., p. 7)

Genitope explained that its goods are "individualized cancer treatments" that "are not amenable to the type of point-of-sale displays that allow direct ordering of the goods by the general public." The Board, however, agreed with Examining Attorney Jill I. Prater that:

"there does not appear to be any reason that applicant could not place its mark on the labels of its biopharmaceutical preparations, especially since the individualized treatment would most likely include a label showing the name of the person for which the pharmaceutical has been prepared." (slip. op., p. 8 n. 5)

The Board therefore affirmed the refusal to register.

TTABlog note: For two other uncitable decisions distinguishing Dell and rejecting specimens of use, see the SHOW NAV and the ALL-IN-ONE ATM cases, blogged here and here.

Text Copyright John L. Welch 2006


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